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iag Co. Ltd. Vs. Triveni Glass Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtKolkata High Court
Decided On
Case NumberGA No. 2709 of 2003 and C.S. No. 213 of 2003
Judge
Reported in(2004)3CALLT71(HC),2004(29)PTC665(Cal),[2004]51SCL498(Cal)
ActsDesigns Act, 2000 - Sections 22, 22(2), 22(3), 48 and 48(2) to 48(5); ;Designs Act, 1911 - Section 53; ;Designs Rules, 1933; ;Designs Rules, 2001; ;General Clauses Act, 1897 - Section 6
Appellantiag Co. Ltd.
RespondentTriveni Glass Ltd.
Appellant AdvocateGoutam Chakraborty, ;Sudipto Sarkar, ;R. Bachawat, ;S. Bose, ;D. Ghosh and ;S.B. Chakraborty, Advs.
Respondent AdvocateS.S. Ray, ;S.N. Mookherjee, ;Ratnanka Banerjee, ;N.L. Singhania, ;Dheeraj Bhatia and ;Sunil Slughania, Advs.
DispositionApplication dismissed
Cases ReferredSky Shop Co. Ltd. v. Spaceage Multi Products
Excerpt:
- jayanta kumar biswas, j.1. the plaintiff in c.s. no. 213 of 2003 has taken out this interlocutory application (g.a. no. 2709 of 2003) dated july 31st, 2003. the prayers in the suit are as follows :--'(a) decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the design of karatachi glass registered under no. 183322 by using the glass design as shown in annexure 'b' to the plaint;(b) decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the copyright in the artistic work by making three dimensional reproduction thereof in glasses;(c) decree of.....
Judgment:

Jayanta Kumar Biswas, J.

1. The plaintiff in C.S. No. 213 of 2003 has taken out this interlocutory application (G.A. No. 2709 of 2003) dated July 31st, 2003. The prayers in the suit are as follows :--

'(a) Decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the design of KARATACHI glass registered under No. 183322 by using the glass design as shown in annexure 'B' to the plaint;

(b) Decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the copyright in the artistic work by making three dimensional reproduction thereof in glasses;

(c) Decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way passing off design glasses of the plaintiff by manufacturing and/or selling glass having surface pattern and ornamentation same or similar to that of the plaintiff including those shown in annexure 'B' to the plaint;

(d) Decree for Rs. 11 lakhs as prayed for;

(e) Receiver;

(f) Injunction;

(g) Costs;

(h) Such further or other relief or reliefs as to this Hon'ble Court may deem fit and proper in the interest of justice.'

By filing this application the plaintiff seeks interim reliefs in aid of the final reliefs sought in prayers (a), (b) and (c) of the plaint. On August 18th, 2003 M.H.S, Ansari, J was pleased not to grant any ad interim relief. His Lordship gave directions for filing affidavits. Accordingly, the parties filed the affidavits, viz. (a) opposition dated August 28th, 2003 by the defendant, to this application; and reply dated September 8th, 2003 by the plaintiff to such opposition; (b) supplementary affidavits dated August 9th and 16th, 2003 by the plaintiff; and oppositions both dated August 29th, 2003 by the defendant to such supplementary affidavits.

