The registration of a design under the Designs Act, 1911, confers on the proprietor a copyright in the design for a period of five years from the date of registration. The defence of non-novelty or originality is not open to a defendant in a suit for infringement of a registered design.

O. CHINNAPPA REDDY, J.

( 1 ) THE appellant makes biscuits. So does the respondent. The appellants biscuits have embossed on them a certain design in the centre of which appear the letters " AF". The design is registered under the Design act, 1911. The respondents biscuits also have embossed on them an identical design except that the letters " AB" appear instead of the letters "af". The appellant complaints that the respondent has committed piracy of his design. He has filed a suit in the city Civil Court, for a permanent injunction to restrain the respondent from using the design on his biscuit. Pending disposal of the suit he sought a temporary injunction. An ad interim injunction was granted on 20. 6. 1972 but after notice the interim injunction was vacated on 10. 7. 1972. the present appeal was filed and an interim injunction was granted on 31. 7. 1972 by my brother Mukthadar, J. The appeal has now come up for final hearing. The learned additional Judge of the City Civil court refused the temporary injunction on two grounds; (1) the appellants design, though registered was not a new and original design since the affidavit filed on behalf of the respondent showed that they had been using the same design even before it was registered by the appellant. (2) the design gave no right to the appellant to us, it as a trade mark. The respondents application for the registration of a trade mark was pending before the Registrar of Trade marks and was likely to be granted. I will consider the correctness of both the grounds.

( 2 ) UNDER the Designs Act, a design is required to be a new or original design not previously published in India in order that it may be registered. An application for registration of design must be made to the Controller who may refuse to register any design presented to him for registration in which case an appeal against such refusal shall lie to the Central Government. Where a design is registered, the Controller shall grant a certificate of registration to the proprietor of the design and suitable entries shall be made in the Register of Designs. On registration the registered Proprietor of the design shall have a copy right in the design for a period of five years from the date of registration. Any person interested may present a petition for the cancellation of the registration of design on any of the following grounds (1) the design has been previously registered in India. (Ii) It has been published in India prior to the date of Registration (iii) The Design is not a new or original design. The petition may be presented in the High Court without any limitation of time or where the cancellation is sought on the first two grounds it may be presented to the controller within a year from the date of registration. Where the petition is presented to the controller an appeal to the High court is provided against the decision of the Controller. The provision for the cancellation of the registration of design is found in Section 51-A of the Designs Act. Section 53 prohibits all acts of piracy of a registered design. Section 53 (2) provides that a person acting in contravention of the Section shall be liable " (a) to pay a sum not exceeding Rs. 500/- recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of the damages for any such contravention; and for an injunction against the repetition thereof to pay such damages as may be awarded and to be restrained by an injunction accordingly. " In the present case, it is admitted that the respondent has not taken any steps for the cancellation of the registration of the design. The question for consideration is whether it is open to the respondent to claim that the design is not a new or original design in defence to a suit for an injunction based on a registered design, he having taken no action to have the registration cancelled on that ground. To my mind, such a defence is not open to the respondent. If such a defence is open t

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