1. The plaintiffs are the registered proprietors of a certain design for printing saries. The certificate of registration of the design with a specimen print on a piece of voil is Ex. A. The design consists of a border and, what has been at this trial called, the body or the background of the sari. The design was registered under the Patents and Designs Act (2 of 1911) and therefore the plaintiff's have the exclusive right to the use of the design for printing textile goods and selling the same in British India. The plaintiffs' case is that the defendants imported into Bombay ten cases of Japanese prints for sale in Bombay, the border of which is identical with or a fraudulent or obvious imitation of the plaintiffs' registered design and that the defendants applied the design to the goods contained in the ten cases without the license or consent of the plaintiffs and were publishing or exposing or causing to be published or exposed for sale and selling the goods.
2. The plaintiffs state that the acts of the defendants were wrongful and caused loss or damage to the plaintiffs. The plaintiffs pray for an injunction restraining the defendants from applying to textile goods the plaintiffs' registered design or any fraudulent or obvious imitation thereof without the license or written consent of the plaintiffs and from doing anything with a view to enable the design to be so applied; and from publishing or exposing or causing to be published or exposed for sale and selling and from taking delivery of the ten cases from the Port Trust and Customs authorities. The plaintiffs further pray that the defendants may be ordered to deliver up on oath to the plaintiffs for destruction the goods bearing their design or fraudulent or obvious imitation thereof in the possession of or under the control of the defendants. A specimen of the defendants' goods to which the plaintiffs contend the defendants have for the purposes of sale applied or caused to be applied the plaintiffs' registered design or a fraudulent or obvious imitation thereof is Ex. B. The defendants admit that Ex. B is a specimen of the goods imported by them.
3. In their written statement the defendants contend that the registration of the plaintiffs' design is not valid on the ground that the design is not new or original but has been in existence and applied as a very common design to cotton piecegoods and has been published in British India long prior to the date of the registration. This contention was given up by the defendants at the trial and therefore no issue has been raised with regard to the contention contained in para. 1 of the written statement of the defendants. In para. 3 of the written statement the defendants admit having imported the ten cases of Japanese goods for the purpose of sale and say that the defendants sold the goods to Harkison Jagjivan on or about 29th January 1937. The defendants deny that the border of the cloth contained in the ten cases and printed in Japan is either identical with or a fraudulent or obvious imitation of the plaintiffs' registered design. The defendants contend that the plaintiffs have no copyright in the design of the border and the plaintiffs' copyright, if any, is in the design as a whole, i.e. the border and the background. The defendants further say that three cases out of the ten cases were given delivery of by them to Harkison Jagjivan prior to the filing of this suit. The defendants deny the plaintiffs' claim and say that the plaintiffs are not entitled to the reliefs claimed.
4. In the plaint the plaintiffs further state that the defendants, knowing that the plaintiffs' design or a fraudulent or obvious imitation thereof had been applied to the goods without the consent of the plaintiffs, published or exposed or caused to be published or exposed for sale, the goods. In the written statement the defendants deny that they had any knowledge that the design applied to the defendants' goods was the plaintiffs' registered design or a fraudulent or obvious imitation thereof. The learned Advocate-General on behalf of the plaintiffs stated at the very commencement of the trial that he did not want to contend or prove that the defendants knew that the design applied to the defendants' goods was the plaintiffs' registered design or a fraudulent or obvious imitation thereof. On these contentions contained in the pleadings seven issues were raised by the learned Counsel for the defendants.
5. On 27th July 1936 the defendants sent a telegram (Ex. 1) to Takamura & Co. of Osaka offering to purchase ten cases of printed mulls according to their sample No. 121. The defendants received a telegram dated 28th July 1936 (Ex. 2) from Takamura & Co. accepting the offer. The sample No. 121 mentioned in Ex. 1 and Ex. 2 was Takamura's sample of printed mull and with a border and background of its own. According to the evidence of Thakorbhai Pranvallabhdas Desai, a partner in the defendant firm, the sample was mentioned in Ex. 1 and Ex. 2 to indicate the quality and finish of the goods which the defendants wanted to buy. On 28th July 1936, Takamura & Co. sent to the defendants what has been called a contract confirming the sale of the ten cases of printed mulls according to the sample No. 121 and bordered. On 30th July 1936 the defendants sent to Takamura and Co. what has been called a purchase note stating that they had bought from Takamura & Co. printed coloured voil, border, as per sample No. 121, and that the design was to follow. On 16th September 1936, the defendants sent to Takamura & Co. what has been called the amended purchase note stating that they had bought from Takamura & Co. printed coloured voil- border on two sides quality and finish same as sample No. 121 and the design as enclosed with the amended purchase note. The contract and the two purchase notes are Ex. C collectively.
