JUDGMENT Bennet, J.
1. This is a first appeal brought by the plaintiff whose suit has been dismissed by the Court of first instance, the District Judge of Morabadad. The plaintiff sued on the ground that he was in possession of a certificate granted by the Controller of Designs dated 17th August 1929, certifying that a Design No. 43516 had been registered in respect of the application of such design to trays of brass or other suitable metal under the Patents and Designs Act of 1911. The photograph which is attached shows a large brass tray and the agents for the applicant specified the novelty by stating: "The novelty of the design lies in the grooves along the sides of the tray." The plaint set forth that the defendants had also begun to manufacture big trays of this design and that the plaintiff had given them a notice, but that they paid no heed. Para. 5 of the plaint stated:
According to the certificate granted by the Controller of Designs the plaintiff alone is entitled to manufacture big trays approved of for five years commencing from 17th September 1929.
2. The plaintiff prayed for the relief of in. junction to restrain the defendants from manufacturing and selling big trays of this design and for a sum of Rs. 200 damages. The plaint did not set out under what Act and section it was brought, but apparently it was brought under Section 53 of Act 2 of 1911, the Patents and Designs Act. Learned Counsel argued that the Amending Act of 1930 would apply, but that Act did not come into force until the first day of July 1930, under Section 1(2), and the plaint was brought on 22nd April 1930, The plaint therefore comes under Act 2 of 1911 and not under the Amending Act. In the written statement it was admitted that the plaintiff bad got this design registered and it was claimed that the invention of the plaintiff had no utility, and that it was not a new invention or design at the date of the application for registration. Further that the applicant was not the principal or first inventor of the design and he had knowingly and fraudulently included in the application a design which is at least over 50 years old and which had been publicly manufactured and used and sold in thousands within British India by scores of people. The following two issues were framed:
(1) Would the certificate of design be liable to revocation under Section 26, Clause (I)(a) or (b) or (c) or (e)? (2) To what damages is the plaintiff entitled?
3. It is dear that there was a certain amount of confusion in the minds of Learned Counsel as they applied Section 26, which only applied to Patents and not to registered designs. In Act 2 of 1911 the first part up to Section 42 refers to Patents, and the second part from Section 43 to Section 54 refers to Designs and the third part is general. By Section 29(2) it was provided that every ground on which a patent may be revoked under this Act shall be available by way of defence to a suit for infringement.
4. The defence therefore and the Court were apparently under the impression at the time the issues were framed that this section would apply and that, therefore the first issue was framed in the manner indicated as a short way of summarising the points which had been raised in the written statement. The attitude taken up by Learned Counsel for the plaintiff was stated in the judgment:
That these issues were irrelevant and that he was entitled to succeed on the plaint and the written statement as they stood and that evienced was unnecessary.
5. That has been the attitude of Learned Counsel for the plaintiff in this Court. The lower Court however heard the evidence of the parties and gave a decision on the questions of fast raised in the first issue as well as on the question of law. The lower Court found as a matter of fact that the plaintiff was not the author of the design and that he had not acquired it from anyone who had the rights of an author in the design and that the design was a common one for a long period prior to registration. Therefore the lower Court concluded that a suit under Section 53 of the Act would not lie because the plaintiff was not the proprietor of the design. The first ground of appeal states:
Because the plaintiff having got the design in dispute duly registered at the Patent office and being the holder of a certificate of registration granted to him as the proprietor of the design, was 'registered proprietor of the design' within the meaning of the expression used in Section 83, Patents and Designs Act.
6. The third ground stated:
Because no question was raised or could be raised by the defendants that the plaintiff was not a registered proprietor of the design in dispute and on their admission that they were using the design in spite of plaintiff's registration, his suit should have been decreed for damages and injunction against the defendants.
7. This was the main argument addressed to us. The view which the Learned Counsel took was that where a suit is brought under Section 53, Patents and Designs Act, of 1911 it is not open to the defence to raise any question of the nature pleaded in the written statement in this case, but that the fact that the plaintiff is the registered proprietor of the design is shown by his certificate and that that is conclusive proof of the fact that he is a registered proprietor for the purpose of Section 53. Learned Counsel points to Section 64 of the general portion of the Act which provides for any person making an application to the High Court for rectification of the register of patents or of designs on the grounds that any entry was wrongly made. Under this section no doubt it would be open to the defendants to make such an application on the grounds they alleged. The contention of Learned Counsel was that this is the only remedy open to them and that if they made no such application they cannot urge these grounds. Learned Counsel dwelt on the point that Section 29 specifically provides for a defence on these grounds in the case of patents, and he argued that as there is no section in regard to designs corresponding to Section 29 in regard to patents therefore the Act does not contemplate such a defence in the case of registered designs. We consider that the specific Section 29(2) exists in the case of patents because the language used in Section 29(1) differs from the language used in Section 53. In Section 29(1) the words are: "A patentee may institute a suit in a District Court, etc." The Act defines a "patentee" in Section 2(12) as "the person for the time being entitled to the benefit of a patent," and in Sub-section (11) a patent" is defined as "a patent granted under the provisions of this Act." There is nothing therefore in the definition of "patent" or "patentee" which implies an invention. That provision in regard to invention is found in Section 3 which deals with the application for a patent. Now Section 53 with which we are concerned does not contain any similar language, but it refers to, in Sub-section (2)(a), "the registered proprietor" and in Sub-section 2(b) to "the proprietor." The definition of "proprietor" is not merely a person registered under the Act as proprietor, but in Section 2(14) the definition is as follows:
Proprietor of a new and original design (a) Whore the author of the design, for good consideration, executes the work for some other person means the person for whom the design is so executed; and (b) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise means, in the respect and to the extent in and to which the design or right has been so acquired; the person by whom the design or right is so acquired; and (c) in any other case means the author of the design; and where, the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.
