P L D 1963 (W (PLP)

" . . . ‑. it is doubtful whether validity of a design can be challenged by any other method," than by an application to rectify the register of designs. In England, objections to the validity of registered designs have been considered in suits which were brought for infringement of the designs by those Courts which had the jurisdiction to try such suits as well as to decide applications for rectification of the register of designs. This being the situation, absence of an application for rectification of the register was a defect of formality only. In British Insulated and Helsby Cables Ltd. v. London Electric Wire Company and Smiths Ltd. (30 R P C 620), the Vice‑Chancellor of the County Palatine of Lancaster declined to allow amendment of the defence by raising the objection that the design of the plaintiff was not novel. After citing two judgments, namely Werners Motors Ltd. v. Gamage Ltd. (21 R P C 621 ; L R (1904) 2 Ch. 580), and Doble v.. Spaendonk (27 R P C 440), in which doubt had been expressed as to the validity of the procedure of allowing such an objection in the absence of an application for rectification of the register, the Vice‑Chancellor rejected the request for amendment on the ground that he had no power to rectify the register. He posed to. himself the following question "In that state of things (i.e. absence of the power to rectify) ought to do indirectly what I cannot do directly ?" And answered it in the negative. I should note that in the case that is before me, the trial Court had no jurisdiction to either order rectification of the register or to order cancellation of regis tration, because under section 64 of our Act, the power of rectifi cation is given to the Controller, and under section 51‑A, the power of cancellation is conferred on the High Court. The trial Court was thus not competent to give relief by either ordering rectification or cancellation. The English precedents, therefore, in which the defence of invalidity was allowed to be raised without applications for rectification or cancellation are inapplicable to suits which are filed in our country, excepting for‑ and that too in a restricted sense only‑to those suits which may be filed on the original side of the High Court.

10. Reverting now to our Act, I refer to section 53 (1), and section 47(1) to which reference has already been made (in para graph 8) above. The effect of these provisions is that on the registration of a design the registered proprietor of the ,design acquires copy‑right for five years and during the existence of this copy/right it is not lawful for any person other than the registered proprietor to use the registered design except in the circumstances specified in section 53 (1). Subsection (2) of section 53 lays down as follows "If any person acts in contravention of this section, he shall be liable for every contravention‑ (a) to pay to the registered proprietor of the design a sum not exceeding five hundred 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 sutra recoverable in respect of any one design under clause (a) shall not exceed one thousand rupees." The effect of clause (b) of the above provision is that infringement of a registered design is to be prevented by an order of injunction.

11. Counsel for the appellant questioned the correctness of these conclusions and laid emphasis, as mentioned above, on the word "subject to the provisions of this Act" which occur in section 47(1) in order to argue that registration of a design is not conclusive evidence of its validity because of the following two provisions of the Act Section 46.‑"(3) The register of designs shall be prima facie evidence of any matters by this Act directed or authorized to be entered therein. Section 71."A certificate purporting to be under the hand of the Controller as to any entry, matter or thing which he is authorized by this Act, or any rules made there under, to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone." These provisions should be carefully noted, because one of them (subsection 3 of section 46) has been used in more judgments than one to support the view that the validity of a design can be ques tioned as a defence without snaking an application (under section 64) for rectification of the register of designs or for cancellation (under section 51‑A) of registration. But the effect of section 46(3) is simply that the contents of the register are prima facie proof of any matter directed or authorised by or under the Act to be entered in it. It dispenses with the proof of its contents. The effect of section 71 is simply that a certificate issued by the Con troller under his hand and showing that any matter required by law to be entered in the register of designs has or has not been so entered, shall be prima facie evidence that such an entry was or was not made. This is meant to dispense with the production of the register of designs to prove its contents. These two provi sions were necessary for removing doubts regarding the weight of the two pieces of evidence and thus for making the procedure of rectification and cancellation simpler because designs are not registered under section 43(l) of the Act after full enquiry. The forum for the proceedings of rectification and cancellation, how ever, remain under the Act to be the Controller and the High Court. This aspect of the legal situation is brought out with clarity and emphasis by section 47(l) read with section 53(1) under which it is not lawful for any person other than the regis tered proprietor, during the existence of a copy‑right created by the registration of a design, to use such a design for selling an article. The prohibition exists so long as the copy‑right subsists. This prohibition can be obviated by rectification of the register or cancellation of registration but a declaratory order, judgment or decree of a Court, which does pot rectify the register of designs or cancel registration cannot remove or curtail the prohibition. It will be ineffective in terms of section 43(1) read with section 53(1).

