' This order will dispose of C.M.A. No. 1186/1985 filed by plaintiff praying for an injunction restraining the defendants from infringing the plaintiff's registered design in respect of bronze' Coffee Pots'.
' The plaintiffs have filed the present suit praying for:--
(i) Permanent injunction restraining the defendants from infringing the 'plaintiff's registered designs bearing Nos. 6971, dated 5-10-1983 and 6972, dated 5-10-1983 both of Class-I.'
(ii) Mandatory injunction for delivery to the plaintiff all the 'Coffee Pots' infringing the designs and all moulds, dies and other equipments and accessories literature and publicity material to be used for manufacturing and aiding the manufacture and sale of the 'Coffee Pots'.
(iii) Accounts to be taken to determine the profits earned and payment of the same to the plaintiff.
(iv) Damages for causing loss to the plaintiff's business.
2. Originally the suit was filed only against defendant No.1, Haji Mushtaque and defendant No.2 'Mecca Handicrafts' the latter being a sole-proprietary concern of defendant No.l. On 2nd April, 1985 a Chamber order was issued whereby Nazir was appointed to visit the business premises of defendants Nos. 1 and 2 and "make an inventory of the Cofee Pots manufactured and also of such articles in the process of manufacture lying in the defendant's premises". Such inventory has been made and the Nazir has submitted his report. During this process the defendants Nos. 1 and 2 revealed that they were manufacturing the Cofee Pots on orders and under a contract of supply from the defendant No. 3 and the goods really belonged to the defendant No.
3. On this disclosure plaintiff applied to Court for joining the defendant No. 3 as party. This prayer was granted by order, dated 4-4-1985 and the defendant has thus become the contesting defendant in the suit.
3. The three defendants have put up a common defence. The main burden of the attack has been taken by the defendant No.3. Muhammad Arshad in para. 5 of his counter-affidavit admits that "I am dealing in the export business of various items, Handicrafts goods including the Coffee Pots which is the subject-matter of the suit". Nor indeed it is denied that the Coffee Pots manufactured and sold by defendants are not similar to those manufactured and registered by the plaintiff. On these admissions the learned counsel for the plaintiff pitched himself and urged that for the purposes of injunction these two admissions were enough. Nothing more was needed to show that copyrights which he secured by virtue of registration were not being infringed. As such he was entitled to a temporary injunction right away.
4. Mr. Khalilur Rehman learned counsel appearing for defendants Nos. 1 and 2 and Mr. Rahmat Elahi counsel appearing for defendant No.3, on the other hand argued that the Coffee Pot is a common type. There is no novelty, newness or peculiarity either in shape or design. The same design is in every day use in Middle East countries, like Saudi Arabia, Iran and all other Gulf countries and with a little modification in Japan.
In Indo-Pak Sub-Continent its use has been common since the Mughal period. That same pots could be seen in any handicraft shop from time immemorial and are freely manufactured in different cities of Pakistan and not only locally sold, but exported on a large scale. Counsel wanted to exhibit and deposit in Court Coffee pots bearing a close resemblance to the registered specimens produced by the plaintiff. They have also produced brochure from the Pakistan Handicrafts Sind Small Industries Corporation, Government of Sind and rely on designs Nos. 122, 123 and 124 published at page 15 of this booklet in support of their contention that the plaintiff's Coffee Pot is neither "new nor original" within the meaning of section 43 of the Patents and Designs Act of 1911 and does not qualify to be registered at all. That the plaintiffs have succeeded in securing the registration of such a common type of article through misrepresentation, which is against the scheme of the Act. To allow them to take advantage of such a registration would not only be against law but public policy and would result in irreparable damage not only to the defendants but to a large number of workers and handicraft dealers who are selling these pots locally and to foreign buyers. According to the defendants the plaintiffs' object in first getting the design registered surreptitiously and then filing the suit for obtaining an injunction from the Court is a co- ordinated but a crude attempt to hold back all the competitors and keep them at bay and push his sales in the Middle-East market without any competition in the field and accumulate huge profits by the time the suit is mature for hearing and disposal.
5. This argument immediately calls for attention of one of the three important "considerations for granting or not granting an interim injunction. If the injunction is refused, but the defendants are ordered to maintain full and complete account of the business and disclose the profits earned, the plaintiff can be compensated to the extent of the profits made by the defendants during the period of pendency of the suit. But the same position is not possible if injunction is issued and the plaintiffs enjoy a complete monopoly in the market to the fullest measure at the exclusion of every one else.
