P.K. MISRA, J
The present appeal is directed against the order dated
6.4.2005 in O.A.No.731 of 2005 arising out of C.S.No.638 of 2003.
2. The said suit was filed by the present appellants under
Section 22 of the Designs Act, 2000 (hereinafter referred to as the Act) for
permanent injunction restraining the defendants from in any manner infringing
upon the Registered Designs granted to the second plaintiff in respect of the
manufacture and sale of the articles, namely, Air Water Beds, Water Beds and
Squared Water Seats/Water Cushion and, directing the defendants to render true
and proper accounts to the plaintiffs in respect of the manufacture or sales
of the Air Water Beds, Water Beds and Squared Water Seats/Water Cushion and,
consequently directing the defendants to pay damages to the plaintiffs.
3. During pendency of the suit, the appellants also filed an
application for interim injunction restraining the defendants / respondents
from the manufacture, sale, distribution and all other connected activities
relating to the products, Air Water Beds, Water Beds and Squared Water
Seats/Water Cushion, imitating the registered designs granted to the second
plaintiff.
4. According to the plaintiffs, the second plaintiff obtained
design registration for Air Water Beds, Water Beds and Squared Water
Seats/Water Cushion on 27.11.2002. The second plaintiff, who is a technocrat
involved in the inflatable business for about 20 years, invented Air Water
Beds, Water Beds and Squared Water Seats/Water Cushion with novelty,
originality and speciality in shape and configuration, which were subsequently
registered under the Designs Act. The basic allegation contained in the
plaint as well as the application for injunction is to the effect that the
products are specially designed to suit the requirement of the medical
profession and the respondents, who were originally the advertising agent,
manufactured similar products adopting similar designs.
5. The case of the respondents in short is that they were
manufacturing water beds from 1997, much before the design was registered by
the plaintiffs/appellants, and such products were being sold with trademark
Madhu Medcure and Madhu Unicare. It was their contention that since their
products were advertised much earlier, it can be taken that they had made
prior publication of the Designs which were registered by the plaintiffs
subsequently on 27.11.2002.
6. Learned single Judge on considering the rival submissions
came to the conclusion that even though the plaintiffs products and the
defendants products were almost similar in design and since under Section 4
of the Designs Act there is a prohibition of registration of a design which is
not new or original or has been disclosed to public or used prior to the
filing an application for registration and since such a defence was
permissible to be taken, under Section 22 read with 19 of the Act, no
injunction can be issued. The said order is under challenge in the present
appeal.
7. Learned Senior Counsel for the appellants has submitted
that the learned single Judge has erroneously placed reliance upon Section 19
of the Designs Act at the stage of considering the question of injunction.
8. At this stage, it may be necessary to notice to the
relevant provisions contained in the Designs Act, 2000. Chapter II of the Act
relates to Registration of Designs. It states inter alia that a design, which
is not new or original or has been disclosed to the public any where in India
or in any other country by publication in tangible form or by use or in any
other way prior to the filing date for registration, shall not be registered.
Section 5 provides for filing of application for registration of designs and
Section 6 envisages registration to be in respect of particular article.
Section 9 empowers the Controller to grant certificate of registration to the
proprietor of the design when registered.
9. Section 19, which occurs in Chapter III, relates to
cancellation of registration and it is to the following effect :-
19. Cancellation of registration
(1) Any person interested may present a petition for the
cancellation of the registration of a design at any time after the
registration of the design, to the Controller on any of the following grounds,
namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior
to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2 .
(2) An appeal shall lie from any order of the Controller under this
section to the High Court, and the Controller may at any time refer any such
petition to the High Court, and the High Court shall decide any petition so
referred.
10. Chapter V relates to legal proceedings. Section 22
relates to piracy of registered design and it is to the following effect :-
22. Piracy of registered design
(1) During the existence of copyright in any design it shall not be
lawful for any person
(a) for the purpose of sale to apply or cause to be applied to any
article in any class of articles in which the design is registered, the design
or any fraudulent or obvious imitation thereof, except with the licence or
written consent of the registered proprietor, or to do anything with a view to
enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the
registered proprietor, any article belonging to the class in which the design
has been registered, and having applied to it the design or any fraudulent or
obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation
thereof has been applied to any article in any class of articles in which
design is registered without the consent of the registered proprietor, to
publish or expose or cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be
liable for every contravention-
(a) to pay to her registered proprietor of the design a sum not
exceeding twenty five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of
damages for any such contravention, and for an injunction against the
repetition thereof, to pay such damages as may be awarded and to be restrained
by injunction accordingly.
