Sat Paul Singh v. S.P. Engineering Works

JUDGMENT

Prakash Narain, J.

1. The plaintiff has filed a suit for permanent injunction against the defendant alleging piracy of his registered and so, for a restraint order against this alleged piracy. The plaintiff also claims in this suit rendition of accounts damages etc. The plaintiff makes Gas Welding Sets and the special features of his product are shape and configuration of the main body with central knobs, hand-grip, nozzle tube and back tube connection. He claims that he has been making these Gas Welding Sets with distinctive features for the past seven years or more. He has got his designs registered under the Patents and Designs Act. The defendant is alleged to have copied these designs and manufactured and marketed Gas Welding Sets similar to those the plaintiff with intent to deceive the consumers and to cause confusion and deception in the trade and in the mind of the public by allegedly more or less passing off his goods at those of the plaintiff. This suit of the plaintiff has been contested by the defendant, who has alleged that the designs, claimed by the plaintiff are neither new nor original and they were published in India prior to the dates of registration i.e. 25.2.1966 and 4.6.1965 which makes the registration invalid. It is also asserted that the designs registered on 4.6.1965 and 25.2.1966 have not been renewed by the plaintiff and as such he cannot claim any proprietorship in the same any longer and that the suit is liable to be dismissed because the product of the defendant is not a violation of the alleged registered designs of the plaintiff.

2. Along with the suit the plaintiff also filed IA. 1245 of 1971 praying that during the pendency of the suit the defendant be restrained by means of an interim injunction from manufacturing and selling Gas Welding Sets which are identical to and/or colourable imitation of the plaintiff's Gas Welding Sets, the design of which is duly registered. Notice of this application was given to the defendant who has contested the issue of any interim injunction. In court the arguments have been restricted to the design bearing Registration No. 127880 registered on 25.2.1966.

3. Sub-section (5) of section 2 of the Patent and Designs Act, 1911 sets out that a design means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical separate or combined, which in the finished article appeal to and are judged solely by the eye. Sub-section (4) of Section 2 of the said Act sets out that 'copyright' means the exclusive right to apply design to any article in any class in which the design is registered. Section 46 of the said Act lays down that a register of design shall be maintained in the patent office and sub-section (3) of Section 46 sets out that a register of design shall be prima facie, evidence of any matters by the said Act directed or authorised to be entered therein. In the register of designs have to be entered the names and addresses of proprietors of the registered designs, notifications of assignment and of transmissions of registered designs and all the particulars of the design that has been registered. According to section 47 of the Act when a design is registered the registered proprietor of the design shall have copyright in the design during five years from the date of registration and the copyright may be extended on application, by the Controller for another period of five years to start with and for a second period of five years also. Section 53 of the Act makes it unlawful for any person for the purpose of sale to apply or cause to apply to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof except with the leave of the registered proprietor any article belonging to the class in which the design has been registered or an imitation or copy of the registered design etc. Thus once a design is registered, prima facie, it is only the registered proprietary who can take benefit of the registered design during the period for the validity of the registration and no one else. Indeed, such seniority has been attached to a registered design that, as provided in Section 50 of the Act, during the existence of the copyright in a design or such shorter period not being less than two years from the registration of the design, as may be prescribed, the registered design is not even open to inspection by anybody except the proprietor of a person authorised by him in this behalf. It follows, therefore that once a design has been registered after following the procedure for the registration of the design no one except the registered proprietor or person authorised by him can use the design in the class of goods in which the design is registered if the piracy is intended for the purposes of manufacturing goods or articles for sale. Prima facie, therefore, once that design is registered the registered proprietor can insist that anyone committing piracy should be restrained from doing so.

4. The above being the position of law the main argument addressed by Mr. Mangla, the learned counsel for the defendant, was that the plea by the defendant about the validity of the registration is by itself enough to disentitle the plaintiff to the grant of interim relief by way of an interim injunction. To my mind there is a fallacy in this argument. What the contention amounts to is that even if a false plea about the validity of registration is taken up by a defendant no interim injunction should be granted. In support of his contention Mr. Mangla, relied on two decisions namely, the rule laid down by Lloyd-Jacob J. in Marx (Louis) and Company v. Fairchild Plastics Ltd., 1966 R.P.C. 314 and the rule laid down by the same learned Judge in Swain (Mathew) Ltd. v. Barker (Thomas) and Sons Ltd. 1967 R.P.C. 23, I need not comment upon these two decisions for, in my view, English precedents are not of much help in our country. As was observed by Lord S.N. Andley, J. in his judgment dated 31.5.1967 in C.M. 483, of 1967 in Suit No. 298 of 1967 and by me in my judgement while disposing of O.M. 743 of 1967 in suit No. 389 of 1967, the scheme of our Act is different from the scheme of the English statute. Apart from everything else in the Indian Act there is a provision, Section 52(2), which is not found in the English Act at all. Nor is there any provision similar to it in the English Act of 1949. The relief of injunction is not one of the reliefs which have been statutorily recognised in England and the absence of such a provision, which is found in the Indian Statute, will naturally condition the observation of learned Judges in English Courts. I, therefore, negative the contention of Mr. Mangla that the mere raising of an objection pertaining to the validity of registration by itself disentitles the issue of interim injunction.

5. The next argument of Mr. Mangla was that the very fact that one design was registered by the plaintiff on 4.6.1965 and another on 25.2.1966 shows that there was no novelty in the design. To my mind the argument is really begging the questions. A registered design is effective without extension for a period of five years. If there is a previous registered design the Controller is precluded from registering another design which may be copy or imitation of the previous design. The registration is regarding the novelty and if in the subsequent design there is no novelty obviously there cannot be registration. The very fact that the design was registered on 25.2.1966 postulates that it was not similar to the previous design registered on 4.6.1965 and there must have been some novelty in the subsequent design. This contention, therefore is overruled.

6. The third and last contention of Mr. Mangla was that the design of the petitioner has no novelty in as much as it was published in India prior to 1965. That such a contention is a valid defence in the suit and can be raised to challenge the validity of the registration has no bearing at this initial stage. These are matters which have to be decided on evidence. As at present advised there is nothing on record to show that the petitioner's design was previously published in India. My attention has been invited by the defendant's counsel to a catalogue purported to have been issued in Canada in 1953. There is neither any evidence on record nor even an affidavit to show that either the catalogue or the magazine were available in India in 1965 or prior to that. So, for the present one cannot say that the design was previously published. The argument really is that it is a common design and the defendant has had long user of it. The idea of long user is repugnant to a patent or a design is conceived in secrecy and even after registration the secrecy has to be kept in accordance with the provision of section 50 of the Act. Therefore, the concept of long user is wholly irrelevant. The rights given in Section 53 to a registered proprietor are not dependent upon the proprietor of a registered design to use that design but he can prevent anyone also using that design. That contention also, therefore, has no force. The result is that there is no valid objection put forth to the issue of any interim injunction. On a visual inspection of the impugned objects I find that there does seem to be, prima facie, a violation of the registered design of the plaintiff. I, therefore, issue an interim injunction restraining the defendant from manufacturing and selling Gas Welding Sets which are identical to and/or colourable imitation of the applicant's Gas Welding Sets of the registered design of No. 127880 till the disposal of the suit.