2. The plaintiff and the defendant both manufacture and sell various kinds of glass. On January 2nd, 2001 the Controller-General of Patents, Designs and Trade Marks of the Government of India, the Patent Office (Designs Branch) issued a certificate of registration of design in favour of the plaintiff. It was stated in this certificate that design No. 183322 (a copy whereof was annexed to the certificate) had been registered on August 28th, 2000 in the name of the plaintiff in class 4 (four) with respect to its application to figured glass, and it was so registered in pursuance of and subject to the provisions of the Designs Act, 1911 and the Designs Rules, 1933. It was mentioned in the certificate that copyright in the design would subsist for five years from the date of registration, and might, under the terms of the Act and Rules, be extended for two further periods, each of five years; and that it was not for use in legal proceedings or for obtaining registration abroad. In its copy the design was mentioned as 'KARATACHI.' It was further stated in its copy that while the back view of the design was plain, the novelty of the front view resided in the surface pattern and ornamentation of the figured glass. With effect from May 11th, 2001 the Designs Act, 2000 and the Designs Rule, 2001 came into force; and the Designs Act, 1911 and the Designs Rule, 1933 were repealed. In September 2002 the plaintiff notified caution notice in newspapers, published from several cities of the country, to warn manufacturers and competitors against infringement of its patent right over the designs 'KARATACHI' and 'YOZORA.' On January 15th, 2003 the defendant made a petition to the Controller-General of Patents, Designs and Trade Marks for cancellation of registration of the design 'KARATACHI' in the name of the plaintiff. The plaintiff has been contesting such cancellation proceedings. Against the threats of legal proceeding published by the plaintiff, in July 2003 the defendant lodged caveats under Section 148A of the Code of Civil Procedure, 1908 in the High Court at Delhi and in the District Court of Delhi. In the circumstances seeking permanent injunctions to restrain the defendant from infringing its copyright in the design 'KARATACHI,' and for other reliefs, including damages, the plaintiff instituted the suit in this court, and has taken out this interlocutory application in the pending suit.

3. The case of the plaintiff is this. In October 2000 it introduced a new design of glass under the name 'KARATACHI.' Because of extensive sales promotion activities and excellent quality such design became exclusively associated with the plaintiff. It is a totally new design owned in India by the plaintiff. The 'KARATACHI' glass has a three dimensional reproduction of a two dimensional artistic work, and hence such artistic work, whenever used in connection with glass, is attributed to the plaintiff. In September 2002 it received information from the market that some unscrupulous glass manufacturers were taking steps to introduce in the market figured glass applying thereto the design 'KARATACHI.' In spite of caution notice published in newspapers, the defendant proposed to apply the 'KARATACHI' design to its figured glass with a view to deriving benefits from the sole promotional efforts and investment of the plaintiff. With ill motives the defendant initiated proceeding for cancellation of registration of the design 'KARATACHI' before the competent authority. During subsistence of the registration of the design in favour of the plaintiff, the defendant has no right whatsoever to manufacture and/or sell figured glass applying thereto the 'KARATACHI' design. The defendant is, however, bent upon manufacturing and selling figured glass applying thereto the design 'KARATACHI;' and hence the suit for injunctions and other reliefs.

4. The case of the defendant is this. The plaintiff got the design registered in its name by making false claim that it was a new design, and the plaintiff was its proprietor. The 'KARATACHI' design in relation to glass manufacturing is in public knowledge for more than thirty-five years. Many companies around the world manufacture and supply embossing rollers (bottom rollers) to glass manufacturers all over the world, and the embossing roller of 'KARATACHI' design is freely available in the international market. The plaintiff imported the necessary embossing roller of 'KARATACHI' design, and then claiming to be the proprietor of a new design in India got the design registered with the competent authority. The defendant also imported embossing roller of 'KARATACHI' design, and it is entitled to manufacture, market and sell its glass applying thereto the design 'KARATACHI.' The plaintiff has failed to disclose any material whatsoever to show that it is the proprietor of the 'KARATACHI' design.

5. Mr. Sudipto Sarkar, learned senior counsel for the plaintiff, has contended that the suit is for infringement of a design registered under the Designs Act, 1911, and hence injunctions as prayed for have to be granted as a matter of course, because under the Designs Act, 1911 the plea of invalidity of a design registered thereunder cannot be raised as a defence in a suit filed to stop infringement of copyright in such registered design; and this proposition is supported by the Division Bench decision of this court in the case of Rotomac Pens Ltd. v. Milap Chand & Co. 1999 PTC (19) 757.