6. The ten cases of goods ordered out by the defendants from Japan arrived in Bombay in January 1937. The defendants say that three cases out of the ten cases were delivered by them to Harkison Jagjivan before the plaintiffs filed this suit. The defendants by their learned Counsel admitted that the remaining seven cases were in the bonded warehouse of the Bombay Port Trust and under the control of the defendants and produced a certificate of the Bombay Port Trust (Ex. 7) in support of the same. The plaintiffs by the evidence of Ullal Gopalrao formally proved that the design registered by them is a new and original design and was not published in British India prior to the date of the registration. The witness was not cross-examined at all on this question. It is therefore clear that the registered design of the plaintiffs is a new and original design not previously published in British India and the plaintiffs are the registered proprietors of the design and have the exclusive right in British India to use the design by printing it on textile goods. The learned Advocate-General on behalf of the plaintiffs-stated that the defendants admit, in para. 3 of the written statement, that they imported the ten cases of Japanese goods for the purpose of sale, and in para. 4 of the written statement that they caused to be applied to the goods imported by them the design which is printed thereon. He therefore contended that the plaintiffs were entitled to the reliefs prayed for under Section 53 (1)(a), Patents and Designs Act. (2 of 1911). The learned Advocate-General stated that he did not seek any relief under Section 53 (1)(b) of the Act.
7. The first contention raised by the learned Counsel for the defendants is that the plaintiffs have no copyright in the design of the border and their copyright, if any, is in the design as a whole (Ex. A) as registered by them. He argued that the plaintiffs registered the border and the background as one design and therefore the whole design applied to the defendants' goods contained in the ten cases does not amount to an infringement of the plaintiffs' design because the defendants' design is neither the plaintiffs' registered design nor a fraudulent or obvious imitation of the plaintiffs' design. The learned Counsel for the defendants contended that in a case of infringement of a registered design the question is not whether the infringingdesign is substantially the same as the registered design and even trivial differ. onces in the registered and the infringing designs would be enough to defeat the plaintiffs in an action for infringement of their registered design. The learned Counsel for the defendants contended that according to the decided cases in England the words 'obvious imitation' in Section 53 (1) (a) of the Act must be taken to mean an exact reproduction of the registered design.
8. The learned Counsel for the defendants was logical enough to say that according to the decisions in England if the defendants had deliberately applied the design of the plaintiffs' border to their goods with some design of their own for the background, the defendants' conduct would not amount to an infringement of the plaintiffs' copyright. He further stated that it also followed that if the defendants deliberately applied the plaintiffs' design of their background to their goods with some other design of their own for the border, there would be no infringement of the plaintiffs' copyright. If the contention of the learned Counsel for the defendants, that under the decisions in England, in order to bring the infringing design within the statute it must in every case be the exact reproduction of the registered design, be right, the above-mentioned conclusions drawn by him would no doubt be logically correct. The plain-tiffs' registered design consists of the design of the border and the design of the background. It is therefore obvious that the plaintiffs have a copyright in the design of the border and also in the design of the background. The defendants' contention is that the plaintiffs' copyright is only in the designs of the border and the background applied together and not separately.
