VALMIKI J. MEHTA, J

1. The present appeal has been filed against the impugned order dated 7.8.2009 of the learned Single Judge disposing of two applications filed in the suit, one by the plaintiff/appellant for grant of injunction and the second of the defendant/respondent for vacation of the interim injunction. By the impugned order, the learned Single Judge had dismissed the injunction application of the plaintiff/appellant and allowed the application for vacation of injunction of the defendant/respondent and the interim order dated 8.1.2007 passed in favour of the appellant/plaintiff was vacated.

2. The issue in the present appal is with regard to the claim of entitlement of the appellant of alleged infringement by the respondent of the appellant's registered design No.193988 dated 5.12.2003 in Class 99-00 with respect to an S-shaped spatula. The S-shaped spatula is designed for the application of a cream for hair removal i.e. a cosmetic depilatory. The defence of the respondent is that the registered design of the appellant is not new/original and the same was also registered and published abroad prior to the registration in India. It is also further averred that the S-shaped spatula design was in fact in used abroad pursuant to its registration. The respondent, in fact, alleged suppression of facts on behalf of the appellant in not disclosing the prior registrations of the design in various countries and thereafter of the manufacturing and publication of the subject design abroad.

3. The learned Single Judge framed the following questions for determination:

“1. Whether the design registration in UK, USA or Australia could amount to prior publication or disclosure to public as contemplated in Section 4(b) of the said Act?

2. Whether there is material on record to indicate, prima facie, that the plaintiff's design had been published in India or in any other country prior to the date of registration, i.e., 05.12.2003?

3. Can it be said, prima facie, as to whether the design of the defendant's spatula is a fraudulent or obvious imitation of the plaintiff's registered design as applied on its spatula?”

On the question No.1 above, the learned Single Judge held that prior registrations in U.K., USA and Australia amounted to prior disclosure as contemplated in Section 4(b) of the Designs Act, 2000 (hereinafter referred to as the „said Act').

So far as question No.2 is concerned, it has been held by the learned Single Judge that the subject design was available to the public i.e. was in public domain much prior to the registration in India on 5.12.2003. It was held that the design in question was published abroad prior to the date of registration in India and therefore the same was a valid defence in an action for action of infringement.

On question No.3, the learned Single Judge held that by putting the two designs side by side, one cannot conclusively say that one is an imitation of other. The learned Single Judge, however, hastened to clarify that this was only of prima facie view.

4. The learned senior counsel for the appellant urged the following grounds in support of the appeal:-

(i) In view of the categorical language of Section 19(1) (a) of the Act, a design which is previously registered abroad is not a ground of cancellation of a design registered in India and therefore the same cannot be a defence in a proceeding for infringement of the registered design under Section 22 of the said Act.

(ii) As a corollary to the above, it is contended that a literal interpretation of Section 19(1) (a) should be resorted to and no intention should be ascribed to the legislature as to existence of any lacuna in drafting of the Act. It was therefore consequently urged that in view of the obvious difference in the language of Section 19(1)(a) as compared to Section 19(1)(b), in that whereas by virtue of Section 19(1)(b) publication in other countries prior to the date of registration is a ground for cance