Back
High Court Of Calcutta
J. K. BISWAS
IAG COMPANY LIMITED - Appellant
Versus
TRIVENI GLASS LIMITED - Respondent
G. A. 2709 Of 2003
Decided On : 02/11/2004
DESIGN - INFRINGEMENT - REGISTRATION - VALIDITY - INTERIM INJUNCTION - Designs Act, 1911 (2 of 1911) - Designs Act, 2000 (16 of 2000) - Copyright Act, 1957 (14 of 1957) - General Clauses Act, 1897 (10 of 1897) - Plaintiff, a registered proprietor of a design under the Designs Act, 1911, filed a suit for infringement of copyright in the design against the defendant. Defendant challenged the validity of the registration and sought cancellation on various grounds. Plaintiff contended that the suit was governed by the Designs Act, 1911, and the defence of invalidity of registration was not available to the defendant. Held, the suit was governed by the Designs Act, 2000, and the defendant was entitled to raise the defence of invalidity of registration under section 22(3) of the Act. The plaintiff failed to make out a prima facie case for grant of interim injunction.
Fact of the Case:
Plaintiff, the registered proprietor of a design under the Designs Act, 1911, filed a suit for infringement of copyright in the design against the defendant. Defendant challenged the validity of the registration and sought cancellation on various grounds. Plaintiff contended that the suit was governed by the Designs Act, 1911, and the defence of invalidity of registration was not available to the defendant.
Finding of the Court:
The court held that the suit was governed by the Designs Act, 2000, and the defendant was entitled to raise the defence of invalidity of registration under section 22(3) of the Act. The plaintiff failed to make out a prima facie case for grant of interim injunction.
Issues: 1. Whether the suit was governed by the Designs Act, 1911 or the Designs Act, 2000? 2. Whether the defendant was entitled to raise the defence of invalidity of registration under section 22(3) of the Designs Act, 2000? 3. Whether the plaintiff had made out a prima facie case for grant of interim injunction?
Ratio Decidendi: 1. The court held that the suit was governed by the Designs Act, 2000, and not by the Designs Act, 1911, as the Designs Act, 1911 had been repealed by the Designs Act, 2000, and the provisions of the Designs Act, 2000 were applicable to all applications for registration of designs pending at the commencement of the Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof. 2. The court held that the defendant was entitled to raise the defence of invalidity of registration under section 22(3) of the Designs Act, 2000, as the section expressly provided for such a defence in a suit for infringement of copyright in a registered design. 3. The court held that the plaintiff had failed to make out a prima facie case for grant of interim injunction as it had failed to show that it was the proprietor of the design and that the design was a new or original one.
Final Decision: The court dismissed the plaintiff's application for interim injunction.
( 1 ) THE plaintiff in C. S. No. 213 of 2003 has taken out this interlocutory application (G. A. No. 2709 of 2003) dated July 31st, 2003. The prayers in the suit are as follows:" (A)decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the design of Karatachi glass registered under No. 183322 by using the glass design as shown in annexure "b" to the plaint; (b)decree of permanent injunction restraining the defendant, its servants, agents and assigns and each of them from in any way infringe (sic) or causing, enabling others to infringe the copyright 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. "
( 2 ) 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; and oppositions both dated August 29th, 2003 by the defendant to such supplementary affidavits.
( 3 ) THE plaintiff and the defendant both manufacture and sell various kinds of glass. On January 2nd, 2001 the Controller-General of Patents, Designs and Trade Marks of the Government of India, the Patent Office (Designs Branch) issued a certificate of registration of design in favour of the plaintiff. It was stated in this certificate that design No. 183322 (a copy whereof was annexed to the certificate) had been registered on August 28th, 2000 in the name of the plaintiff in class 4 (four) with respect to its application to figured glass, and it was so registered in pursuance of and subject to the provisions of the Designs Act, 1911 and the Designs Rules, 1933. It was mentioned in the certificate that copyright in the design would subsist for five years from the date of registration, and might, under the terms of the Act and Rules, be extended for two further periods, each of five years; and that it was not for use in legal proceedings or for obtaining registration abroad. In its copy the design was mentioned as "karatachi". It was further stated in its copy that while the back view of the design was plain, the novelty of the front view resided in the surface pattern and ornamentation of the figured glass. With effect from May 11th, 2001 the Designs Act, 2000 and the Designs Rules, 2001 came into force; and the Designs Act, 1911 and the Designs Rules, 1933 were repealed. In September 2002 the plaintiff notified caution notice in newspapers, published from several cities of the country, to warn manufacturers and competitors against infringement of its patent right over the designs "karatachi" and "yozora". On January 15th, 2003 the defendant made a petition to the Controller-General of Patents, Designs and Trade Marks for cancellation of registration of the design "karatachi" in the name of the plaintiff. The plaintiff has been contesting such cancellation proceeding. Against the threats of legal proceeding published by the plaintiff, in July 2003 the defendant lodged
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
