Manmohan Singh, J.

1. By way of order dated 30th March, 2012 passed in CS(OS) No.1446/2011, three questions were referred by me along with my opinion to the larger Bench of this Court for consideration. Thereafter, the matter was listed before the Hon’ble Chief Justice who was pleased to constitute a full Bench comprising three Judges of this Court. The questions of law which form the subject matter of the reference read as under:

(1) Whether the suit for infringement of registered design is maintainable against the another registered proprietor of the design under the Designs Act, 2000;

(2) Whether there can be availability of remedy of passing off in the absence of express saving or preservation of common law of Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature; and

(3) Whether the conception of passing off as available under the trademarks can be joined with the action under the Designs Act when the same are mutually inconsistent with that of remedy under the Designs Act.

2. I have had the advantage of going through the opinion recorded by my learned brother, Mr. Rajiv Shakdher J. but despite the great respect which I have for his learning and erudition, I find myself unable to agree with the view taken by him. Therefore, I have decided to give my own opinion in a separate judgment which is discussed below.

3. Heard the submissions advanced by the learned counsel for the parties and also considered the legal position including the scheme of the Design Act, 2000 and the statement of objects and reasons of the Act. Additionally, the learned counsels appearing in the matter have also argued on several other aspects as additional points, which I shall be answering separately under the relevant heads of the answers to the reference.

Re: Answer to Question 1

4. I am of the view that the question is not merely about the scheme of the Design Act being unlike the Patent Act. The question is also not that whether the registration is prima facie evidence of validity. The question under reference rather invites the construction of Section 22 of the Design Act, 2000 so as to discern whether it permits a suit for infringement of Design by a registered proprietor against the another registered proprietor. The connected question which is required to be answered is more of the nature and characteristic of the monopoly right which is purely conferred by the Statute (which only upon the grant of the certificate provides some valuable rights including the right to sue for infringement) and under these circumstances, whether the registered proprietor of the Design can proceed to sue against another registered proprietor who is enjoying the same privilege by virtue of registration? In my opinion, the answers of both the questions are in negative considering the language of Section 22 of the Design Act in which the said Section has been couched and also considering the scheme of the Act.

5. For the purposes of doing this analysis, it is deemed expedient to first have a look at Section 22 and Section 11 of the Designs Act, 2000 minutely. The said Sections read as under:-

“Sec 22. Piracy of registered design.-

(1) During the existence of copyright in any design, it shall not be lawful for any person-

(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or

(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any artic