The Designs Act Conundrum : Who Should Decide The Validity Of A Registered Design - High Court Or The Controller ?

As a person creates, innovates or invents, Intellectual property rights step in to acknowledge, encourage and protect the creator, innovator or inventor of his rights in the said product who could also be called either as the owner or proprietor of the said product. The intellectual property laws have been brought into force for the owner of the product to apply, register and enforce his/her rights and to restrain others either to use or imitate without prior permission by initiating legal proceedings and to seek for damages.

The origin of Intellectual Property rights in brief:

It is believed that IPR may have originated in Italy during the Renaissance era in 1474. It appears late in the 19^th century a number of countries felt the necessity of laying down laws regulating IPR. Paris Convention for Protection of Industrial Property signed in Paris, France, 20^th March,1883 and Berne Convention for Protection of Literary and artistic works in Berne, Switzerland in 1886.

Intellectual property Laws in India broadly cover the following.

(i) Trade marks Act 1999

(ii) Copy rights Act 1957

(iii) The patents Act 1970

(iv) Geographical indication of goods(registration and protection) Act, 1999.

(v) The Designs Act,2000.

The origin of Designs Act, 2000 in brief

In India, the law of Designs was governed by Designs act 1911. In view of the progress in science and technology and as the legal system for the protection of industrial designs required to be made more efficient in order to ensure effective protection to registered designs, The present Designs Act, 2000 came into force and the earlier Designs Act, 1911 was repealed.

The Conundrum

In a suit for infringement of a registered design filed by the registered proprietor, the defendant challenges the validity of the design by taking the defence as enumerated under section 19 of the act and the same is pending before the Hon'ble High Court. The said defendant has also filed an application for cancellation of the said registered design under section 19 of the Act before the Controller and the same is pending before him. The question is should the High Court decide the validity of the Design or wait for the Controller to return a finding on the validity.

Before adverting to come to any conclusion we need to look into The Designs Act, 2000, firstly the statement of Objects and reasons , secondly, the relevant provisions and then subsequently compare it with the earlier enactment that is the Designs Act, 1911.

The Designs Act, 2000.

Statement of Objects and Reasons- Briefly stated - Since the enactment of designs act, 1911, considerable progress has been made in the field of science and technology. The legal system of the protection of industrial designs required to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote the design element in an article of production. The proposed designs bill is a sensually and to balance the interest. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for designed activity while removing impediments to the free use of available designs. To achieve these purposes, the bill incorporates, inter alia the following namely;

(a) it enlarges the scope of definition of "article" and "design" and introduces definition of "original";

(b) it amplifies the scope of "prior publication"

(d) it contains provisions for identification of non-registrable designs;

(g) it contains provision for maintaining the register of designs on computer;

(i) it contains provision for appeal against order of the controller before the High Court instead of central government as existing;

(l) It introduces additional grounds in cancellation proceedings and makes provision for initiating the cancellation proceedings before the controller in place of High Court.

The Hon'ble Supreme Court of India in Bharath glass cube Ltd versus Gopal glass Works Ltd reported in (2008) 10 SCC 657 with regard to the object of the Designs Act, 2000 held as follows;

The sole purpose of this act is protection of intellectual property right of original design for a period of 10 years or whatever further period the protection is extendable. The object behind this enactment is to benefit person for his research and labour put in by him to evolve new and original design. This is the sole aim of enacting this act. It has also laid down that if a design is not new original or published previously then search design should not be registered. It further lays down that if it has been disclosed to the public anywhere in India or any other country by publication in tangible form or values or in any other way prior to the filing date, or where applicable, the priority date of the application for registration then search design will not be registered or if it is found that it is not significantly distinguishable from non-designs or combination of non-design then search design shall not be registered. It also provides that registration can be cancelled under section 19 of the act if proper application is filed before the competent authority that is the controller that the design has been previously registered in India or published in India or in any other country prior to the date of registration or that the design is not a new or original design or that the design is not registrable under this act or that it is not a design as defined in clause be of section 2. The controller after hearing both the parties if satisfied that the design is not new or original or that it has already been registered or if it is not registrable, cancel such a registration and aggrieved against that order, appeal shall lie to the High Court.

Relevant Provisions of the Designs Act, 2000

Section 2(d) "Design" means only the feature of shape, configuration, pattern, ornament of composition of lines or colours applied to any article weather in two dimensional or three-dimensional or in both forms by any industrial process or means, whether manual, mechanical or chemical, separate or combine, which in the finished article appeal to and a judged solely by the eye but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act , 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957but does not include any more or principal of construction or anything which is in substance made mechanical .

Section 4. Prohibition of registration of certain designs:— A design which—

(i) is not new or original; or

(ii) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

(iii) Is not significantly distinguishable from known designs or combination of known designs; or

(iv) Comprises or contains scandalous or obscene matter, shall not be registered.

Section 19 Cancellation of registration – (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registerable under this Act; or

(e) that it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under this section 10 the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred

Section 22. Piracy of registered design – only the relevant provisions are extracted:

(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

• 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 Rs.25,000 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 reputation thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly

Provided that the total sum recoverable in respect of any one design under clause (a) A shall not exceed Rs.50,000.