6. As to the effect of repeal of the Designs Act, 1911 by the Designs Act, 2000 his submissions are these. Section 48(2) of the Designs Act, 2000 specifically preserves registration and certificate given under the Designs Act, 1911; only the term of the old registration has been curtailed by Section 48(5) of the Designs Act, 2000. The repealing section (Section 48) of the Designs Act, 2000 does not expressly take away any right of the registered proprietor that was available under the Designs Act, 1911. On the contrary, by explicit incorporation of the General Clauses Act, 1897 all rights acquired under the Designs Act, 1911 have been preserved. Section 6 of the General Clauses Act, 1897 specifics rights that arc not to be affected by repeal of any enactment; in its Clause (e) it specifically provides that remedy in respect of any right, privilege or obligation acquired or accrued under the repealed Act will not be affected by the repeal of an enactment, and such remedy may be enforced under the repealed Act, as if the repealing Act has not been passed. Thus all substantive rights (as opposed to procedural rights), and remedies granted under the Designs Act, 1911 subsist, and are available to registration granted thereunder. Once a right accrued prior to the repeal, claim can be made and enforced, and remedy can be taken even after the repeal, because such right cannot be defeated by the repeal, and would rather be preserved. The proposition is supported by the decision given by the Court of Appeal, Civil Division in the case of Chief Adjudication Officer v. Maguire (1999) 2 All ER 859. Thus the registration and remedy existing before the repeal of the Designs Act, 1911 can be enforced under the old Act even after its repeal. In the absence of a manifest intention to destroy the old rights by the repealing section such rights would continue even though the new Act has come into force, and this proposition gets support from the Supreme Court decision in the case of Jindas Oil Mill v. Godhra Electricity Co. Ltd. : [1969]3SCR836 .

7. It is his contention that since the plaintiff had acquired substantive right to enforce its rights and remedies in relation to the registration under the Designs Act, 1911 prior to its repeal, the case of the plaintiff will be governed by the Designs Act, 1911, and not by the Designs Act, 2000; and the defence mentioned in Section 22(3) of the Designs Act, 2000 will not be available to the defendant in the present case.

8. His alternative contention is that assuming the defence of Section 22(3) of the Designs Act, 2000 is available to the defendant, even then, on facts, there is no ground to question the validity of the registration; and the reasons he mentions to support it are these. Prior publication abroad was irrelevant under the Designs Act, 1911. This new ground of cancellation of registration now made available was not available under the Designs Act, 1911; and hence it cannot be invoked, because this would in effect destroy the pre-existing registration of the plaintiff, and take away a vested right accrued in its favour, though the repealing section itself does not take away such right. In any event, there is no evidence of prior publication of the design either in India or in any other country; all documents disclosed by the defendant are subsequent to the date of registration. No bill or document of the glass or roller with the registered design has been disclosed. The evidence, at the highest, is hearsay, and is of no probative value. The case of the defendant that the design being a surface pattern, and not being a two or three dimensional one, was not registrable, has no merit. Under the Designs Act, 1911 there was no requirement of application of the design to two or three dimensional articles. This is a new requirement brought in by Section 2(d) of the Designs Act, 2000. The design is not a drawing on one plain as incorrectly contended by the defendant. It has dents and grooves, and is accordingly three dimensional. The issue of proprietorship raised by the defendant has also no merit. The very fact of registration of the design makes the plaintiff its proprietor; it need not be proved independently. The proposition is supported by the single Bench decision of this court in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. 1996 PTC (60) 202. It is also clear from Sections 43, 44, 45 and 46(3) of the Designs Act, 1911 that the certificate of registration was to be issued only to the proprietor; similar provisions have been made in Sections 2(c), 10(4), 11, 23 and 28 of the Designs Act, 2000. Above all, both Section 53 of the Designs Act, 1911 and Section 22 of the Designs Act, 2000 make it unlawful for any person to copy the registered design; hence such unlawful acts can be stopped without having to establish the proprietorship; and this, in any case, is not one of the grounds of cancellation.