12. Moreover, since the Act has created copy‑right in designs and contains provisions for rectification and cancellation these functions can be performed in accordance with those provisions only. This is perhaps an obvious proposition, because when a right or liability is created by a statute which also provides a special remedy for enforcing it, the remedy, provided by that statute must be followed. The Controller and the High Court are Special Tribunals appointed by the Act to determine the questions of rectification and cancellation ; therefore, these function cannot be discharged by Civil Courts as such. If support were needed for this view, reference could be made to the commentary by Mulla on section 9 C. P. C. (12th Edition of 1953) page 32, and Maxwell on Interpretation of Statutes (10th Edition of 1952) at page 129.

13. The conclusion which follows from the preceding paragraphs is that the inconclusive character of the evidence that is provided by a certificate issued by the Controller and by the entries that are made in the register does not weaken the prohibi tion against infringement and does not confer jurisdiction on Tribunals other than the Controller and the High Court to rectify the register of designs or to cancel registration.

14. This view, however, is not supported by judgments delivered in India and Pakistan. The doubt that existed in England (See paragraph 9 above) regarding the correctness of the procedure of questioning the validity of a design in an action for its infringement has been removed by an amendment made in 1950 in the Rules of the Supreme Court. Now under Order LIII (f), rule 3 of the Rules of the Supreme Court, the defendant may in such an action counter‑claim rectification of the register, whereupon notice is given to the Controller‑General of the Patents, Designs and Trade Marks to participate in the proceed ings. There is no such provision in Pakistan. Moreover, there is no judgment of India or Pakistan in which the effect of section 51‑A (cancellation of registration) and 64 (rectification of register) read with section 47(1) (copy‑right on registration) and 53 (piracy of registered design) of the Act on the propriety of raising the defence of the invalidity of a design in a suit for infringement has been considered, though prima facie character of the evidence provided by a certificate and by the entries of the register of designs as well as novelty of design have been commented upon in the light of sections 46(3) and 43(1) of the Act to draw the conclusion that registration of a design is not a final proof of the validity of such a design. This reasoning does not clinch the argument.

15. There are only a few reported decisions of India and Pakistan which are directly relevant to the two issues that are now under consideration. The earliest of these judgments is Bahal Rai v. Sumer Chand ((1903) I L R 25 All. 493), in which the defence of invalidity of the design was allowed in an action for infringement without any objection to or discussion of its propriety. That was a suit under Inventions and Designs Act (V of 1888.) The second judg ment is Ram Sahai v. Angoo (A I R 1922 All. 496), which was delivered after the present Act come into force in 1911. In it the defence was similarly allowed and another Division Bench of the Allahabad High Court held on the basis of section 43 of the Act that "no registration is effective, unless the design or configura tion, sought to be protected, is new and original and not of a pre‑existing common type." No reference was made to any other section.

16. The third judgment is again of Allahabad, Muhammad Abdul Karim v. Muhammad Yasin (A I R 1934 All. 798). In this appeal the main argument was that registration could not be questioned in a suit for enforcing copyright. Sections 29, 46, 47, 53 and 64 were con sidered but the suit had been brought‑ "on the ground that be (the plaintiff) was in possession of a certificate granted by the Controller." Therefore, this ground largely remained in view and the conclu sion on the basis of section 46(3) was that , " . . . there is not under the Act conclusive proof of the entry that the plaintiff is the proprietor of the design, but there is prima facie evidence that he is the proprietor." Bholal Rai's case was followed because the learned Judges saw "no reason to differ from that ruling". Rectification of the register of designs by the Controller under section 6 4 of the Act was not considered to be the only remedy but no contention had been raised that the Controller and the High Court were special Tribunals appointed under the Act which was a self‑sufficient legislation or that 'a mere declaration was ineffective against the protection granted by section 53 of the Act.

17. The fourth judgment is Qadar Bakhsh v.. Ghulam Muhammad (A I R 1934 Lah. 709), in which the precedent of Ram Sahai's case was implicitly followed.

