B.J. Wadia, J.
1. This is a chamber summons taken out by the defendants for further discovery.
2. The plaintiffs claim to be the registered proprietors of a certain design for being printed on textile goods registered under the Indian Patents and Designs Act (II of 1911), and have filed this suit against the defendants for restraining them from infringing the design under the circumstances mentioned in the plaint, and for accounts, damages, costs and other reliefs In their written statement the defendants allege that prior to the registration of the design it was published in British India by the plaintiffs themselves as well as by other merchants. They also contend that the design was not new or original at the date of the registration, and that the registration is invalid and does not confer any specific right upon the plaintiffs to exclusively use the same. In order to substantiate these defences, the defendants pray for an order for discovery and inspection of the documents mentioned in the summons, viz.,
(1) The first shipment samples of the goods in dispute received by the plaintiffs from Japan,
(2) Copy of the first order placed by the plaintiffs' in respect of the said goods,
(3) Correspondence between the plaintiffs and the Japanese firms from whom the plaintiffs imported the said goods prior to and up to first importation of the goods by plaintiffs,
(4) The original invoices and papers in respect of the first importation of the said goods by the plaintiffs together with the covering letters with the invoices,
(5) Entries in the plaintiffs' books of account as to when they received the first lot of such goods, and
(6) Counterparts or copies of the contracts made by the plaintiffs with the merchants in India regarding the sale of the goods in dispute.
3. The suit is brought under Section 53(2) of the Indian Patents and Designs Act of 1911. This Act is based upon the English Act, the Patents and Designs Act of 1907. Under Act II of 1911, Part I up to Section 42 refers to patents, Part II from Section 43 to Section 54 refers to designs, and Part III is general. The design in dispute has been registered under the provisions of the Act of 1911 and the Indian Patents and Designs Rules of 1933. Section 43(1) provides that the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in British India, register the design under Part II of the Act. Section 43(4) provides that the Controller may, if he thinks fit, refuse to register any design presented to him for registration, but that any person aggrieved by any such refusal may appeal to the Central Government. Rule 39 of the Indian Patents and Designs Rules, 1933, which came into force on April 1, 1933, also provides that the Controller shall consider the application for registration and may accept it if he considers that there is no objection to the design being registered. Section 45(2) enables the Controller to grant a certificate of registration to the proprietor of the design when registered. Under Section 46(1) a book called the Register of Designs is kept at the Patent Office, 'wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matters as may be prescribed.' Section 46(3) provides that the register of designs shall be prima facie evidence of any matters by the Act directed or authorised to be entered therein.
4. The plaintiffs contend that the defendants are not entitled to go behind the certificate of registration, and that therefore the documents of which inspection is asked for are not relevant to the matters in dispute between the parties. The important question therefore for consideration is whether the certificate of registration is final and conclusive, or whether it is open to the defence to raise the pleas that the design had been previously published and was not new or original at the date of the application for registration and that the plaintiffs are therefore not the proprietors thereof. Under Section 2(14) a proprietor means a proprietor of a new or original design-Formerly the words were 'new and original', but by Act VII of 1930 the words 'new or original' have been substituted. From the words of the sections which I have referred to before it will be seen that the only person who can have a design registered under the Act is the proprietor for the time being of the design and that the design must be a new or original design and must not have been previously published in British India. Plaintiffs' counsel argued that it was open to any interested person under Section 51A at any time after the registration to present a petition to the High Court for cancellation of the registration of the design on the ground of previous publication or also on the ground that it was not a new or original design. Such a petition could also within one year from the date of the petition be presented to the Controller subject to an appeal to the High Court. Section 64 of the general portion of the Act also provides for any person making an application for rectification of the register of patents or designs on the ground that any entry was wrongly made in the register. Counsel further argued that in the absence of any such cancellation the register of designs which contains the name of the proprietor of the registered design was conclusive on the point that the person registered as proprietor was the proprietor of a new or original design. The words of Section 46(5), however, are that the entry with regard to the name and address of the proprietor or proprietors of the registered design is prima facie evidence to that effect. That means in my opinion that there is a prima facie presumption that the person whose name is registered as the proprietor is the proprietor of a new or original design, but the entry in the register is not conclusive proof thereof, and the presumption can be rebutted. It is true that under Section 43 no registration can be effective unless the design sought to be protected is new or original and not of a pre-existing common type. But the certificate is not conclusive, and there is nothing in the Act which prevents the defendant in a suit for damages for infringement of a registered design under Section 53 from raising in defence the plea that the design was previously published and was neither new or original: see Muhammad Abdul Karim v. Muhammad Yasin (1934) I.L.R. 56 All. 1032. It was pointed out that unless it was final and conclusive there was no advantage in having a certificate of registration. The advantage is that if no evidence is led by the defendants to the contrary, the certificate is sufficient evidence that the plaintiffs are the proprietors, that is proprietors of a new or original design. If evidence is led, it is for the Court to come to its finding on the question. A further advantage is that as the register is prima facie evidence of the matters contained in it, the onus ordinarily will be on the defendants to show that the plaintiffs are not the proprietors of the registered design in question.