9. His submission is that it is well established that balance of convenience is in favour of injunctions in such matters, as damages cannot be the adequate relief in such cases; and besides Rotomac and Castrol India's cases, the proposition is also supported by the decision of the Delhi High Court in the case of Panguine Books Ltd England v. India Book Distributorship 1985 Delhi 29.

10. Regarding the effect of repeal of the Designs Act, 1911 the contentions of Mr. S.S. Ray, learned senior counsel for the defendant, are these. The plaintiff is wrongfully claiming protection of a vested right in a procedure. There is only a procedural change in Section 22 of the Designs Act, 2000; and the plaintiff is wrong in claiming that it has a vested right in the corresponding procedure mentioned in Section 53 of the Designs Act, 1911; and that such vested right was saved by Section 48 of the Designs Act, 2000. The proposition that no one has any vested right in the procedure is supported by the Supreme Court decision in the case of Anant Gopal Sheorey v. State of Bombay : 1958CriLJ1429 . The repeal of an enactment is abrogation of the legislation. The legal position has been explained in the decisions in the cases of Nazir Ahmad v. King-Emperor ; Keshavan Madhava Menon v. State of Bombay : 1951CriLJ680 ; Jindas Oil Mill's case (supra) and State of Rajasthan v. Mangilal Pindwal : (1997)IILLJ756SC . Besides, from Sub-section (2) of Section 48 of the Designs Act, 2000 it is clear that all registrations made under the Designs Act, 1911 would be governed by the Designs Act, 2000. The suit was instituted by the plaintiff on August 1st, 2003; it was not pending at the commencement of the Designs Act, 2000. Section 48(4) of the Designs Act, 2000 saved only the pending proceeding. So the case of the plaintiff will be governed by the Designs Act, 2000; and not by the Designs Act, 1911. That such a case would be governed by the Designs Act, 2000 has already been held by a single Bench of the Bombay High Court in the case of Faber-Castell Aktiengesellschaft v. Pikpen (P.) Ltd. (2003) 7 ILD 797.

11. His next contention is that since the suit is governed by the Designs Act, 2000, the grounds on which the registration of the design in the name of the plaintiff can be cancelled, can be raised by the defendant in the present suit in view of Section 22(3) of the Designs Act, 2000; and this being the position the Division Bench decision of this court in the case of Rotomac Pens Ltd. (supra), given in the context of Section 53 of the Designs Act, 1911, is of no help to the plaintiff. He has also contended that the defendant filed the requisite petition for cancellation of the registration before the competent authority on January 15th, 2003; and the plaintiff filed the suit long thereafter; and hence the defendant is entitled to take all the grounds taken by it for cancellation, as valid defences in the present proceeding, as held by a full Bench of the Delhi High Court in the case of Metro Plastic Industries (Regd.) v. Galaxy Footwear : AIR2000Delhi117 .

12. His contentions regarding the grounds of cancellation of the registration are these. The defendant has sought cancellation on grounds (b), (c), (d) and (e) of Section 19 of the Designs Act, 2000. The plaintiff cannot be the proprietor of the design, as at the time of making application for registration it was neither a new nor an original design. The plaintiff simply imported the embossing roller containing the design from M/s. Jin Hwa Machinery Co. Ltd. of Taiwan. The embossing roller containing 'KARATACHI' design is not manufactured in India, and foreign companies, like, M/s. Jin Hwa Machinery Company Ltd. of Taiwan, M/s. Dornbusch Gravuren GMBH of Germany, and M/s. Keller Dorian of France, manufacture the roller. From the letter dated September 24th, 2002 written by M/s. Jin Hwa Machinery Co. Ltd. of Taiwan, and produced in this proceeding by the defendant, it will appear that the design had first been supplied by Jin Hwa to glass manufacturers in Taiwan fifteen years ago. From the communication sent by M/s. Keller Dorian of France, as produced by the defendant in the present proceeding, it will appear that the pattern of 'KARATACHI' was developed by Keller Dorian in the year 1964. There is nothing on record to show that Jin Hwa manufactured the embossing roller containing 'KARATACHI' design only for the plaintiff. M/s. Siam Pattern Glass Co. Ltd. of Thailand has been selling figured glass with this design under the name 'VICTORY' all over the world; and it started this long before the date of making application by the plaintiff for its registration in India. Thus the design cannot be said to be a new one. It also cannot be said to be original, as it is not the plaintiff that conceived or created it. The thing in question is nothing but a surface decoration or ornamentation, and it was wrongly registered as a design. It is neither two dimensional nor three dimensional. Reference in this connection can be made to Section 213(3)(c) of the Copyright, Designs and Patents Act, 1988 (UK) which provides that design right does not subsist in a surface decoration. The allegation of passing off by the defendant is absolutely baseless. The defendant has a substantial share in the glass market, and its glasses arc distinct in their own marks and features. By investing substantial amount the defendant has already imported the requisite embossing roller from Germany. On the basis of the registration of the design obtained by the plaintiff wrongfully, it is not entitled to claim monopoly over the design and stifle competition in the open national market.

