The judgment established that the availability of grounds for cancellation under Section 19 of the Designs Act, 2000 can be used as a defense in design infringement cases, and prior publication of a design can negate its novelty and originality.

( 1 ) PLAINTIFFS filed a suit for perpetual injunction, inter alia, praying for injunction against infringement of design, passing off and rendition of accounts It is the case of the applicants-plaintiffs that plaintiff no. 1 is a company registered in India and plaintiff no. 2 is a corporation existing under the laws of Republic of China and having its registered office at Taiwan. The applicants are the sole distributor and constituted attorney in India for the Top Open Locks and Pin locks manufactured by plaintiff no. 2.

( 2 ) MR. ARUM Bhardwaj, learned counsel appearing for the applicants-plaintiffs, haa contended that plaintiffs are manufacturing unique and distinctive locks since the period of its registration under the provisions of designs Act, 2000. Some of the salient features of the plaintiffs Top Open Locks are as under

A) Top View; (i) It is a shackle having five (pentagon) layers. (it) -There is one top layer, two corner layers and two flat layers. (iii) The shackle is detachable. (iv) The whole shackle t-s- made of steel having plastic cover. "b) Front View; (i) There is a rectangular panel having two side panels. (ii) This is a raised portion on the lock. (iii) The hole for the lock is the center of the raised rectangular panel. (iv) There is one-piece bracket holder designed in special manner. Back View (i) The back view contains a chrome plain sheet which has been coated with black and/or coated with different colours. And salient features of Pin Locks which is registered are- as under (i) The front portion is having a Knob on the left hand side, holes in the center for operation/use of the keys. (ii) The back portion is having a long pin on the left hand side and a knob hand side and both are made of steel. In the center of back portion of the locks there are two holes.

( 3 ) IT was contended before me that by virtue of extensive user the plaintiff has acquired exclusive right- to the adoption and use of distinctive designs. It was contended by Mr. Bhardwaj that defendants have adopted the identical features and copied the same deceptively. It was contended by the learned counsel for the plaintiffs that adoption and application of the identical or deceptively similar designs by defendants amounts to an act of piracy within the meaning of Section 22 of the designs Act, 2000 and the defendants cannot have any justification to adopt the plaintiffs distinctive designs and cannot be allowed to earn profits in Illegal manner. It was also contended that defendants were guilty of passing off their goods by giving an Impression that they are the seller of the genuine goods manufactured by the plaintiffs. On 10th July, 2001 this court granted an ex parte interim injunction In favour of the plaintiffs-applicants. Subsequently on 25th July, 2001 an application for vacation of the stay was filed by the defendants. In sum and substance the case of the applicants is that the plaintiff s design of the locks, its shape, configuration, pattern and composition of lines is a design which has been registered by the controller of design, who has granted a certificate of registration in terms of Section 9 of the Designs Act.

( 4 ) IT was contended before me that once certificate of registration has been granted, there is a prima facie evidence in favour of confirming the injunction and that would be the effect of sub-section 4 of Section 10 read with Section 38 of the Designs Act with regard to evidential value of such certificate of registrationr mr. Bhardwaj contended that cancellation of grant of registration can only be done if the defendants had challenged the same on the ground as mentioned in Section 19 of the Act. It was then contended that in the absence of any application for cancellation not filed till the filing of the suit by the plaintiffs, the defendants had no right to continue with the piracy of the design in terms of Section 22 of the Act and in terms of sub-section 2 (b) of Section 22 the non-appl