The right conferred by Section 53 of the Designs Act is not absolute and a defence based on a ground of cancellation mentioned in Section 51-A can be taken in a suit under Section 53, provided that an Application for cancellation is already pending in the High Court.

( 1 ) THE question which has been referred to this Full Bench is:

"whether or not an injunction can be granted in favour of a registered owner of a design when an application under Section 51-A of Designs Act is pending?"

( 2 ) ON this question a number of Judgments of this Court and other Courts have been shown to us. The difficulty arose because it prima facie appeared that two Division Bench of this court had taken different views.

( 3 ) IT had been held in the cases of Mohammad Abdul Karim v. Mohammad Yasin and another, reported in AIR 1934 Allahabad 798 and Dwarkadas v. Chhotalal AIR 1941 Bom 188, that merely because the registered holder of a design filed a Suit under Section 53 it would not mean that the Defendant to that Suit could not plead that design was previously published and was neither new nor original.

( 4 ) IN the case of Sat Pal Singh v. S. P. Engineering Works, 1982 0 PTC 193, after considering various provisions of the Patents and Designs Act, 1911, a Single Judge of this Court held that once a design was registered, prima facie, it was only the registered proprietor, who could take benefit of the registered design during the period of the validity of the registration. The Court held that prima facie, once the design was registered, the registered proprietor could insist that any one committing piracy should be restrained from doing so. The Court then negatived the contention that even if a false plea about the validity of registration was taken up by a Defendant, no interim injunction should be granted. The Court went on to hold that the contention that the design had no novelty was a valid defence to the Suit and could be raised to challenge the validity of the registration. It further held that this did not have any bearing at the initial stage and that these were matters to be decided on evidence. It must be mentioned that after so holding the Court, when into the merits and held that in that case it had not been shown that the design was previously published.

( 5 ) THEREAFTER in the case of Tilak Raj v. M/s. Clean Deal Industries, reported (1985) Arbitration Law Reporter pg. 549, it has been held as follows :

"4. The learned trial Court was in error in implicitly relying on the Lahore decision which did not notice the provisions of Section 51a which was inserted by Act 7 of 1930. Section 51a makes it clear that a person interested in challenging the validity of registration of a design has to present the Petition to the High Court which alone has the jurisdiction to cancel such design on various grounds including the ground that such a design had been previously published in India or that it was not new or original. In the absence of Section 51a, it could be argued that even in a Suit complaining of an infringement of a registered design, the Defendant could raise the plea that the registration was invalid. But after the enactment of Section 51a, such a plea has to be raised by an application for the cancellation of the said design. Moreover, the jurisdiction for such cancellation was vested in the High Court alone. The present Suit not having been filed in the High Court, the Defendant could not raise the plea about the invalidity of the design in the trial Court. At the most, the Defendant could have applied for a stay of the Suit and made an application to the High Court under Section 51a for the cancellation of the design. The Defendant has done so. The decision of the trial court amounts to invalidating the registered design of the Plaintiff. As such it was clearly without jurisdiction. The effect of reading Sections 43, 47, 51a and 53 together is that so long as the copyright conferred on the Plaintiff by the registration of the design is operating, he can complain of any infringement against it by the Defendant. If the Defendant wants to deny the validity of the registration, it has to apply for the cancellation of the registration to the High Court. In the absence of such an