13. His last contention is regarding making out the prima facie case by the plaintiff for getting interim relief. His submissions arc these. Making out a prima facie case is the condition precedent for getting interim relief. The position has been explained in the decisions given in the cases of - Gramophone Co. of India Ltd. v. Shanti Films Corporation : AIR1997Cal63 ; Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd. : AIR1999SC3105 ; and S.M. Dyechem Ltd. v. Cadbury (India) Ltd. : 2000ECR1(SC) . In the instant case in order dated August 18th, 2003 Ansari, J was pleased to record the finding that the plaintiff failed to make out a prima facie case for getting interim relief, and there is nothing before this court to take a contrary view. When a similar question arose in an appeal TVC Sky Shop Co. Ltd. v. Spaceage Multi Products (P.) Ltd. [A.P.O.T. No. 517 of 2003 dated 10-9-2003], the Division Bench of Ajoy Nath Ray and Joytosh Banerjee, JJ held that after the Designs Act, 2000, in a suit for protection of copyright in a design registered under the Designs Act, 1911, Section 22(3) of the Designs Act, 2000 would, prima facie, apply; and hence this court should take same view while considering same question of law.

14. In reply Mr. Sarkar has contended that Sub-sections (1) and (3) of Section 22 of the Designs Act, 2000, unlike its Sub-section (2) which deals with procedure, do not deal with procedural matters, but deal with rights and remedies. He has further contended that if the plaintiff had a right to injunction before the Designs Act, 2000 came into force, such right would be saved by the General Clauses Act, 1897 which finds specific mention in Section 48 of the Designs Act, 2000. Regarding Sub-section (4) of Section 48 he has submitted that this provision is clarificatory in nature, and it has been made only by way of clarification. His contention is that the single Bench decision of the Bombay High Court in the case of Faber-Castell Aktiengeselbchaft (supra), besides being not binding on this court, does not lay down the correct law, because it was given without considering the provisions in Section 48 of the Designs Act, 2000 in their true and correct perspective and meaning. He has distinguished the Supreme Court decision in the case of Anant Gopal Sheorey (supra) by saying that it was regarding procedural rights, and not regarding substantive rights; and in the instant case the accrued right of the plaintiff is a substantive right (as opposed to a procedural right), which cannot be defeated by a repeal.

15. As to the applicability of provisions of the Designs Act, 2000 to the present suit, after examining the provisions of this Act, 1 am of the view that the present suit would be governed by the provisions of the Designs Act, 2000.

16. The question in this case is whether any vested right of the plaintiff, accrued under the Designs Act, 1911, was saved by Section 48 of the Designs Act, 2000, read with Section 6 of the General Clauses Act, 1897.

17. Section 48 of the Designs Act, 2000 contains the provisions regarding repeal and savings. It is reproduced below :--

'48. Repeal and savings.--(1) The Designs Act, 1911 (2 of 1911) is hereby repealed.

