P L D 1955 Sind 351 (PLP)

INAMULLAH, J.--‑This is an application under O. XXXIX, rule 1 and 2 read with section 151 Civil P. C. restraining the defendant, a factory, from manufacturing or attempting to sell textile fabrics e. g., bed, pillow & table covers or any other articles bearing designs registered as No. 405 of 7th August, 1954 and 408 of 16th September, 1954. I issued an interim injunction on January 21st 1955. The contention of the plaintiffs shortly put is that, they have certain designs of bed, pillow & table covers registered under the Patents and Designs Act 1911. This was registered as already mentioned, on September, 16th 1954. The present suit has been filed on 21st January, 1955. It was contended by the learned advo cate for the plaintiff that three other persons also tried for to infringe the right of the plaintiff whereupon the plaintiff served a notice. Those persons admitted to have infringed the right of the plaintiff and have since abstained from doing so. The defendant, was also served with a similar notice on December, 27th 1954. The defendant did not send a reply to that notice ; but it later on appeared that this was due to the mistake of the Office of the learned advocate whom the defendant had instructed to send the reply. Mr. Mirza, the learned advocate, who is appearing for the defendant made a statement to that effect. I have no reason to disbelieve the statement at the Bar that the notice could not be sent through the mistake of his Office to the plaintiff. Mr. Farooqi also does not Challenge this statement. A copy of that notice, however has now been filed before me which is dated January, 12th 1955. It would appear from the counter‑affidavit, filed by the defendants s, that they had challenged the design on the ground that it is not a new design and that they had already been manufacturing articles similar to that design. The suggestion of the defendant was that the plaintiff had com mitted piracy of the defendant's design. When I heard Mr. Faroogi, 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 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. His clients are present in Court and they have given an undertaking to carry out the order of the Court in that respect. Mr. Ibadat Yar Khan, the learned advocate for the defen dants, argued that the 'principle, as enunciated by Terrell and Shelly on "Patents" 9th Edition, should be taken into consideration so far as the interim order in a suit for infringement of designs is concerned. At page 318 the Commentary reads as under : "The plaintiff must first establish such facts as will satisfy the Court that there are strong prima facie reasons for acting on supposition that the patent is valid. The most cogent evidence for this purpose is either that there has been a previous trial in which the patent has been held to be valid, or that the patentee has worked and enjoyed the patent for many years without dispute ; or it may be that as between the parties the plaintiff is relieved from the onus of establishing validity, as where the defendant has admitted it or is so placed in his relationship to the plaintiff as to be estopped from denying it." Further on the same page: "An interlocutory injunction is never granted in the case of a new patent even though the defendant refuses to under take to keep an account if it is opposed. The proper course is for the motion to stand to the trial. Further on page 319. "An interlocutory injunction will not be granted however, even in the case of an old patent if the defendant Challenges the validity of patent and shows that there is a question as to this which has to be tried." Mr. Farooqi, the learned Advocate for the plaintiff, con tended in the first place that these considerations were appli cable only to matters appertaining to the infringement of patent and not to designs. The principles, enunciated above, no doubt relate to patents ; but as I would deal later .on, they have been held by no less a judge than Scrutton Lord Chief Justice that these considerations which apply to case of patent, will with more force apply to the case of infringement or designs where injunction is sought for. Mr. Farooqi in the second place also contended that the defendant having not proceeded under section 51‑A of the Patents & Designs Act of 1911, he cannot challenge the validity of the copyright of the design on any of the grounds that he has now raised. I must say that this contention of Mr. Farooqi is not without force. Mr. Farooqi has relied on section 47 of the Patents & Designs Act. The relevant portion of that section reads as under: "When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration." The contention of Mr. Farooqi is that Patents and Designs Act is a complete act. It .has provided the machinery as to how the registration of a design can be challenged. This is pro vided under section 51‑A of the Patents & Designs Act. Any person who wants to challenge the registration of a design can apply to the High Court or to the Controller on the grounds that have now been taken by the defendant to challenge the validity of the registration. The words "subject to provi sions of this act" in section 47 of the Patents & Designs Act have to be ‑given ordinary meaning and if that is so, the plaintiff should be held to be the proprietor of the design that has been registered in his favour subject to the challenge that is provided in section 51‑A of the Act. On the other hand, it would appear that this argument had been raised in several Indian Cases and the view that has been taken by the judges vas that in a suit for infringement of designs, the de fendant could take such plea as he has now taken. . The authorities that have been cited before me and which I will presently mention, no doubt relate to the period when section 51‑A was not introduced. Section 51‑A was introduced by Patents and Designs Amendment Act 1930 (VII of 1930). This consideration in my opinion, has not much weight as section 64 was being used for the same object which is now provided in section 51‑A of the Patents and Designs Act. In the case of Mohammad Abdul Karim v. Mohammad Yaseen (1) Banent J, observed that: "Similar objections that have now been taken by the present defendant could be taken under section 64 of the Patents and Designs Act 1911." The earliest Indian Case that has