Their suit may be dismissed. But the defendants would not be recouped for or compensated for the losses they would suffer all these years. Thus, the plaintiff would suffer a repairable and the defendants an irreparable injury on the situation created by issuance or non-issuance of a prohibitory injunction. This in my humble opinion is an important element to be kept in view in this case.
6. The main contest between the parties has shrunk to the effect of registration of the Designs and the 'Copy Rights' acquired by the plaintiff through this registration. On this part of the case the two learned counsel have advanced lengthy arguments and this has remained a focal point in a large number of decisions spread over more than half a century.
7. The learned counsel for the plaintiff has vehemently argued that the registration for the design in his favour has entitled him for an uninterrupted enjoyment of 'copy-right' in the Design and as such any attempt to invade this right must be prevented by the injunction.
' He relies on the provisions of section 47 of the Patents and Designs Act, 1911. Clause (1) of section 47 provides:-- "47. (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration."
' The contention is that so long as the registration is not disturbed or annulled, the mere registration should be treated as a very strong prima facie case in favour of the plaintiff and the irjunction should be granted. This argument seeks support from subsection (3) of section 46 which runs as under:-- "(3) The register of designs shall be prima facie evidence of any matters by this Act directed or authorized to be entered therein."
' This contention of the learned counsel is contested by the counsel for the other side and they have argued that mere registration without notice to any one is not binding on any one. Their argument is that this registration can be challenged in more than one ways. First, reference is made to section 29 of the Act whereunder they can take a plea of revocation of the registration.
Section 29 must be read to appreciate this argument. It runs as under:-- "29. (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Act in respect of an invention, makes, sells or uses the invention without his licence, or counterfeits it, or imitates it: ' Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, alongwith the counter-claim, shall be transferred to the High Court for decision.
(2) Every ground on which a patent may be revoked under (section 26) shall be available by way of defence to a suit for infringement."
'This may be stated that the provisions of section 29 read with section 54 would apply with equal force to the case of designs as well. The next provision relied upon by the learned counsel is section 51-A of the Patents and Designs Act and it reads as under:-- "51-A. (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 Pakistan; or
(ii) that it has been published in Pakistan prior to the date of registration; or
(iii) that the design is not a new or original design; or
(b) within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a).
(2) An appeal shall lie from any order of the Controller under this section to 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."
8. The main burden of the argument, therefore, is that as soon as a challenge is made to the validity of registration, then ex parte registration loses its impact and the initial advantage which the plaintiff had disappears as soon as the plea regarding its validity is raised in C the defence.
After the registration is challenged on the ground that the design is neither new nor original, that it has been used in Pakistan prior to the date of registration, the registration surely becomes controversial and its validity becomes debatable. As a matter of fact no such design which is neither new nor original or which has been published in Pakistan before the date of registration, would be registered under section 43 of the Patents and Designs Act, because the basic requirement of such a registration is that the design should be new or original and not previously published in Pakistan. For ready reference clause (1) of section 43 may be quoted: "43. (1) The Controller may, on the application of any peron claiming to be the proprietor of any new or original design not previously published in Pakistan, register the design under this part."
'It may be pointed out that unlike the registration of a trade mark no previous notice is published and no objections are entertained by the Controller of Patents and Designs when application for registration is filed. The application for registration filed by an applicant is entertained by the Controller and registration effected as a matter of course. As such the chances of an unscrupulous applicant in the trade making an application for registration of the popular design which is neither new nor original cannot be completely ruled out. It is this part of the controversy which has claimed much of the time and has become a focal point in the case. This aspect of the case namely, whether in case of design, a temporary injunction should or should not be issued before the case goes for the trial, has come up for consideration and the balance of authority is that injunction should not be issued.