(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897) with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Designs Act, 1911 (2 of 1911), shall, in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.

(3) The provisions of this Act shall apply to all applications for registration of designs pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.

(4) Notwithstanding anything contained in this Act, any proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act has not been passed.

(5) Notwithstanding anything contained in Sub-section (2), the date of expiration of the copyright in the designs registered before the commencement of this Act shall, subject to the provisions of this Act, be the date immediately after the period of five years for which it was registered or the date immediately after the period of five years for which the extension of the period of copyright for a second period from the expiration of the original period has been made.'

18. The right to legal proceeding as was available to the registered proprietor of a design under Section 53 of the Designs Act, 1911, has not been taken away by any provision of the Designs Act, 2000. Under Section 22 of the Designs Act, 2000 the registered proprietor of a design having registration under the Designs Act, 1911 enjoys the same right to legal proceeding as was available under the repealed Act.

19. Broadly speaking, provisions regarding legal proceedings fall in the category of procedural law. But it is not invariably the case with respect to every provision regarding legal proceedings. Whether a particular provision is substantive or adjective is required to be examined only by interpreting and examining the particular provision, and not by the heading under which it finds place in the statute. Hence simply because Section 53 of the Designs Act, 1911 and Section 22 of the Designs Act, 2000 both find place under the heading legal proceedings, it cannot be said that both the sections deal with procedure only. The Legislature combined in them both the substantive and procedural laws: - actions that shall not be lawful with respect to an existing copyright have been described -necessarily a field of substantive law; liability, i.e., the end product of the administration of justice towards protection of the copyright in the design, has been specified - once again a matter of substantive law; forum has been identified for enforcing the right - being the means to enforce the right, a matter of procedural law; a right regarding defence of the person sued has been declared - being an express statutory right of defence (as opposed to a usual right of defence envisaged by the rule of procedural fairness) to challenge the existence of the copyright which is sought to be enforced, it cannot but be a matter of substantive law.

20. No provision of the Designs Act, 1911 provided that in a proceeding instituted by the registered proprietor of a design under Section 53 thereof, the defendant in the suit was not entitled to take any of the defences which would have been available to such defendant in a proceeding under Section 51A thereof. Had there been such a provision, it could have been said that under the Designs Act, 1911 the registered proprietor of a design had a statutory right to obtain injunction without permitting the defendant to take the defence that the registration was invalid. Such a right was visualized only in the Division Bench judgment of this court in the case of Rotamac Pens Ltd. (Supra)

21. It appears, to remove the doubt, in Sub-section 3 of Section 22 of the Designs Act, 2000 the Legislature expressly declared the right of the person against whom the registered proprietor of the design, might choose to bring an action. Declaration of such right would at best curtail the hitherto enjoyed right of the registered proprietor of a design registered under the Designs Act, 1911. But it cannot be said that such declaration of the right of the person who is likely to be sued, took away any vested right of such a registered proprietor. The curtailment of an existing right does not amount to extinguishment of such right; and this is more so when the curtailment is necessitated to remove any confusion or doubt created by judicial pronouncements. Right of such registered proprietor under the Designs Act, 1911 has also been curtailed with respect to tenure of the registration. The Designs Act, 1911 has simply not been repealed by the Designs Act, 2000 which has simultaneously reenacted the law on the subject. Once the force and effect of the rights flowing from the old registrations had been specifically and consciously curtailed clarified and declared by the Legislature by making specific provisions as in Sub-section (3) of Section 22 and Sub-sections (2) to (5) of Section 48, there is no scope to argue that because of Section 6 of the General Clauses Act, 1897, Sub-section (3) of Section 22 of the Designs Act, 2000 would not apply to the existing registrations.

