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TMI Blog2004 (2) TMI 356X X X X Extracts X X X X X X X X Extracts X X X X ..... in the artistic work by making three dimensional reproduction thereof in glasses; (c )Decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way passing off design glasses of the plaintiff by manufacturing and/or selling glass having surface pattern and ornamentation same or similar to that of the plaintiff including those shown in annexure "B" to the plaint; (d)Decree for Rs. 11 lakhs as prayed for; (e)Receiver; (f)Injunction; (g)Costs; (h)Such further or other relief or reliefs as to this Hon'ble Court may deem fit and proper in the interest of justice." By filing this application the plaintiff seeks interim reliefs in aid of the final reliefs sought in prayers (a), (b) and (c ) of the plaint. On August 18th, 2003 M.H.S. Ansari, J was pleased not to grant any ad interim relief. His Lordship gave directions for filing affidavits. Accordingly, the parties filed the affidavits, viz. ( a) opposition dated August 28th, 2003 by the defendant, to this application; and reply dated September 8th, 2003 by the plaintiff to such opposition; (b) supplementary affidavits dated August 9th and 16th, 2003 by the plaintiff; an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the plaintiff instituted the suit in this court, and has taken out this interlocutory application in the pending suit. 3. The case of the plaintiff is this. In October 2000 it introduced a new design of glass under the name "KARATACHI." Because of extensive sales promotion activities and excellent quality such design became exclusively associated with the plaintiff. It is a totally new design owned in India by the plaintiff. The "KARATACHI" glass has a three dimensional reproduction of a two dimensional artistic work, and hence such artistic work, whenever used in connection with glass, is attributed to the plaintiff. In September 2002 it received information from the market that some unscrupulous glass manufacturers were taking steps to introduce in the market figured glass applying thereto the design "KARATACHI." In spite of caution notice published in newspapers, the defendant proposed to apply the "KARATACHI" design to its figured glass with a view to deriving benefits from the sole promotional efforts and investment of the plaintiff. With ill motives the defendant initiated proceeding for cancellation of registration of the design "KARATACHI" before the competent authority. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any right of the registered proprietor that was available under the Designs Act, 1911. On the contrary, by explicit incorporation of the General Clauses Act, 1897 all rights acquired under the Designs Act, 1911 have been preserved. Section 6 of the General Clauses Act, 1897 specifies rights that are not to be affected by repeal of any enactment; in its clause (e) it specifically provides that remedy in respect of any right, privilege or obligation acquired or accrued under the repealed Act will not be affected by the repeal of an enactment, and such remedy may be enforced under the repealed Act, as if the repealing Act has not been passed. Thus all substantive rights (as opposed to procedural rights), and remedies granted under the Designs Act, 1911 subsist, and are available to registration granted thereunder. Once a right accrued prior to the repeal, claim can be made and enforced, and remedy can be taken even after the repeal, because such right cannot be defeated by the repeal, and would rather be preserved. The proposition is supported by the decision given by the Court of Appeal, Civil Division in the case of Chief Adjudication Officer v. Maguire (1999) 2 All ER 859. Thus th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e dimensional. The issue of proprietorship raised by the defendant has also no merit. The very fact of registration of the design makes the plaintiff its proprietor; it need not be proved independently. The proposition is supported by the single Bench decision of this court in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. 1996 PTC (60) 202. It is also clear from sections 43, 44, 45 and 46(3) of the Designs Act, 1911 that the certificate of registration was to be issued only to the proprietor; similar provisions have been made in sections 2(c), 10(4), 11, 23 and 28 of the Designs Act, 2000. Above all, both section 53 of the Designs Act, 1911 and section 22 of the Designs Act, 2000 make it unlawful for any person to copy the registered design; hence such unlawful acts can be stopped without having to establish the proprietorship; and this, in any case, is not one of the grounds of cancellation. 9. His submission is that it is well established that balance of convenience is in favour of injunctions in such matters, as damages cannot be the adequate relief in such cases; and besides Rotomac and Castrol India's cases, the proposition is also supported by the decision of the Delhi H ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cancellation of the registration before the competent authority on January 15th, 2003; and the plaintiff filed the suit long thereafter; and hence the defendant is entitled to take all the grounds taken by it for cancellation, as valid defences in the present proceeding, as held by a full Bench of the Delhi High Court in the case of Metro Plastic Industries (Regd.) v. Galaxy Footwear AIR 2000 Delhi 117. 