9. I would now proceed to refer to few cases which have been cited at the Bar in which this point has been discussed. The first case is Karachi Textile Works v. Multan Handloom Factory PLD 1955 Sind 351. As time factor has been noted in this case it is necessary to mention that in the present case as well the registration is very recent. The certificate of its registration filed by the plaintiff shows that application for registration was moved on 5-10-1983, the certificate was issued on 27- 5-1984 and the suit has been filed on 1-4-1985. Even if the date of application is taken to be the date of certificate and it should be so, still the design would not be more than a year old at the time of the filing of the suit. In PLD 1955 Karachi the dispute between the parties was on a pattern of textile. The design was registered by the plaintiff on 16-9-1954 and the suit complaining of piracy of this design was filed on 21-1-1955. An interim injunction was issued by Inamullah, J. But after hearing the parties at length, the injunction was vacated by a very long and well-considered judgment. This judgment has relied on an unbroken and consistent chain of authority and the view taken in this case is based on the principle of stare decisis. The concluding para. of the judgment is as follows:-- "I have given my very best and careful consideration to the question, whether the same considerations which have been applied by Courts for infringement of patents should be applied to the infringement of designs or not? I have, after perusing the judgment of Lord Justice Scrutton, no doubt that the same principle should apply. There is no reason, why these considerations which have weighed years back with Courts in England in questions similar to the present one, should not be applied now when the present Act is on the .same line as the Patents and Designs Act of 1907. I have compared most of the sections of that Act with our present Act and I find that they are similar. Considering the importance of industry and commerce, I do not see any reason why those weighty considerations that have weighed with eminent Judges, like Lord Justice Scrutton, should be deviated from.
' I would, for the reasons given above, set aside the order that I had passed and withdraw the interim injunction."
' For this view the judgment has relied on a number of authorities. But it is profitable to quote few opinions which have been quoted in the judgment:-- Page 353. "Mr. Ibadat Yar Khan, the learned Advocate for the defendants, argued that the principle, as enunciated by Terrell and Shelly on 'Patents' 9th Edition, should be taken into consideration so far as the interim order in a suit for infringement of designs is concerned. At page 318 the Commentary reads as under: 'The plaintiff must first establish such facts as will satisfy the Court that there are strong prima facie reasons for acting on supposition that the patent is valid. The most cogent evidence for this purpose is either that there has been a previous trial in which the patent has been held to be valid, or that the patentee has worked and enjoyed the patent for many years without dispute; or it may be that as between the parties the plaintiff is relieved from the onus of establishing validity, as where the defendant has admitted it or is so placed in his relationship to the plaintiff as to be estopped from denying it.'
' Further, on the same page: 'An interlocutory injunction is never granted in the case of a new patent even though the defendant, refuses to undertake to keep an account if it is opposed. The proper course is for the motion to stand to the trial.
' Further on page 319: 'An interlocutory injunction will not be granted however, even in the case of an old patent if the defendant challenges the validity of patent and shows that there is a question as to this which has to be tried."
' There are other equally important opinions quoted in the judgment but for the sake of brevity I would not quote them here. This case has very recently been followed by my learned brother Ajmal Mian, J. in the case reported in 1983 CLC 812. This was a case where it was averred that the defendant had immitated the design of "thermic jugs" manufactured by the plaintiff and covered by a registration with the Controller of Patents and Designs. The plea taken by the defence in this case was that the alleged designs were neither new nor original and there had been publication of the design before the filing of the application before the Deputy Registrar. Both these pleas of the defence were entertained and the injunction was refused. The learned Judge observed "without expressing any opinion it will suffice to observe that the defendant's above pleas require full investigation and prima facie have some force and, therefore, it cannot be outright held that they are bogus pleas." It was further observed at page 826 that "it may be pertinent to mention that there is a distinction between the registration of a trade mark and the registration of design or patent. In the former case the Trade Mark Act and the rules framed thereunder contemplate the publication of a prior public notice, and hearing of objections to the application for registration etc. whereas under the Patents and Designs Act, the registration is granted secretly without any prior publication. In other words, the affected parties have no opportunity to contest the application and, therefore, if the contention of the learned counsel for the plaintiffs is to be accepted that a Court should grant an ad interim injunction without 'even examining as to whether prima facie there are some serious issues about the validity of the design sought to be enforced pending adjudication in a competent Court, it will cause hardship to the affected parties".
' The following passage from the judgment sums up the discussion in the judgment:-- "It may be observed that it has been the consistent view of the Courts in England as well as in Indo- Pakistan (except that in the above case of 1963 Karachi and 1974 Lahore a contrary view was taken) that in an action for the infringement of design/patent an ad interim injunction is not granted when the defendant bona fidely challenges the validity of design/patent in defence and the design/patent is a recent one. This was so held in the aforesaid Sind case of 1955, Indian Case of Madras High Court of 1965 and England cases reported in R.P.C. referred to hereinabove in para. 3 (a) Mr. Haider All Pirzada, Advocate for the defendant in Suit No. 386/79 has referred to the two recent decided cases of the Delhi High Court, namely, the case of Ram Narain Kher v. Messrs Ambassador Industries, New Delhi AIR 1976 Delhi 87 and the case of Messrs Brighto Auto Industries v. Raj Chawla AIR 1977 N 0 C 162 Delhi. In the former case a learned Single Judge declined to grant an interlocutory injunction in an action for infringement of patent, in which the defendant disputed the validity of the registration of the patent. In the latter case it was held by a learned Single Judge that a registra tion cannot be deemed effective unless the design or configuration sought to be protected is new or original and not a pre-existing common type."