Provided further that no suit or any other proceedings for relief under this sub-section shall be instituted in any court below the court of District Judge.

(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under Section 19 shall be available as a ground of defence.

(4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under Section 19 years been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision.

(5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.

Jurisdiction:

Proviso to Section 22 (2) mandates that the suit for infringement cannot be instituted below the Court of a District Judge.

The first question that would arise where would you file a suit where the High Court has original jurisdiction like Bombay, Calcutta, Madras and Delhi. The Hon'ble Division bench of High Court of Delhi In Penguin Books Limited case reported in Air 1985 Delhi 29 has held that District Court would include High Court. Hence suits for infringement can be instituted in the High Court exercising original jurisdiction. However this is subject to pecuniary jurisdiction. The matters are listed before the Commercial Court governed by Commercial Courts, Commercial Division, Appellate Division of High Court Act, 2015.

The second question that would arise is if the suit is filed in the District Court and the defendant taken up a defence as provided under Sec. 19 that design could not be registered, then the District Court loses its jurisdiction and the suit is necessarily requires to be transferred to High Court as per Section 22 (4).

Though the statute is very clear, Section 22 (4) came up for interpretation and the High Courts have held that in a suit for infringement , if a defence challenging the design under Sec. 19 is taken up then the suit has to be transferred to the High Court. The Delhi high court in Novartis Ag case reported in 2015 and full bench Mohan lal case reported in 2013, Karnataka High Court in Videocon case reported in 2015 have held that once the defence with regard to invalidity is taken up then the district court shall transfer the suit to the High Court for decision.

The Authority to decide on the Validity of Design:

Section 22(4) states that notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under Section 19 years been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision.

Section 22(5) states that when the Court makes a decree in a suit under sub section (2), it shall send a copy of the decree to the controller, who shall cause an entry thereof to be made in the register of designs.

The defendant can also file a cancellation petition before the controller as per section 19, challenging the registered design on the grounds mentioned therein and sub-section (2) states that appeal lies to the High Court against the order of the Controller.

In my view, this would indicate that both the High Court under section 22(4) and the Controller under section 19 would have the jurisdiction to hold that the design could not have been registered.

Solution to the Conundrum

To solve the said conundrum it would be useful to look into section 51-A of Designs Act of 1911 and section 19 of the Designs Act,2000.

51-A. Cancellation of registration-

(1) any person interested may present a petition for the cancellation of the registration of a design

(a)At any time after the registration of the design, to the High Court on any of the following grounds namely

(i)That the design has been previously registered in India or

(ii)That it has been published in India prior to the date of registration or

(iii)That the design is not a new or original design all

(b)Within one year from the date of the registration, to the controller on either of the ground specified in clauses(i) and (ii)

Section 51 A.(1)(a) very clearly provides that any time after registration of the design an application for cancellation of the registered of the registration could be made to the High Court on the grounds indicated therein. However Section 19 of the 2000 Act provides for filing the cancellation petition before the controller and a person aggrieved by the said order can file an appeal to the High Court under section 19(2).

The Hon'ble Supreme court in Godrej Sara Lee reported in (2010) 2 SCC 535 was required to answer as to whether the Delhi High Court had the jurisdiction to entertain the appeal against the order passed by the controller of Designs at Kolkata. The Delhi Court held that appeals were maintainable and it had the jurisdiction to entertain the same. The Hon'ble Supreme court held that since cancellation petition was filed in Kolkata, the appeal arose out of the cancellation petition, Delhi High Court did not have the jurisdiction and more so as the parties to the suit were from Kolkata, cause of action arose in Kolkata and hence Kolkata High court would have the jurisdiction. However the Hon'ble supreme court while dealing with section 51-A of the old act of 1911 which states that the high court has original jurisdiction to decide the cancellation petition and section 19 of the new act gives exclusive jurisdiction to the controller, made a passing reference that under the new act the controller has the jurisdiction to decide the cancellation petition and the High court would have appellate jurisdiction. However no law has been laid down with regard to same and since there is no authoritative pronouncement as yet on the issue, the confusion persists.

Conclusion:

Section 51-A of Designs Act of 1911 provided for exclusive jurisdiction to the High Court to decide the cancellation petition. The Designs Act of 2000 has deliberately given the exclusive jurisdiction to the controller under section 19 for cancellation and an appeal is provided to challenge the order of the Controller to the High court under section 19(2).

in a suit for infringement, if every ground on which registration of the design may be cancelled under section 19 is taken up as a defence and is pending consideration and a cancellation petition is also filed before the controller and is pending consideration.

In my view, the Hon'ble High Court should await the decision of the controller and then proceed to decide the issue of infringement.

The objective of giving the jurisdiction to the controller to decide the validity of the registered Design in my view, is because the issues involved would be highly technical in nature and the controller who considers the application for registration of the design is an expert in the field and is better suited to decide the cancellation petition. The High court would also have the benefit of the order to decide the appeal preferred by the aggrieved.

The designs act is still in the nascent stage and requires more deliberation on various aspects including the jurisdictional issues.

Views Are Personal Only.