9. Before dealing with the question of law involved in this contention of the defendants, it would be desirable to deal with the evidence that has been led by both the parties with regard to the importance of the border and the background in a sari. The plaintiffs' witness, Ullal Gopalrao, has stated that the border is the most important part of the design of a sari. He goes to the length of saying that ladies buying saries do not pay any attention to the design or printing on the body of a sari. Thakorbhai Pranvallabhdas Desai, a partner in the defendant firm, in his evidence stated that it was not true that customers buy printed saries by looking only at the border, but they look at the design of the border as well as the body of the sari to select what they purchase. On the other hand he goes to the length of saying that he has never known a customer rejecting a sari because the border did not please him or her. He had to admit that while ordering out goods he looked at the border and liked to order a sari with a nice border and that the border on a sari is an important part of a sari. The defendants led the evidence of one Kunjilal Kishorilal Shah, a printer of saries, on this point. He stated that when a customer comes to buy a sari she looks at the background of a sari first and not at the border, and if the printing of the body of the sari is good, the customer purchases the sari whatever may be the border.
10. This, on the face of it, is the opinion of a partisan and untruthful witness. I cannot agree with Thakorbhai Pranvallabhdas Desai that the border of a sari is not the most important part of a design of a sari and that a customer would not reject a sari even if the border did not please him or her. He admitted in his cross-examination that he did not like the design of the border printed on sample No. 121 and wanted a nice border on the goods ordered out by him and therefore he sent to Takamura and Company the design of the border which now appears on the goods imported by the defendants. He stated that he came across the design of the border in the Cut-Piece Market in Bombay where he obtained a printed piece of a sari of about half or three-quarters of a yard and it was from that piece that he ordered out the design of the border for his saries. He stated that he saw the border on the piece obtained from the Cut-Piece Market and he decided to have that border on his goods with the background of sample No. 121. Prom this evidence of Thakorbhai Pranvallabhdas Desai it is obvious that he knew that without a nice border the goods he was ordering out would not be satisfactory. It is clear from his evidence that he had the piece of cloth bearing the design of the border with him before he sent his first telegram to Takamura & Company on 27th July 1936 (Ex. 1). Placing Ex. A and Ex. B side by side and looking at the designs of the borders on the two samples of cloth, there is no doubt that the design of the border in Ex. B is the exact reproduction of the design of the border in Ex. A in even minute details.
11. How the defendants came to have the design of the border applied to their goods is interesting. In the purchase note of 30th July 1936, the defendants stated that the design would follow. The design mentioned there is admittedly the design of the border. In the purchase note of 16th September 1936, the defendants stated that the design should be as enclosed therewith. Thakorbhai in his evidence states that the border on a sari is an important part of a sari and he came across the design of the border in the Cut-Piece Market. He saw a printed piece of a sari of about half or three-quarters of a yard and it was from that piece that he ordered out the design of the border of the saries in the ten cases ordered out by the defendants. When asked about this piece of a sari which he obtained from the Cut-Piece Market he stated that he sent the design with the amended purchase note of 16th September 1936 to Japan and did not keep the design with him. He admitted that he could have cut out a piece of the design and kept it with him. He stated that he had not kept a piece of the design with him because he knew what the design was and had no doubt that he would remember the design when the goods arrived. I do not believe Thakorbhai Pranvallabh-das Desai when he says that he did not beep a piece of the said design with him as a control sample to check the design on the sarie a in the ten cases when they arrived. I do not believe him when he says that he could or intended to check the design of the border on the goods or on the shipping samples when they arrived in Bombay from memory only. I feel sure that Thakorbhai has with him a sample of the design kept by him out of the piece from which he selected the design of the border and that he is suppressing that sample. The natural and necessary inference therefore is that he had before him a sample of the plaintiffs' design (the border and the background) from which he selected the design of the border to be applied to his goods. That is the reason why it was necessary for Thakorbhai not to produce the said sample of the design in Court and to state that he sent up the whole of the said piece of a sari which he obtained from the Cut-Piece Market to the manufacturers in Japan.
12. In support of his first contention, that the plaintiffs are not entitled to any relief on the ground of infringement of their copyright in their design unless and until the infringing design is an exact copy of the registered design, the learned Counsel for the defendants relied upon the decision in Holdsworth v. M'Crea (1867) 2 H L 380. The only question before the House of Lords in that case was on the defendants' plea that the plaintiff did not cause the design to be, nor was the same, duly registered. Their Lordships held that the design, in respect of the combination, had been duly registered, and that the pattern, as a combination, was protected. In that case there were particulars of claim delivered in, which described the plaintiffs' design to be
the particular collocation of the shaded and bordered stars upon the ornamental chain surface, as shown in the registered pattern, thus forming together the ornamentation of the woven fabric.