18. The fifth judgment is Dwarkadas v. Chhotalal (A I R 1941 Bom. 188), which was decided on the basis of the prima facie nature of the register of designs in terms of section 46(3). References were made to sections 20, 29, 51‑A, 53 and 64 but the main considerations which influenced the decision were as follows "But what is really significant is that the Legislature has not definitely provided anywhere in the Act that the certificate of registration until cancellation is conclusive proof of the fact . that the grantee of the certificate is the proprietor of the design, that is to say, the proprietor of a new or original design. I do not think that the Legislature would have left such an important point merely for inference. Nor is it provided in the Act that the only remedy of an aggrieved party is under section 51‑A and section 64 of the Act, and that if no such application is made the aggrieved party cannot urge his ground of defence in a suit brought by the registered proprietor under section 53 (2) of the Act. My attention was drawn to the observations of Halsbury, Hailsham's Ed., Vol. XXXII, p. 696, para. 1006, in which it is stated that it seems to be doubtful whether the validity of the registration can properly be raised by way of defence in a suit for infringement of a design, and whether it should not rather be sought by means of a motion for rectification of the register." The doubt was resolved by following the decision in Muhammad Abdul Karim's case. No argument was addressed that the jurisdiction of the Civil Courts was impliedly ousted by the crea tion of a new right, namely copyright in designs and that there were special Tribunals to protect it nor was it brought to the notice of the learned Court that inconclusive character of the register of designs and of a certificate issued by the Controller did not effect the forum of proceedings. If this was brought to the notice of the Court then the conclusion. might have been that there was no need for making a provision in the Act that a "cer tificate until cancelled is conclusive."

19. The last judgment that has been brought to my notice is Karachi Textile Works v. Multan Handloom Factory (PLD 1955 Kar. 351). In this judgment the provisions of the Act are not discussed because the argument apparently was that the questions involved in the appeal were fully covered by authority. Almost all the judgments to which reference has been made above as well as Halsbury's Laws of England were cited and the judgment proceeded on their con sideration as follows "When I heard Mr. Farooqi, the learned Advocate for the plaintiff, I was inclined to make my interim order absolute ; but on consideration of authorities bearing on the question of interim injunction .(in) matters of infringement of designs, I have come to the conclusion that I would withdraw my interim order on certain conditions which the learned Advocate Mr. Ibadat Yar Khan, had accepted." With this background of the argument the‑ result, as could be expected, was the following main conclusion "It is however not necessary for me at this stage to say more than this, that having regard to the principle of Stare Decisis, I do not see any reason to give any other interpretation than that which has been given by the Courts in this sub‑continent for about fifty years." On this conclusion the decision was that‑' (i) validity of a registered design may be questioned by way of defence in a suit for its infringement ; (ii) the same considerations are applicable to applications for temporary injunction in suits for infringement of designs as are applicable to such applications in suits for infringement of patents. Those considerations are that‑ (a) an interlocutory injunction is not granted if the design is recent; and (b) there is substantial doubt as to its validity.

20. The principle of Stare Decisis is a greatly valuable doctrine of common law. It means that the Courts should stand by precedents and should not disturb them. Without this prin ciple common law could not exist, but its place in a system of law, like ours, where the main body of the law, excepting for personal law, consists of statutes, is very limited. The main task of lawyers and Judges in such a system as ours is to discover the purport of the statutes and to apply it to the facts of each case. They have to analyse statutory provisions to understand and accurately construe them and to examine the structure of the statutes in which the provisions occur to correctly interpret them. The principle of Stare Decisis comes into play with reference to statutes as a rule of wisdom and prudence when statutory provi sions have been interpreted and construed by Judges in the same manner for a very long time and the interpretation has affected the conduct of a large portion of the society, provided that the decisions have neither violated the letter and spirit of statutory provisions nor are clearly erroneous or patently unreasonable. The proper position of precedent in statutory construction has been set forth in the following quotation reproduced by Crawford in his book on Statutory Construction at page 285 "It is a mistake to treat statutory construction like other branches of the common law, as a body of doctrine to be gathered from particular precedents and judicial utterances ; the only proper method of approaching the problem is the inductive one; gathering from the mass of decisions certain tendencies and seeking to determine whether some of these tendencies arc strong enough to impose themselves upon Courts by reason of inherent fitness and necessity."

21. I have strived earlier in this judgment to explain that the trend of common law to weaken monopoly cannot guide us because the intendment of our Act is that copyright in a registered design is to be protected so long as the register of designs is not rectified to the contrary purpose or registration is not cancelled after following the procedure that is laid down for this purpose in the Act itself. Thus following the letter and spirit of the statute (Act II of 1911) and holding that the respondent has a good prima facie case. I dismiss the appeal with costs. K. B. A. Appeal dismissed.