DWARKADAS DHANJI SHA Vs. CHHOTALAL RAVICARANDAS AND CO

JUDGEMENT

(1.) THIS is a chamber summons taken out by the defendants for further discovery.

(2.) THE plaintiffs claim to be the registered proprietors of a certain design for being printed on textile goods registered under the Indian Patents and Designs Act (II of 1911), and have filed this suit against the defendants for restraining them from infringing the design under the circumstances mentioned in the plaint, and for accounts, damages, costs and other reliefs In their written statement the defendants allege that prior to the registration of the design it was published in British India by the plaintiffs themselves as well as by other merchants. THEy also contend that the design was not new or original at the date of the registration, and that the registration is invalid and does not confer any specific right upon the plaintiffs to exclusively use the same. In order to substantiate these defences, the defendants pray for an order for discovery and inspection of the documents mentioned in the summons, viz., (1) THE first shipment samples of the goods in dispute received by the plaintiffs from Japan, (2) Copy of the first order placed by the plaintiffs' in respect of the said goods, (3) Correspondence between the plaintiffs and the Japanese firms from whom the plaintiffs imported the said goods prior to and up to first importation of the goods by plaintiffs, (4) THE original invoices and papers in respect of the first importation of the said goods by the plaintiffs together with the covering letters with the invoices, (5) Entries in the plaintiffs' books of account as to when they received the first lot of such goods, and (6) Counterparts or copies of the contracts made by the plaintiffs with the merchants in India regarding the sale of the goods in dispute.

(3.) COUNSEL for the plaintiffs also drew the attention of the Court to the several corresponding sections of the part of the Act dealing with patents. It is provided under Section 20(5) that the register of patents shall also be prima facie evidence of any matters by the Act directed or authorized to be inserted therein. Section 26 provides for the revocation of a patent on any of the grounds stated therein. Section 29(1) provides for the institution of suits for infringement of patents. It is provided by Section 29(2) that every ground on which a patent may be revoked under the Act shall be available by way of defence to a suit for infringement. COUNSEL pointed out that there was no corresponding section in the portion of the Act dealing with designs, nor was Section 29(2) made applicable in the matter of designs under Section 54 of the Act. It was therefore argued that as there was no section in regard to designs corresponding to Section 29(2) in regard to patents, the Act did not contemplate such a defence in the case of registered designs. I do not accept that argument. It might be that the reason for not making a specific provision in Section 53 similar to the provision in Section 29(2) was as is pointed out in Muhammad Abdul Karim v. Muhammad Yasin.2 (1934) I.L.R. 56 All. 1032 at pp. 1036-37. 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 am aggrieved party is under Section 51A and Section 64 of the Act, and that if no such application is made the aggrieved party cannot urge his grounds 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 edn., 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. It is, however, also pointed out that the former course has often been adopted, though it may be by consent of the parties. I, however, agree with the conclusion arrived at by the learned Judges of the Allahabad High Court in Muhammad Abdul Karim v. Muhammad Yasin, that the defendant to a suit under Section 53(2) is not confined to his remedy laid down by those particular sections of the Act, and that the points pleaded in the written statement by the defendants are points which can be raised in a suit like the present.