13. The learned Counsel for the defendants particularly relied upon the passage in the judgment of the Lord Chancellor which is as follows (p. 384) :
There can be no doubt . . . that a single design may consist of several elements in combination; and as there can only be the registration of one design at a time, so when a pattern of the material itself is deposited with the registrar, it must be understood that the entire design, comprehending the whole pattern, is claimed. Now the designer is under this disadvantage, that when he registers a pattern of material, there is no infringement unless it is exactly copied. And in the present instance any person might, I apprehend, have taken the star, without the Albert chain work, as part of the design; or he might have placed the star in a different situation; and possibly also he might have taken a different colour for the fabric, and he would not have infringed the design of the defendant in error, because his design consisted of the entire combination.
14. The learned Counsel for the defendants also relied upon a passage in the judgment of Lord Westbury which is as follows (pp. 387-88) :
The argument would therefore seem to lie in this, that there is an element of uncertainty in every registration where the design appears to be constituted of independent integral parts put together in the pattern registered, but capable of being severed and used in a separate form. Now I apprehend that if that observation was applicable to this registration, the registration would be bad for uncertainty. But that observation is not applicable to a design which is composed of several parts put together and which, if exhibited in that connexion, do undoubtedly constitute one design. We have nothing to do with the artistic merit or beauty of the design. You may have fantastic and grotesque combinations, but if they are all exhibited upon the pattern, and the pattern is registered, then however destitute of beauty they may be, they do, in the mind of the inventor (and of, the registrar), constitute the design he desires to protect. Now, if he is content with putting that design, constituted of these several parts, upon the register without limitation and without explanation, he claims simply to be the inventor o the entire thing, exactly as it is described in the drawing or pattern which he has exhibited; and all that ho can claim to protect against imitation is, that thing in its exact form and relative position and proportions as they appear upon his pattern. For that is the only thing that you can ascribe to him as an invention. Anything therefore which is a facsimile of that drawing - any other pattern which is a reproduction of that in its integrity - becomes an infringement. But that which is different in shape and form or in the relative positions of its several parts, which is not a reproduction of it, as a replica or copy of a picture, would not be an infringement of the thing so specified.
15. At p. 390, Lord Colonsay says as follows:
It is impossible to say, on looking at this thing which has been put before us, that every part of what is claimed in the note of particulars may not truly be regarded as a design of itself. That Albert ground is itself a design. So is the star. So is the arrangement; and the whole together is a combined design. Therefore I think that the conclusion we must come to is that the statute has been complied with; and that, in order to have the benefit of the protection of his invention, the party must run the risk of having the whole pattern treated as the sole thing which he has registered. In a question of infringement other matters might arise, other points might be raised.
16. As I have pointed out above, the question before their Lordships, in the above case, was whether the provisions of the statute, with regard to the registration of patterns or designs, were complied with by leaving with the registrar copies of the design, though without any written description specifying precisely what was the extent of the claim. The question of the infringement of the registered design was not before their Lordships in that case.
17. The question of the infringement of the said design or pattern between the same parties was dealt with in M'Crea v. Holdsworth (1870) 6 Ch A 418 the plaintiff having established his right at law by the final decision of the House of Lords in Holdsworth v. M'Crea (1867) 2 H L 380. On the question of the infringement the appellants contended (p. 418) that the plaintiff had chosen to register his design by furnishing a pattern only, and therefore nothing but that very pattern would be protected. They stated that there was a variation between their pattern and that of the plaintiff and therefore they had not copied the thing, which he had chosen to register and the only thing for which he was entitled to protection. The appellants stated clearly that they claimed the benefit of the opinion of the Bouse of Lords in Holdsworth v. M'Crea (1867) 2 H L 380. Dealing with the said contention Lord Hatherley L. C. says as follows-(pp. 419-420):
I think this is really a very idle contention. It. seems to me an attempt to give a meaning to somes words used in the House of Lords totally opposite to anything that was intended by the noble Lords who used those words.
