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Judicial Miscellaneous No. 38 of 1981, decided on 19th August, 1986.

‑‑‑Ss. 51‑A & 43‑A‑‑Cancellation of registration of design‑ Requirement‑‑Design which was allowed registration being already in market long before application therefore was moved by respondent‑ Requirement for registration being "new or original designs not previously published"‑‑Prayer for registration and consequent registration thereof, held, would be against scheme of Act II of 1911 and contrary to requirements of S. 43(1) thereof.

‑‑‑S. 51‑A(1)(a)(ii)‑‑Registration of design, cancellation of‑‑Where existence of design and publicity thereof, before registration of such design in favour of respondent was supported by evidence on oath with no rebuttal thereto, registration, thereof, was cancelled by High Court in exercise of its statutory powers under S. 51‑A of Act II of

1911.

S. A. Sarwana for Petitioner.

Ashraf Ayoob for Respondents.

Date of hearing: 19th August, 1986.

Mobin Plastic Industries are manufacturers of combs having a particular design of their combs which is known as 'Diamond Design'. By an application, dated 25‑9‑1980 they applied for the registration of this design to the respondent No. 2 i.e. 'The Controller of Patents and Designs, Karachi. By an order, dated 7‑5‑1981 the Controller of Patents and Designs allowed this registration and the combs of the respondent No. 1 are now being sold and marketed with 'Diamond Design' as registered design.

2. The petitioners, who are competitors of respondent No. 1 and are also manufacturing combs with more or less the same design, have filed this petition under section 51‑A of the Patents and Designs Act, 1911 for the cancellation of the registration of the design granted to respondent No. 1. It would be proper to quote this section in order to highlight the basis of the grievance raised by the petitioner in this case. Relevant part of the section runs 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."

3. Mr. S.A. Sarwana learned counsel for the petitioner has argued that the registration of the design granted to the respondent No. 1 by the respondent No. 2 is neither new nor original. Further, the learned counsel contends that the same design has been published in Pakistan Market for a pretty long time prior to the design new registered in favour of respondent No. 1. As a matter of fact the learned counsel has taken pains to contend that quite a few other manufacturers of combs were producing combs with identical design. He has led evidence on this points and it would be pertinent to refer to the evidence of P.W. 4 Shamnm Ahmed son of Mohammad Younus Exh. 8. In his statement he has stated that the combs manufactured by the respondent No. 1 Exh. 6/2 were in the market since 1977‑78. Then he proceeds to assert that the combs manufactured by the petitioner Messrs Maniar Industries Ltd. , Exh. 8/1 were in the market since about 15 years i.e. round about 1967‑68. The petitioner himself has appeared in the witness‑box as Exh. 16 and he has categorically stated that he is manufacturing an identical design of combs bearing the 'Diamond Design' Exh. 8/1 since 1953. He states that the identical design were also produced by Messrs Jadeed Plastic Industries and marketed by them since 1958.

4. The above evidence clearly indicates that the 'Diamond Design' combs were in the market in 1980 when the application of the respondent No. 1 came to be filed praying for registration of the 'Diamond Design' of the combs. As such' the prayer for registration and consequently the registration itself would be against the scheme of the Act and contrary to the provisions of section 43(1) of the Act which limits the powers of the Controller to register only such designs as are "new or original designs not previously published". Against this positive evidence produced in this Court by the petitioner there is no evidence worth the name to rebut the petitioner's case. Even cross‑examination on the petitioners witnesses does not shake the credibility of the witnesses asserting that the design has been in use and, been published prior to the date of application of respondent No. 1. I may add that the respondent No. 1 has not examined any evidence whatsoever on this crucial part of the case. He has produced only one witness namely Muhammad Aslam son of Khuda Bux, who is the dealing Assistant in the Designs Section of the Controller's Office. This witness was summoned to produce some documents to show that the petitioner himself had applied for the registration of the design in his favour and in his affidavit he had stated that he is applying for the design because the design was never published before and bore originality.

5. Mr. Ashraf Ayoob, learned counsel for the respondent No. 1 heavily relied on para. 4 of the affidavit filed by the petitioner before the Controller, which runs as under:‑

"4. That the design is not a copy of any one else design and that my Company, to the best of knowledge, information and belief, will not be infringing any one else's design by registration of this design." Surely this is a statement of fact made by the petitioner before the Controller and perhaps it was not found to be correct by the Controller and that may be the reason why the registration to the petitioner has been refused by the Controller. Whatever may be the sequence of events before the Controller and whatever may be the weight of this evidence for the purpose of registration applied for by the petitioner himself, I cannot credit this statement made in the affidavit filed before the Controller against the evidence on oath produced in his case. The existence of the design and its publicity is supported by the three witnesses mentioned above and this evidence for the purpose of this case is the most important evidence to dispose of the contention raised on the strength of section 51‑A(1)(a)(ii) of the Patents and Designs Act. No other argument was advanced.

This petition is, therefore, allowed. The registration granted by the Controller to the respondent No. 1 vide order, dated 7‑5‑1981 stands cancelled.

A . A . Petition allowed.

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