The court clarified the scope and applicability of Section 22(4) of the Designs Act, emphasizing that the provision for transferring proceedings to the High Court does not extend to proceedings pending before the Controller under Section 19 of the Act.

ORDER :

Shiv Narayan Dhingra, J.

The above two applications have been made by the plaintiffs u/s 22(4) of Designs Act and u/s 151 CPC with a prayer that the Court should stay the proceedings pending before the Controller of Design for cancellation of the designs of the plaintiffs initiated at the behest of defendants and also that these proceedings should be transferred before this Court and this Court should hear the proceedings of the cancellation of designs.

2. It is submitted by the plaintiffs that plaintiffs filed a suit for permanent injunction against the defendants alleging infringement of its design nos. 184136 and 184137. The defendant No. 3 in its written statement took defenses as available u/s 19 of the Designs Act. The defendant No. 3 also initiated cancellation proceedings before the learned Controller of Designs against the design nos. 184136 and 184137 in respect of an insecticidal coil and the Controller of Designs framed an issue to the following effect :

2. Are design No. 184136 and 184137 liable to cancellation u/s 19 of The Design Act, 1911 ? OPD ?

3. It is stated that the Controller of Designs proceeded with the proceedings and the proceedings were at last stage. Arguments of both the sides have been heard and orders have been reserved. The plaintiff had also made an application before the Controller for staying the proceedings but Controller did not stay the proceedings finding no merits in the application. He also turned down the request of transferring the proceedings to High Court observing that the High Court had not issued any direction directing him to transfer the proceedings to it.

4. Counsel for the plaintiffs argued that Section 22(4) of the Designs Act provides that wherein the ground as available u/s 19 of Designs Act are taken as a defense, the suit or such other proceedings shall be transferred to High Court for decision. He states in view of the Section 22(4), the proceedings before the Controller be transferred to High Court and the proceedings be stayed.

5. In reply to the application, it is submitted by the defendants that the plaintiffs can not invoke the jurisdiction of this Court u/s 22(4) of Designs Act as the same was not applicable and the appropriate authority to determine the validity of designs in question was the Controller. The plaintiffs were aware that designs got registered by them were already published and were liable to be cancelled on the ground of prior publication.

6. Section 22 of the Designs Act under which the plaintiffs have sought transfer of proceedings before the Controller to this Court reads as under :

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 license 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 article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

(2) If any person acts in contravention of this section, he shall be liable for every contravention -

(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or

(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetitio