P L D 1959 (W (PLP)

Khurshid Ahmad for Respondent No.

1. Aftab Hussain for Respondent No.

2. Date of hearing : 27th April 1959. Messrs Bawany Violin Textile Mills Limited applied to the Controller of Patents and Designs under the Patents and Designs Act, 1911, for registration of a design on 30th December 1957. This is a design of a print made on voile and is a pattern of six diamonds converging into a centre. The certificate of registration was issued on 15th of March 1958 and by virtue of section 43 (6) of the Act, it is to be deemed as registered on the 30th of December 1957. They print this design on voile in different colours. The Managing Agents of the Mill came to know on or about the 13th of April 1958, that Messrs Firdos Calico Printing Mills Lahore respondent No. I who are printers of designs on cloth were printing a colourable imitation of this pattern on voile, and Abdul Ghani respondent No. 2 who is cloth dealer carrying on business in shop No. 35 Amin Bazar, Azam Cloth Market, Lahore, was selling the voile. Mr. Ahmad, who is the attorney of Messrs Ahmad Brothers Limited, Managing Agents of the Textile Mills, purchased a whole piece of such voile on 14th April 1958, from the, shop of respondent No.

2. On the 19th of April 1958, a suit as instituted in the Court of the District Judge Lahore against Firdos Calico Printing Mills, Lahore, respondent No. 1, as defendant No. 1 and Abdul Ghani respondent No. 2 as defendant No. 2, under sections 53, 54 and 55 read with Illustration (g) of the Specific Relief Act and under section 53 (2) (b) of the Patents and Designs Act 1911, for a permanent injunction to restrain the infringement of, the registered design or in the alternative to restrain the defendants from passing off the goods for those of the plaintiffs and to have an account of profits or in the alter native for damages. Simultaneously on application for a temporary injunction under rules 2 and 7 of Order XXXIX, C. P. C. was made. Notice of the suit and the application was' issued to the respondents. The District Judge dismissed the application after hearing the parties on 14th June 1958. The plaintiff has come up in appeal in F. A. O. 42 of 1958 against the order refusing the issue of the temporary injunction restraining the defendant-respondent No. 1 from printing the design and defendant‑respondent No. 2 from selling the voile on the ground that it was a colourable imitation of their registered design etc.

2. On 30th June 1958, the District Judge recorded an order directing the issue of a notice to the parties for 2nd July 1958, to show cause why the plaint should not be returned to the plaintiff for presentation to tire proper Court, as in his view the suit relating to a patent could only be heard by a District Judge but a suit relating to design was not exclusively triable by the District Judge. On the 2nd of July 1958, the Court, after hearing the parties, made the following order :‑ "In the matter of patents, the District Court has jurisdiction. In the matter of designs, there is no exclusive jurisdiction in the Court of the District Judge. The plaint is returned to the plaintiff through his learned counsel for presentation to the proper Court". Against this order the plaintiff has appealed (F. A. O. No. 43 of 1958). Both the appeals will, be disposed of by this judgment

3. In the matter of the temporary injunction the respondent No. 1 denies the printing of the design on the voile which is objected to as a colourable imita4ion of the plaintiff's registered design and respondent No. 2 denies the sale of the cloth. Before me, the learned counsel for respondent No. I and respondent No. 2 have given an undertaking that their client undertake respectively not to print and sell the pattern com plaided of by the plaintiff. The plaintiff‑appellant is satisfied with this undertaking. This disposes of F. A. O. No. 42 of 1958. The parties shall bear their own costs in this appeal.