been cited before me is that of Bahalrai v. Summerchand (25 All. 493). The next case is that of Mohammad Abdul Karim (A I R 1934 All. 798). The third case is that of Qadir Bakhsh v. Ghulam Mohammad (AIR 1934 Lah. 709) The last case is that of Dawarkadas Dhanji Sha v. Chhottalal Ravicarandas & Co. (A I R 1941 Bom. 188.) In All these cases, a similar point was urged and was repelled by the learned Judges ; but in fairness to Mr. Farooqi, I must mention, that in none of these cases, the argument that has been raised by Mr., Farooqi now before me, has been considered viz., the provision of section 47 of the Patents & Designs Act. This section has not been considered in any of these authorities. There is, in my opinion, great weight in the argument of Mr. Farooqi that where the Legislature has provided a certian machinery for doing a thing, that must be followed, especially when a certain right has been given to a party by virtue of a Statutory provision. If the defendant has not chosen, as is contended by the learned advocate for the plaintiff, have recourse to the right given under the Act, his client should not be divested of the right that the Legislature has conferred upon him. 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 givg any other interpretation than that which has been given by the e Courts in this sub‑continent for about fifty years. I may also mention here that in the case of Smith y. Grigg Limited ((1924) T. L. R. Vol. (40) 248.at p. 250) Lord Justice Atkin, where similar contention had been raised, as has been raised before me by Mr. Farooqi, considering section 53 of the Patents & Designs Act 1907 which is equivalent to section 47 observed: "We have listened to what I think is a very important argu ment by Mr. Levy that the 'effect of the provisions of section 53 of the Patents and Designs Act, 1907, is to grant a statutory right to the person who happens by hook or by crook to have got registered, and that that person has an absolute statutory right until the registration is set aside. I do not wish to determine that question, because it seems to me plain that it is open to a person who complains of the registration I to take steps for the rectification of the register, and where, in an infringement action, the defendant indicates that he either has taken steps for the rectification of the register, or at any rate satisfies the Court that he really and truly is about to take such steps, then I think, fox the purpose of an interlocutory application, the Court is still entitled to consider what the rights of the plaintiff and the defendant respectively are really likely to be when the matter falls to be determined, and I think that they are in substantially the same position in the case of a design as they are in the case of a patent." It would appear from the above observation of Lord Justice Atkin that he had not given any definite ruling on the question raised by Mr. Levy. This practice of allowing the defendant to raise such plea in a suit for infringement of designs was doubted in Halsbury's Laws of England, Halsham Edition, Volume 32, page 696, paragraph 1006 which runs as under: "The ordinary defences are a denial of infringement, a plea of leave and licence, or an attack on the validity of the registration. It seems doubtful whether this last point can properly be raised by way of defence, and whether it should not rather be sought by means of a motion for rectification of the register, but the former course has often been adopted." Mr. Ibadat Yar Khan relied on the case of Smith v. Grigg Ltd. (1) in support of his contention that the same considerations in giving a temporary injunction in matters of patents, should apply to cases where a suit for infringement of a design is filed. Lord Justice Scrutton observed in : ((1924) T L R Vol. (40) 249) "In the present case, undoubtedly the design is a recent one, the monopoly of which is sought to be established. There is no case as far as I know which expressly states that the principle which applies to monopolies in patents also applies to monopolies in designs, but, when once one sees the reason on which the rule to patents is based, it appear equally to apply to the comparatively minor monopoly in designs." In the present case as would appear from the fact given above that the monopoly is a very recent one, the registration having taken place in September and the infringement of the same, if it can be said to be an infringement, took place in November of the same year. Moreover, I may also mention that there is no novelty in the designs that I have seen. In my opinion, the contention of Mr. Ibadat Yar Khan that the same principle should apply to patents, is well founded. I have given my very best and careful consideration to the question, whether the same considerations which have been applied by Courts for infringement of patents should be applied to the infringement of designs or not ? I have, after perusing the judgment of Lord Justice Scrutton, no doubt that the same principle, should apply. There is no reason, why A these considerations which have weighed years back with Courts in England in questions similar to the present one, should not be applied now when the present act is on the same line as the Patents and Designs Act of 1907. I have compared most of the sections of that Act with our present Act and I find that they are similar. Considering the importance of industry and commerce, I do not see any reason why those weighty considerations that have weighed with eminent Judges, like Lord Justice Scrutton, should be deviated from. I would, for the reasons given above, set aside the order that I had passed and withdraw the interim injunction. The clients of Mr. Ibadat Yar Khan who are present in Court, have given an undertaking through their learned advocate that they will maintain an account of the sale and manufacture of such articles which can be said to be similar to the design of the plaintiff. The defendant would file a copy of the account every month of such sale and manufacture till the pendency of the case. Under the circumstances of the present case it is in the interest of the parties and the parties also so desire that the case should be decided at an early date. I would order the office to fig a very early date for the decision of this case. A. H. Interim injunction vacated.