PROVIDED that the total sum recoverable in respect of any one design
under clause (a) shall not exceed fifty thousand rupees;
PROVIDED FURTHER that no suit or any other proceedings for relief
under this sub-section shall be instituted in any court below the court of
District Judge.
(3) In any suit or any other proceeding for relief under subsection
(2), every ground on which the registration of a design may be cancelled under
section 19 shall be available as a ground of defence.
...
11. Learned counsel for the appellants has contended that in
the present case the learned single Judge has rejected the application for
injunction by prima facie accepting the defence as contemplated under Section
22(3) on the footing that registration of the design may be cancelled under
Section 19. He has submitted that such a defence is only available to be
raised and decided at the time of final decision of the suit and such defence
is not available at the stage of considering interim application for
injunction.
12. We do not think such a contention can be accepted.
Section 22(3) envisages every ground on which the registration of a design may
be cancelled under Section 19 shall be available as a ground of defence in any
suit or any other proceeding for relief under sub-section (2 ). Under Section
22(2) any person who acts in contravention of Section 22 shall be liable for
every contravention as envisaged in clause (a) and if the proprietor elects to
bring a suit for the recovery of damages and for an injunction against the
repetition to pay such damages as may be awarded and to be restrained by
injunction accordingly.
13. In the present case, the plaintiffs/appellants has
brought the suit claiming damages as well as claiming injunction. Interim
injunction claimed by the appellants is only in aid of the final relief
claimed by them. It is therefore axiomatic to hold that the defences which
are available to the defendants at the time of final decision of the suit are
also available at the stage of considering the interim application for
injunction. Therefore, the legal contention raised by the counsel for the
appellants cannot be accepted.
14. The expression any other proceeding as contained in
Section 2 2(3) is to be understood in a wider sense and the application for
interim injunction can be considered as a proceeding within the meaning of
Section 22(3) of the Act. The restricted meaning given to the term
proceeding in some matters, particularly, in the context of Section 115 of
the Code of Civil Procedure may not be applicable. Any other interpretation
of Section 22(3) may create an anomaly inasmuch as even though the defendants
would be able to resist the suit by raising defences envisaged under Section
22(3) read with Section 19, they would not be able to resist an interim
application for injunction.
15. In the present case, the learned single Judge has
observed that the defendants had manufactured the products with similar design
and it had been published in India prior to the date of registration and,
therefore, the registration was liable to be cancelled. Such observation of
the learned single Judge must obviously be taken to be a prima facie
observation which is neither binding on the trial court at the time of final
decision of the suit nor any such observation is binding on the authority,
which is required to consider the petition for cancellation of registration of
the design. Even though we are not inclined to pass any order of injunction
at this stage by differing from the learned single Judge, as a discretionary
order has been passed, we make it clear that any observation made by the
learned single Judge must be taken to be only a prima facie observation made
for the purpose of considering the interim application and, any proceeding
pending under Section 19 and the suit are required to be disposed of on their
own merit without being influenced in any manner by the observations made by
the learned single Judge. We are also making it clear that we have not
expressed any opinion one way or the other in the matter save and except
stating that we are not inclined to take a different view in respect of the
prima facie conclusion. We however feel that interest of justice would be
served by directing the respondents to maintain accounts in respect of the
transactions to be made hereafter so that it would be convenient to quantify
the extent of damages payable, if the appellant ultimately succeeds in the
suit. Such accounts should be produced before the Registry once in every six
months by serving a copy to the plaintiff.
16. For the aforesaid reasons, the appeal is disposed of
subject to the clarification and direction issued above. No costs.
Consequently, the connected miscellaneous petitions are closed. Keeping in
view the nature of dispute, the suit may be taken up for earlier disposal on
out of turn basis.
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