18. It has been argued that, when a, design of this kind is registered and the designer, instead of describing the design in words, chooses to place the design itself upon the register in the shape of a part of the article designed, then he is tied down to that identical design so exhibited, and is not at liberty to complain of any person making a thing which is to all outward appearance exactly the same and which for all purposes for which the thing is manufactured is identical ..... Their Lordships seem to have meant that the designer is not bound, as in a patent case, to distinguish the new from the old, and is allowed to register his pattern without distinguishing what is new from what is old; but if he chooses to put it in that way, it will not be protected as against the public in case they choose to use any portion in any manner substantially differing from the registered design. If the designs are used in exactly the same manner, as I hold they are in this case and have the same effect, or nearly the same effect, then of course the shifting or turning round of a star, as in this particular case, cannot be allowed to protect the defendants from the consequences of the piracy.
19. In view of the correct reading, by Lord Hatherley, of the opinion of the nobler Lords in Holdsworth v. M'Crea (1867) 2 H L 380. I hold that the decision in Holdsworth v. M'Crea (1867) 2 H L 380, does not support the contention of the learned Counsel for the defendants. The defendants have not used the portion of the plaintiffs' design in a manner substantially differing from the registered design. They have used the plaintiffs' design of the border by a reproduction of the same in its integrity.
20. The learned Counsel for the defendants relied on the decision in Gramophone Co. Ltd. v. Magazine Holder Co. (1911) 104 L T 259 contending that it was laid down by the House of Lords in that case that a design must be an exact reproduction of the registered design to come within the Act; a merely colourable alteration is sufficient to take it out of the Act. In that case the plaintiffs had registered a box or a cabinet consisting of an oblong box a little higher than a square, standing upon four short legs, for its shape and configuration, and brought the action because the defendants had made another cabinet, also oblong, also on wooden legs, also with the top opening like a lid, and with the front opening by doors, and disclosing inside a shelf and pigeon-hole arrangement somewhat similar. The Lord Chancellor in his judgment (p. 259) says that counsel for the plaintiffs was pressed to explain what was the novelty and originality of the registered design and his only answer was that it consisted of the particular combination in the cabinet of oblongness, of the top opening as a lid, the part opening with two sets of doors one above the other, and the interior being fitted in two compartments with pigeon-holes, the whole structure resting on four legs. His Lordship proceeds to say that the plaintiffs' novelty and originality consisted of a description of the article itself as a particular arrangement of old and well-known kinds of work and no suggestion was or could be made that any one of the features described was in the least degree new. Under the circumstances of that case and in view of the fact that there was no novelty or originality about the registered design, his Lordship held that, judging by the eye, the defendants' design was not an imitation of the plaintiffs' and that it was a different combination of familiar contrivances. His Lordship pointed out that if the suggested novelty lay in the detailed arrangements of the parts, quite a small change would make a great difference. Lord Halsbury in his judgment says as follows (p. 260):
There is no question here of being substantially the same thing: there is no question of any invention, for there is no invention... You might just as well here register a three-legged stool; and if you have a three-legged stool of course you may say, 'Oh, but it must be new, and there must be, in that sense, some invention in it.' That may be; but it may be that the novelty of it, or whatever it may be, is something or other absolutely immaterial and even ridiculous. To my mind the real defect is in not drawing a distinction between those things which are really works of art, and designs which may be properly protected, and something, either a three-legged stool, or anything else of that sort, which anybody may describe as new, and nobody else has ever made of the exact design before... Therefore in order to bring it within the Act of Parliament-and I think that you may, of course, bring it within the Act of Parliament in the case of the most common and ordinary things-the one thing must be an exaot 'reproduction of the other; and the old view which we had in dealing with patents, that such and such a thing is simply a colourable departure, is no longer applicable. In order to bring it within the statute it must be the exact thing ; and any difference, however trifling it may be, or however unsubstantial, would nevertheless protect it from being made the monopoly of the particular designer who thought proper to make it. To my mind the difficulty is in giving a commonsense interpretation to a statute which makes everything capable of being made a peculiar and monopolized design.