5. Counsel for the plaintiffs also drew the attention of the Court to the several corresponding sections of the part of the Act dealing with patents. It is provided under Section 20(5) that the register of patents shall also be prima facie evidence of any matters by the Act directed or authorized to be inserted therein. Section 26 provides for the revocation of a patent on any of the grounds stated therein. Section 29(1) provides for the institution of suits for infringement of patents. It is provided by Section 29(2) that every ground on which a patent may be revoked under the Act shall be available by way of defence to a suit for infringement. Counsel pointed out that there was no corresponding section in the portion of the Act dealing with designs, nor was Section 29(2) made applicable in the matter of designs under Section 54 of the Act. It was therefore argued that as there was no section in regard to designs corresponding to Section 29(2) in regard to patents, the Act did not contemplate such a defence in the case of registered designs. I do not accept that argument. It might be that the reason for not making a specific provision in Section 53 similar to the provision in Section 29(2) was as is pointed out in Muhammad Abdul Karim v. Muhammad Yasin.2 (1934) I.L.R. 56 All. 1032 at pp. 1036-37. But what is really significant is that the Legislature has not definitely provided anywhere in the Act that the certificate of registration until cancellation is conclusive proof of the fact that the grantee of the certificate is the proprietor of the design, that is to say, the proprietor of a new or original design. I do not think that the Legislature would have left such an important point merely for inference. Nor is it provided in the Act that the only remedy of am aggrieved party is under Section 51A and Section 64 of the Act, and that if no such application is made the aggrieved party cannot urge his grounds of defence in a suit brought by the registered proprietor under Section 53(2) of the Act. My attention was drawn to the observations of Halsbury, Hailsham's edn., Vol. XXXII, p. 696, para, 1006, in which it is stated that it seems to be doubtful whether the validity of the registration can properly be raised by way of defence in a suit for infringement of a design, and whether it should not rather be sought by means of a motion for rectification of the register. It is, however, also pointed out that the former course has often been adopted, though it may be by consent of the parties. I, however, agree with the conclusion arrived at by the learned Judges of the Allahabad High Court in Muhammad Abdul Karim v. Muhammad Yasin, that the defendant to a suit under Section 53(2) is not confined to his remedy laid down by those particular sections of the Act, and that the points pleaded in the written statement by the defendants are points which can be raised in a suit like the present.
6. Plaintiffs' counsel lastly urged that no order should be made on the chamber summons for inspection as the inspection asked for was on a fishing enquiry, not based on any particulars, but merely on defences which are taken up as general defences to the suit. Those defences may have been based on information and belief. The only question is whether the documents are relevant and whether they are in the plaintiffs' possession, power or control. In my opinion they are relevant, and it is nowhere definitely stated that they are not in the plaintiffs' possession. The correspondence annexed to the affidavit in support of the summons seems to indicate that they are. If any of these documents are not in the plaintiffs' possession, the plaintiffs can say so on oath.
7. In the result, the summons is made absolute with costs. Costs to be taxed. Counsel certified. The plaintiffs to make the supplemental affidavit of documents disclosing the documents referred to in the summons or such of them as are in their possession within a week and to give inspection to the defendants forthwith thereafter. Suit to be placed on board for hearing as a part heard on January 13, 1941.