MESSRS KHURSHEED INDUSTRIES CORPORATION AND OTHERS vs MESSRS
This petition for special leave to appeal arose from an appellate judgment of the High Court of East Pakistan, which affirmed a District Court's decree declaring the respondents as registered proprietors of a tiffin carrier design, granting a permanent injunction, and disallowing damages. The petitioners contended that under Section 54 of the Patents and Designs Act 1911, the jurisdictional provisions of Section 29 relating to patents applied to designs. They argued that because their written statement alleged fraudulent and collusive registration, it constituted a counter-claim for revocation, requiring the suit's transfer to the High Court under the proviso to Section 29(1). They further argued that registration only raises a rebuttable presumption and does not automatically confer an absolute right without verifying if the design was new and original. The Supreme Court of Pakistan observed that these novel points of law concerning jurisdiction and the scope of design infringement suits required examination in a developing economy. Consequently, the Court granted leave to appeal to consider the legal questions raised.
- Whether the provisions of Section 29 of the Patents and Designs Act 1911 relating to patents apply to designs by virtue of Section 54 of the same Act?
- Does a written statement alleging fraudulent and collusive registration of a design constitute a counter-claim for revocation requiring transfer of the suit to the High Court under the proviso to Section 29(1) of the Patents and Designs Act 1911?
- Is registration under the Patents and Designs Act 1911 sufficient to confer an absolute right to restrain others, or does it merely raise a rebuttable presumption requiring proof of a new and original design?
- Section 29, Patents and Designs Act 1911
- Section 29(1), Patents and Designs Act 1911
- Section 43, Patents and Designs Act 1911
- Section 47, Patents and Designs Act 1911
- Section 54, Patents and Designs Act 1911
1. HAMOODUR RAHMAN, C. J.-Civil Petition No. 83-D of 1969 is a petition for special leave to appeal from an appellate judgment of a Division Bench of the High Court of East Pakistan dismissing an appeal from a suit for a declaration that the respondents were the registered proprietors of a certain design of tiffin carriers, for a permanent injunction for restraining the petitioners, their agents or servants from manufacturing or selling the tifffn carriers of the said design as well as for damages for passing off.
2. The suit was filed in the Court of the District Judge, Dacca, who came to the conclusion that the design of the respondents was registered and given the No. 3534 in the office of the Control--ler of Patents and Designs under section 43 of the Patents and Designs Act, 1911, on the 20 of April 1964.
3. The said respondents were, therefore, declared to have acquired a copy right in the said design with effect from the said date in terms of section 47 of the above-mentioned Act. A decree was, accordingly, made in their favour declaring their right to the said design and permanently restraining the petitioners from manufacturing tiffin carriers of the same design. The claim for damages was, however, disallowed. The High Court has affirmed the decision of the trial Court on appeal.
4. The petitioners now seek special leave to appeal and it is contended on their behalf that the High Court was wrong in tak--ing the view that the suit was triable by the District Court. According to the petitioners, by virtue of the provisions of section 54 of the Patents and Designs Act, 1911, the provision of section 29 relating to patents also applied to designs and, as such, since the petitioners had raised the issue in their written statement that the registration obtained by the respondents was a fraudulent and collusive one, they must be deemed to have lodged a counter- -claim for the revocation of the registration and, therefore, in accordance with the proviso to subsection (1) of section 29 of the said Act the suit should have been transferred to the High Court for decision.
5. The next contention advanced in support of the petition is that the Courts below have misdirected themselves in taking the view that registration under the. Patents and Designs Act, 1911, was itself sufficient to confer a right upon the owner of a registered design to restrain another person from manufacturing or selling goods of the same design. Registration, it is contended, only raises a presumption which is rebutable and, therefore, it was not sufficient for the Courts below to rely only on the regis--tration. They should have also considered as to whether the design registered by the respondents was a new and original design.
6. The points of law raised in this petition are novel points which have arisen for consideration for the first time in this Court. Since they relate to a question of jurisdiction and the nature and scope of a suit of this kind. We feel that the points raised need examination, particularly, since in the developing ,q economy of the country such questions are likely to arise more frequently. Leave is, accordingly, granted in this petition to consider the questions of law raised. The petitioners will furnish security in the sum of Rs. 1,000 for costs.
7. Civil Petition No. 79-D of 1969 arises out of a miscellaneous application for adjournment of the hearing of the appeal and a connected rule for staying the operation of the decree of the trial g Court pending the disposal of the appeal. The Court granted an adjournment for two days but curiously enough discharged the rule without any order as to costs.
8. Since the appeal has been heard and we are granting leave to appeal from the in the judgment in the appeal itself, this petition is merely of academic interest, now. It is, accordingly, dismissed, even though we are inclined to take the view that the High Court's order was self-contradictory. If the rule was to be discharged, there was no point in granting the adjournment.