21. The learned Counsel for the defendants also relied on the decision in Repetition Woodwork Co. and c.v. M. Briggs (1924) 131 L.T. 556. In that case the plaintiffs claimed relief on the footing that the defendants had infringed their registered design of a combined press for neck-ties or the like and box to contain collars and other articles. Lawrence J. in his judgment states as follows (p. 558, col. 2):
It differs, in my opinion, essentially from that case in that there is nothing novel or original in the shape and configuration or ornamentation of the design in the present case....
In the result I have come to the conclusion that the design is neither novel nor original, and I fur ther hold that, if contrary to my opinion, the registration of the design is valid, the defendant has not applied that design or any fraudulent or obvious imitation of it to the box complained of in this action.
22. It is clear from these two decisions that it has not been laid down that in the case of every design or pattern, in order to bring it within the statute, it must be the exact reproduction of the registered design or that the words 'fraudulent or obvious imitation' in the Section must be construed to mean exact reproduction. In the said cases it has been pointed out that where there was no novelty or originality about the registered design or pattern but it was merely a particular arrangement of old and well-known kinds of work, quite a small change would make a great difference. Lord Halsbury points out particularly that a distinction should be drawn between those things which are really works of art, and designs which may be properly protected, and some things which are the most ordinary things in the world without any novelty or originality about them. It is only in cases where there is no novelty or originality about the design that the exact reproduction of the registered design would amount to an infringement of such a design and quite a small change, however trifling it may be, would make a great difference. His Lordship points out that these considerations would not apply in the case of designs which may be properly protected.
23. The argument of the learned Counsel for the defendants is erroneous inasmuch as he contends that in every case of a registered design the plaintiff is not entitled to any relief on the footing of an infringement of his design unless and until the defendant's 4, Repetition Woodwork Co. and C. v. M. Briggs (1924) 131 L.T. 556 design is an exact reproduction of his design. He erroneously overlooks the distinction pointed out by Lord Halsbury mentioned above. On my finding that the design of the plaintiffs (the border and the background) is new and original and was not published in British India prior to the date of registration, the contention of the learned Counsel for the defendants fails, and the question remains whether the defendants' design is the whole of the plaintiffs' design or a fraudulent or obvious imitation thereof. It may be stated that Section 60, English Patents and Designs Act, 1907 (Ed. VII, C. 29) is in the same terms as Section 53; Indian Patents and Designs Act (2 of 1911). In Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) 48 R.P.C. 268 Farwell J. explains the meaning of the words 'fraudulent' and 'obvious.' He says as follows: (p. 279)
In my judgment 'obvious' means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two. With regard to the word 'fraudulent,' fraudulent I think does presuppose a knowledge of the registered design. I think it would be difficult for a Court to come to the conclusion that an imitation was fraudulent unless the Court was satisfied that the registered design had been known to the author of the alleged infringing design, and further, it seems to me that 'fraudulent' imports something in the nature of making use of the registered design. It does not necessarily import deliberate intention to steal the property of the owner of the registered design. It does not import any intention to be fraudulent, because a person may be the author of a fraudulent imitation believing perfectly honestly that he has so altered the registered design as to make them two different designs, and so far as his own mind and his own intention are concerned, he may be honest in that sense. But fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design, and is an imitation which may be less apparent than an obvious imitation; that is to say you may have a more subtle distinction between the registered design and a fraudulent imitation, and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation, may yet be an imitation perceptible when the two designs are closely scanned and accordingly an infringement.
24. In Grafton v. Watson (1884) 50 L.T. 420 Chitty J. dealing with the question of obvious imitation says as follows (p. 424, C. 1):
I think the designs should be looked at together, but then consideration should be given to what would be the effect supposing that they were seen at different times, or supposing they were looked at a little distance off. It appears to me, adopting the language of the plaintiffs' witnesses, that viewed in either of those ways the imitation is obvious. It should be considered also how the patterns would look when worn as a dress, or as an apron, or used as a covering for furniture, and I have very little doubt that a person going into a room and seeing them so used would say, as the plaintiffs' witnesses have said, that there is such an imitation as to make it impossible to distinguish by memory alone the one from the other.