' I think now is the time to make a reference to the Karachi case reported in PLD 1963 Kar. 79 which has been vehemently relied upon by Mr. Mohsin Tayyeballey learned counsel for the plaintiff. It is to be mentioned at the outset that this judgment has some distinguishing features with the case before me. That case was filed not in the High Court but in the District Court. The plea of revocation of the Patent/ design as counter-claim in a suit for infringement of the patent was not available to the defendant in that case. Such a plea is entertainable only in the High Court. In the present case the defendants can legitimately raise the defence of revocation and challenge the validity of the registration which he is contemplating to do. This case decided by a learned Judge of this Court Qadeeruddin Ahmed, J. has not approved the Karachi Textile Works v. Multan Handloom Factory.
According to the learned Judge, the view taken in that case was based on the doctrine of stare decisis. In the words of the learned Judge "the principle of stare decisis is greatly valuable doctrine of common law. It means that the Court should stand by precedents and should not disturb them.
Without this principle common law could not exist, but its place in a system of law, like ours, where the main body of the law, excepting for personal law, consists of statutes, is very limited. The main task of lawyers and Judges in such a system as ours is to discover the purport of the statutes and to apply it to the facts of each case. They have to analyse statutory provisions to understand and accurately construe them and to examine the structure of the statutes in which the provisions occur to correctly interpret them".
' Even if we examine the present case in the light of the opinion expressed above, in my humble opinion the outcome would not be different than what it is. Whether we call it a doctrine growing on the pyramid of common law or a concept gaining momentum by force of the opinion of different Judges interpreting the statutory provisions, according to their own lights and attributes would not make much difference. Leaving aside this academic discussion the fact remains that the benefits of copy right claimed by the plaintiff/applicant by force of section 47 of the Patents and Designs Act, cannot be grudged provided they are acquired after fulfilling the obligations which are conditions precedent to the acquisition of those rights and which are that the design should be "new and original" and should not have been in use prior to the date of application for registration.
Once it is established either after an action under section 51-A or even by a decree of a Court after contest on this issue the copy right would consolidate to a mature right and thereafter the invasion of those rights would be a case of infringement. But so long as this so-called right obtained ex parte in secrecy and as alleged by defendants by making some misrepresentation, there seems to be no reason why it should be treated differently from the cases where a decree based on fraud or a registered instrument secured dishonestly should be treated. If in a suit for rescission of a registered document or for setting aside a decree based on fraud, the Court can competently give a relief keeping aside the prima facie case in favour of a litigant claiming protection of such a decree or under such an instrument, in my opinion the Court should not be reluctant to give relief to a defendant where the very basis of the right is challenged in a case of infringement under the Patents and Designs Act, because all guarantees offered to a holder of a copyright are subject to the main condition that those rights are not acquired through questionable means and are in full compliance of the requirement of law. So long as this remains debatable, the plaintiff cannot be allowed to stand on a higher footing on the basis of the copyright, than the defendant who challenges the very foundation and questions the validity of registration itself. I do not see any reason to depart from the view being consistently adhered to during the century or even more and do not feel inclined to subscribe to the view expressed in PLD 1963 Karachi. Before parting with this case I venture to say that the question posed by the learned Judge in the last line of paragraph 19 of his judgment leaves much to be desired when these questions are attempted to be answered in the following paragraph 20 of the Judgment.
' The learned Judge referring to the earlier Karachi case of Karachi Textile Works v. Multan Handloom Factory appreciated that the decision was based on two factors namely, (a) an interlocutory injunction is not granted if the design is recent, and (b) there is a substantial doubt as to its validity. Unfortunately while tackling these questions, nothing has been said in paragraphs 20 and 21 which are concluding parts of the judgment.
' The result is that this application of injunction is dismissed. The prayer for injunction is disallowed.
The Nazir of this Court has already prepared an inventory of the goods in possession of the defendants. The defendants are directed to maintain an account of the sale and manufacture of the 'Coffee Pots' which are similar to the design of the plaintiff. The defendant would file a copy of the account every month of such sale and manufacture till the pendency of the case. As this is a case relating to a copyright whose initial life is only five years, it should be decided at an early date.
I would, therefore, direct that this case should be heard as soon as it is mature for hearing.