4. In F. A. O. 43 of 1958 the learned counsel for the appellant contends that the suit which lies under section 53 (2) (b) of the Patents and Desings Act, 1911 (Act 11 of 1911) is exclusively triable by the District Judge. He relies on Haji Abdur Rab Mian Muhammad Amin v. Mian Rahim Bakhsh Mian Fayir Muhammad (A I R 1940 Pesh. 19) which wholly supports his contention. In addition he has pointed out that Qadir Bakhsh v. Ghulam Muhammad (A I R 1934 Lah. 709) and Muhammad Abdul Karim v. Muhammad Yasin and another (A I R 1934 All, 798) were suits in respect of designs under the Patents and Designs Act and, had been instituted in the Court of the District Judge. I am in respectful agreement with the decision in Haji Abdur Rab Mian Muhammad Amin v. Mian Rahim Bakhsh Mian Fair Muhammad which holds as follows :‑ "Before the enactment of Act II of 1911 the law governing patents and designs was contained in the inventions and Designs Act, V of 1888. Part I of that Act dealt with inventions and Part II with designs. Definitions were given in both parts of the Act and those definitions include the expression `District Court' and `High Court' but not the word `Court'. In the Act of 1911, there is a preliminary part in which definitions controlling the whole of the Act are contained which also include a definition of `High Court' and `District Court' but not of `Court'. Part I deals with patents and Pare II with designs Section 53 of the present Act corresponds in so far as there is any correspondence with section 57 of the old Act. Section 57 of the old Act reads as follows: (1) The registered proprietor of a design may institute a suit in the District Court for the recovery of any damages arising from the application by any person to any article of the design or of any fraudulent or obvious imitation thereof for the purposes of sale, or from the publication, sale or exposure for sale by any person of any article to which the design, or any fraudulent or obvious imitation thereof, has been applied that person knowing or having reason to believe that the proprietor had not given his consent to such application. (2) When the Court makes a decree in a suit under this section. it shall send a copy of the decree to the Secretary who shall cause an entry thereof to be made in the register of desrgns". In the new Act subsection (2) is reproduced as subsection (3) with the exception of the substitution of the word `controller' for `secretary'. The subsection (l) of S. 57 was entirely re‑cast and there is no mention of the words `District Court in the new Act We have perused the proceedings leading to the enactment of the Act of 1911 and S. 53 as it now stands was contained in clause 52 of‑the bill and was not subjected to any subsequent alterations. Neither in the Statement of Objects and Reason, nor in the notes on the clauses was any indication given that it was proposed to alter the forum in which a suit of this nature could be brought and subsection (1) of the old S. 57 was re‑cast to bring it in conformity with the latest Parliamentary statute on the subject. Taking all these facts into consideration namely that although the words `High Court' and `District Court' have been defined in both the Acts, whereas `the Court' has not been defined, that no other proceedings under the Act can be brought in a Court inferior to that of the District Court and the circumstances in which S. 53 was remodelled from the old Act, we come to the conclusion that the words `the Court' in S. 53 must refer to the District Court".

5. But Mr. Aftab Husain, learned counsel for respondent No 2 argues that as the words "District Court" existed in section 57 of Inventions and Designs Act (V of 1888), but were omitted from section 53 (2) (b), of the Patents and Designs Act, 19 the ordinary Courts were intended to be given jurisdiction, as under section 15, C. P. C. every suit shall be instituted in the Court of the lowest grade and the District Judge ceased to have exclusive jurisdiction. In the Patents and Designs Act, 1911, section 54 has been introduced which reads as follows :‑ "The provisions of this Act with regard to certificates of the validity of a patent, and to the remedy in case of groundless threats of legal proceedings by a patentee shall apply in the case of registered designs in like manner as they apply in the case of patents, with the substitution of references to the copyright in a design for references to a patent, and of references to the proprietor of a design for references to the patentee, and of reference to the design for references to the invention". This section provides that the provisions of the Act with regards to the remedy in case of groundless threats of legal proceedings in case of a registered design shall apply in the like manner as in the case of patents. Section 36 of the Act prescribes that where any person claiming to have an interest in a patent threatens any other person with any legal proceedings or liability in respect of any infringement of a patent the person aggrieved may bring a suit in a District Court. A suit in case of groundless threats of legal proceedings in the case of registered design thus lies to the District Court. If such a suit lies to the District Judge, a suit by the proprietor of a design under section 53 (2) (b) of the Act for recovery of damages and injunction etc. must also lie to the District Court. Legal pro ceedings in respect of a patent and a design have been placed on the same footing and there is no distinction in the Court to which suits lie. The suit in respect of a design thus lies exclusively to the District Court i.e., the District Judge. This appeal is, therefore, accepted with costs and the order of the District Judge dated 2nd July 1958, is set aside. The plaint shall therefore be entertained by the District Judge and the suit decided in accordance with the law. A. H. Appeal accepted.