25. This was a judgment on a motion and was confirmed on appeal as appears in Grafton v. Watson (1885) 51 L.T. 141. In Rose v. Pickavant and Co. (1923) 40 R.P.C. 320 Romer J. dealing with the words 'fraudulent' and 'obvious' says as follows (p. 332):
It is not very easy to define a fraudulent, as contrasted with an obvious, imitation. As pointed out by Cotton L.J. in a passage presently to be cited, an imitation may be made unconsciously and in ignorance of the existence of the design. An article is therefore an obvious imitation when it is apparent to the eye that it has been copied consciously or unconsciously from the design. The phrase 'obvious imitation' accordingly covers cases of fraudulent copying, though it is not confined to such cases, and it seems to be clear that the Legislature, in using the phrase 'fraudulent imitation' is contemplating an imitation that is fraudulent without being obvious. It would therefore seem to be contemplating a case in which the differences between the article and the design are obvious and in which recourse must be had to extrinsic evidence to establish the fact of deliberate copying. In such a case the existence of comparatively unimportant differences from the design sufficient to prevent the imitation from being obvious is not a fact of which the imitator can avail himself, and may indeed be one of the elements of the imitator's, fraud.
26. The defendants have copied the plaintiffs' design of the border in all its details and have reproduced the same exactly. The defendants do not claim to have made up or devised their design. They admit having copied it. The design of the border is undoubtedly the most important part in the design of a printed sari. The only contention of the defendants is that the two designs are different inasmuch as the design of the defendants' background is different from the design of the plaintiffs' background. I hold that the defendants being admitted imitators are not entitled to avail themselves of the said difference in the two designs. I hold that the defendants' design is an obvious and a fraudulent imitation of the plaintiffs' design.
27. The second contention raised by the learned Counsel for the defendants is that the design was applied, at the instance of the defendants, in Japan, and as the Indian Patents and Designs Act does not apply to Japan, the defendants are not guilty of an infringement of the plaintiffs' design under Section 53 (1)(a). The learned Counsel for the defendants argued that the application of the design must be in British India to entitle the plaintiffs to maintain any action against them. He argued that, if the defendants in Bombay asked the Japanese manufacturers to apply the whole of the plaintiffs' design; to their goods and asked them to send such, goods to Abyssinia, there could be ho infringement of the plaintiffs' design. The short answer to this contention is contained in the last line of Section 53 (1)(a) which provides 'or to do anything with a view to enable the design to be so applied.' The argument with regard to the goods for Abyssinia is fallacious for the fallacy of it lies in disregarding the words 'to be so applied' in the said Section. In view of the clear provision of the said Section covering this point, it is not necessary to discuss this contention at any length. If an authority be needed on this point, there in one in Haddon and Co. v. Bannerman (1912) 2 Ch 602. It must be borne in mind that under the Section I am concerned with, it is not the application which has to be fraudulent but the imitation should be considered as 'fraudulent or obvious' or not. I hold that the plaintiffs are entitled to sue the defendants under the said Section as the defendants caused the design to be applied to their goods and imported the same for sale in British India.
28. The third contention of the learned Counsel for the defendants is that the plaintiffs are not entitled in any event to an injunction in terms of prayer (a) of the plaint. He contends that the injunction should be restricted to British India, and secondly for the period of the copyright. His contention is correct that the injunction must be restricted to British India. With regard to the period of the injunction, it must no doubt be restricted to the period of the copyright in respect of future infringements of the plaintiffs' copyright; but with regard to the ten eases of the goods in suit, the injunction must be permanent.