12. His contentions regarding the grounds of cancellation of the registration are these. The defendant has sought cancellation on grounds (b), (c ), (d) and (e) of section 19 of the Designs Act, 2000. The plaintiff cannot be the proprietor of the design, as at the time of making application for registration it was neither a new nor an original design. The plaintiff simply imported the embossing roller containing the design from M/s. Jin Hwa Machinery Co. Ltd. of Taiwan. The embossing roller containing "KARATACHI" design is not manufactured in India, and foreign companies, like, M/s. Jin Hwa Machinery Company Ltd. of Taiwan, M/s. Dornbusch Gravuren GMBH of Germany, and M/s. Keller Dorian of France, manufacture the roller. From the letter dated September 24th, 2002 written by M/s. Ji ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... finding that the plaintiff failed to make out a prima facie case for getting interim relief, and there is nothing before this court to take a contrary view. When a similar question arose in an appeal TVC Sky Shop Co. Ltd. v. Spaceage Multi Products (P.) Ltd. [A.P.O.T. No. 517 of 2003 dated 10-9-2003], the Division Bench of Ajoy Nath Ray and Joytosh Banerjee, JJ held that after the Designs Act, 2000, in a suit for protection of copyright in a design registered under the Designs Act, 1911, section 22(3) of the Designs Act, 2000 would, prima facie, apply; and hence this court should take same view while considering same question of law. 14. In reply Mr. Sarkar has contended that sub-sections (1) and (3) of section 22 of the Designs Act, 2000, unlike its sub-section (2) which deals with procedure, do not deal with procedural matters, but deal with rights and remedies. He has further contended that if the plaintiff had a right to injunction before the Designs Act, 2000 came into force, such right would be saved by the General Clauses Act, 1897 which finds specific mention in section 48 of the Designs Act, 2000. Regarding sub-section (4) of section 48 he has submitted that this provisio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ding anything contained in sub-section (2), the date of expiration of the copyright in the designs registered before the commencement of this Act shall, subject to the provisions of this Act, be the date immediately after the period of five years for which it was registered or the date immediately after the period of five years for which the extension of the period of copyright for a second period from the expiration of the original period has been made." 18. The right to legal proceeding as was available to the registered proprietor of a design under section 53 of the Designs Act, 1911, has not been taken away by any provision of the Designs Act, 2000. Under section 22 of the Designs Act, 2000 the registered proprietor of a design having registration under the Designs Act, 1911 enjoys the same right to legal proceeding as was available under the repealed Act. 19. Broadly speaking, provisions regarding legal proceedings fall in the category of procedural law. But it is not invariably the case with respect to every provision regarding legal proceedings. Whether a particular provision is substantive or adjective is required to be examined only by interpreting and examining the part ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g right does not amount to extinguishment of such right; and this is more so when the curtailment is necessitated to remove any confusion or doubt created by judicial pronouncements. Right of such registered proprietor under the Designs Act, 1911 has also been curtailed with respect to tenure of the registration. The Designs Act, 1911 has simply not been repealed by the Designs Act, 2000 which has simultaneously re-enacted the law on the subject. Once the force and effect of the rights flowing from the old registrations had been specifically and consciously curtailed clarified and declared by the Legislature by making specific provisions as in sub-section (3) of section 22 and sub-sections (2) to (5) of section 48, there is no scope to argue that because of section 6 of the General Clauses Act, 1897, sub-section (3) of section 22 of the Designs Act, 2000 would not apply to the existing registrations. 22. The case of the plaintiff should be governed by the Designs Act, 2000, and not by he repealed Designs Act, 1911, also on the following ground. The plaintiff has not instituted the present suit regarding any cause of action which had arisen before May 11th, 2001 when the Designs Ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot the author of the design, and it simply acquired he embossing roller containing the design from the international free and open market where the design surfaced decades ago. Thus, I find that the plaintiff has failed to make out any prima facie case that as proprietor of the design it is entitled to copyright in it. In my view, at this stage, the questions (a) whether the thing is a design at all and (b) whether there was prior publication, cannot be examined, because the admissible undisputed evidence on record is totally insufficient to give even a prima facie decision on such questions. 24. Absolutely no case has been made out regarding passing off. The foundation of the suit is apprehended infringement of copyright in the design; though a suit under section 22(2)(b) of the Designs Act, 2000 can be instituted only on actual infringement of the copyright in the design. Since apprehension is the basis of the suit, allegation of passing off, it appears has been made in a speculative manner. So I find no reason to consider the prayer for interim relief regarding passing off. 25. I find that the decisions cited by Mr. Sarkar do not help the plaintiff in any manner. Since at the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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