22. The case of the plaintiff should be governed by the Designs Act, 2000, and not by he repealed Designs Act, 1911, also on the following ground. The plaintiff has not instituted the present suit regarding any cause of action which had arisen before May 11th, 2001 when the Designs Act, 2000 came into force, and from which date the Designs Act, 1911 stood repealed, that is to say, stood abrogated. In terms of Section 48(2) of the Designs Act, 2000 the existing registration in favour of the plaintiff shall have the force and effect as if it has been given under the corresponding provision of this Act. The present suit has not been filed by the plaintiff to enforce a right to institute a legal proceeding against the defendant accrued prior to repeal of Designs Act, 1911. Its right to institute the legal proceeding has accrued after repeal of the Designs Act, 1911. It has sued the defendant on the strength of a registration that is by fiction deemed to be a registration under the Designs Act, 2000; such registration has the force and effect as are declared and contemplated by the Designs Act, 2000. The present suit must owe its birth and life to Section 22(2)(b) of the Designs Act, 2000; on facts, it cannot be considered a suit under Section 53(2)(b) of the obliterated Designs Act, 1911. Therefore, the contention that Section 6 of the General Clauses Act, 1897 protected the right of the plaintiff to institute the suit under the repealed Act is fallacious. On the date of repeal the plaintiff was not enjoying any accrued right to institute any legal proceeding against the defendant, and hence, there was no question of such right being saved by Section 6 of the General Clauses Act, 1897. Provisions of Section 6 of the General Clauses Act, 1897 have absolutely no manner of application to the present proceeding.

23. The defendant had specifically challenged the claim of the plaintiff that it is the proprietor of the registered design 'KARATACHI'. Under the statute the mere subsistence of the registration does not give rise to any presumption that the registered proprietor of the design is its proprietor within the meaning of the word 'proprietor' as defined in the statute. The challenge thrown by the defendant cast an onus on the plaintiff to produce evidence, other than the certificate of registration, in support its claim that it had applied for registration of the design as its proprietor. The plaintiff has totally failed to show any material that at the time of making application for registration it was the proprietor of the design 'KARATACHI', and the design was a new or original one. Facts rather, prima facie, show that the plaintiff is not the author of the design, and it simply acquired he embossing roller containing the design from the international free and open market where the design surfaced decades ago. Thus, I find that the plaintiff has failed to make out any prima facie case that as proprietor of the design it is entitled to copyright in it. In my view, at this stage, the questions (a) whether the thing is a design at all and (b) whether there was prior publication, cannot be examined, because the admissible undisputed evidence on record is totally insufficient to give even a prima facie decision on such questions.

24. Absolutely no case has been made out regarding passing off. The foundation of the suit is apprehended infringement of copyright in the design; though a suit under Section 22(2)(b) of the Designs Act, 2000 can be instituted only on actual infringement of the copyright in the design. Since apprehension is the basis of the suit, allegation of passing off, it appears has been made in a speculative manner. So I find no reason to consider the prayer for interim relief regarding passing off.

25. I find that the decisions cited by Mr. Sarkar do not help the plaintiff in any manner. Since at the relevant places the purposes for which such decisions were cited have already been indicated, to avoid repetition I am not taking up them for discussions once again. Regarding the decisions cited by Mr. Ray on the question of vested right in procedure, I do not think any discussion will be useful in view of my findings recorded hereinbefore. On the decisions cited by him regarding making out a prima facie case for getting the interim relief of injunction, suffice it to say that the proposition is unexceptionable. In Faber-Castell Aktiengesellschafts' case (supra) it was held that from Section 48 of the Designs Act, 2000 and the statement of objects and reasons for the new Act, the intention of the Parliament was clear that all matters pertaining to registration and its cancellation would be governed by the new Act. This decision supports the contention of the learned counsel for the defendant. However, I have given my own reasons for holding that the present suit would be governed by the Designs Act, 2000; and not by the Designs Act, 1911, since repealed.

26. For the foregoing reasons, I am of the view that the plaintiff has failed to make out any case for getting any interim relief in this application. Hence it is hereby dismissed. The costs of this application shall be the costs in the cause.

27. Urgent xerox certified copy of this judgment and order may be supplied to the parties, if applied for.


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