29. The fourth contention of the learned Counsel for the defendants is that the plaintiffs are not entitled to the relief claimed in prayer (b) of the plaint, viz. delivery up on oath of the goods in suit to the plaintiffs for destruction. The argument of the learned Counsel for the defendants is that a copyright is a statutory right and the remedies for the infringement of a copyright are also statutory and are contained in Section 53 (2)(a) and (b) of the Act. He submitted that as the said Act provides the said specific remedies for an infringement of a copyright, no other remedy is available to the plaintiffs or could be granted by the Court. He submitted that in the Section of the Act which provides the remedies no provision is made for delivery up of the goods to the plaintiffs for destruction and therefore the Court has no power to grant the relief prayed for under prayer (b) of the plaint. He referred to Halsbury's Laws of England, Vol. 27, p. 726, Article 1303, where it is stated that the law as to the protection of designs is of purely statutory origin. He also referred to Articles 370 to 373 at pp. 188 to 190 of the same volume. The learned Counsel for the defendants referred to the decision in Calico Printers Association, Ltd. v. Gosho Kabushiki Kaisha, Ltd. AIR (1936) Bom 408. That was a decision on a summons taken put by the defendants calling upon the plaintiffs to elect whether they claimed from the defendants an account of the profits made by the defendants from the sales or damages under Section 53 (2)(b) or the payment of a sum as a contract debt under Section 53 (2)(a) of the Act. The question of the election between the said two remedies was the only dispute before the learned Judge on that summons. In the course of the argument on the said summons it appears that the question was raised whether in the event of the plaintiffs electing to recover only the sum of Rs. 1000 under Section 53 (2)(a) of the Act, they would be precluded from claiming and getting an injunction also along with that sum. It was pointed out to the learned Judge by the plaintiffs' counsel that the remedy by injunction for the infringement of a right to property was open to the person whose right was infringed even if such right was created by statute, unless the statute expressly or by necessary implication excluded the equitable remedy. The learned Counsel for the defendants particularly relied upon a passage in the said judgment which is as follows (p. 826):
Section 53 therefore being a self-contained Code in itself, and the two parts of Section 53 (2) being clearly disjunctive as I have said before, there is no doubt that the plaintiffs are put to their election.
30. At p. 827 the learned Judge has stated clearly that he did not think it necessary to express any particular opinion with regard to the plaintiffs' claim for an injunction in the event of the plaintiffs electing to recover only the sum of Rs. 1000 under Section 53 (2)(a). The point raised by the learned Counsel for the defendants before me is thus not dealt with or decided by the learned Judge.
31. The learned Advocate-General for the plaintiffs pointed out that Sections 58 and 59, Patents, Designs and Trade-Marks Act of 1883 provided statutory remedies for infringements of copyrights in England. In the said Sections there was no provision with regard to delivery up of infringing goods to the plaintiffs for destruction; and Section 60 of the Act of 1907, as I have pointed out above, is in the same terms as Section 53 of our Act; but as the equitable remedies which the Court is entitled to grant under its general jurisdiction have not been excluded by the statute expressly or by necessary implication, the Courts in England have always granted the relief under their general jurisdiction in actions for infringement of copyright under the Acts.
32. The learned Advocate-General has referred to numerous cases in which in suits for infringement of copyright under the Acts in England, orders were made by Courts for delivery up of the infringing goods. Those cases are Oliver and Co. v. Thomley and Co. (1896) 13 R.P.C. 490, Dunlop Rubber Co. Ltd. v. A.A. Booth and Co. Ltd. (1926) 43 R.P.C. 139 and Hole v. Bradbury (1879) 12 Ch D 886. From these cases it is clear that the equitable remedies in respect of an infringement of a copyright are not excluded by the statute and the plaintiffs are entitled to ask for delivery up of the goods in suit to them for destruction.
33. The learned Counsel for the defendants submitted that the remedy by way of delivery up was not for the protection of the plaintiffs and suggested that the defendants is hould be allowed to re-ship the said goods from Bombay to Japan. I cannot accept the said suggestion. The goods in the suit are saries and it may be that they may be sent back to India at some time or other. It is not proper that the successful plaintiffs should be put to the trouble later on, of seeing that the same goods are not imported into British India again. The usual order for delivery up is, I think, the proper order in the suit. The defendants have infringed the plaintiffs' rights and cannot complain of the usual order being a hardship to them. The learned Advocate-General stated that he does not ask for relief under prayers (d) and (e) of the plaint but asked for general nominal damages under prayer (f) of the plaint. I therefore pass a decree for the plaintiffs in terms of prayer (a) but restricted to British India and for the period of the plaintiffs' copyright, under prayer (b) as prayed, and under prayer (f) for Rupees 100 as general nominal damages and the costs of this suit and interest on decree at the rate of six per cent, per annum.