8. This definition implies that the proprietor must be the author or one who has acquired the design from the author or a person on whom such rights have devolved. For this reason because the term "proprietor" is defined as involving authorship it was not necessary in our opinion to make a specific provision in Section 53 similar to the provision in Section 29(2). It appears to us that the words "registered proprietor" which are nowhere defined in the Act may be interpreted in two ways. According to the ground No. 1 of appeal, Learned Counsel desires to interpret the words "registered proprietor" merely as a person who has been registered as a proprietor. There is no definition in the Act that "registered proprietor" can bear this meaning, nor has Learned Counsel shown that in any other case in volving the words "registered" such a result follows. For example in the case of the Registration Act where a sale-deed is registered, this does not imply that the document is a sale-deed. It is open to challenge in Court that a document registered as a sale-deed is not in fact a sale-deed, but is a deed of gift or something else. Similarly where there is registration of a firm it may be shown that what has been registered is not a firm, but a single individual. Further where a proprietor has his name entered in the khewat he may be considered as a registered proprietor, but that only in certain cases in Revenue Courts raises a presumption that he is a proprietor and it is open to challenge in a Civil Court.
9. The other meaning to be attached to the words "registered proprietor" is a person who is in fact the proprietor and who has also been registered as such. This we consider is the natural meaning to attach to these words. At this stage Learned Counsel advanced an argument that if this meaning were correct the proprietor of a design would obtain no benefit from registering it. This is not correct. The proprietor of a design apart from the Act and apart from registration has no right to prevent any other persons from using that design. It is only when he registers his design that he obtains such a right. If he is a proprietor and if he registers his design, firstly, under Section 47(1) he has copyright in the design for five years from the date of registration, Secondly, under Section 53(1) it is unlawful for anyone else to use a design for that period, and thirdly, under Section 53(2) he may recover damages or get an injunction against such persons. Fourthly under Section 46(3) there is a prima facie presumption that he is a proprietor. Learned Counsel contested this last point and urged that this provision would not apply to the question of proprietorship. His argument was that under Section 46 the only matters which are entered in the register are the addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matters as may be prescribed by the rules. But we consider that the language in Section 46(1) implies in the words "addresses of proprietors of registered designs" that there is an entry that the plaintiff is the proprietor of the registered design in question, and under Sub-section 3, Section 46, such an entry is prima facie evidence to that effect. That is, there is not under the Act conclusive proof from the entry that the plaintiff is the proprietor of the design, but there is prima facie evidence that he is the proprietor. The plaintiff therefore has the advantage that in a case like the present if no evidence at all is given then the certificate is sufficient evidence that he is the proprietor.
10. In the present case evidence on both sides has been given and therefore it is a question for the Courts to weigh that evidence and come to a finding. The English Act the Patents and Designs Act of 1907 is precisely similar to the Indian Act 2 of 1911 in its provisions. Learned Counsel referred to Smith v. Grigg Ltd. (1924) 1 K.B. 655. That was an application for an interlocutory injunction and the question before us was mentioned as to whether the defence as regards the validity of the registration of a design could be raised. But no opinion was given by the learned Judge? on that point. As a matter of practice in England it is apparently usual for the defence to make an application to the Court similar to the application under Section 64, Indian Act, fox rectification of the register. That proceeding is no doubt convenient in England because the Court hearing the suit for infringement is the same Court to which such an application can be made. In India it is not the same Court because a suit under Section 53 is brought in the District Court and the application under Section 64 must be made in the High Court. It is obvious therefore that it would be highly inconvenient if it were necessary for the defence to make an application under Section 64 in this Court and ask that the matter should then be sent to the District Court for inquiry in order that they should put forward their defence. We do not think that this is the intention of Act 2 of 1911.
11. The matter had once before been before this Court in Bahal Rai v. Sumer Chand (1903) 25 All. 493. That case was under the former Act, 5 of 1888, but the provisions of that Act were very similar with a slight differenece. In that case the plaintiffs who were manufacturers of Farrukhabad curtains had got a certain design registered and proceeded to sue the defendants for infringement, and the defence was that the defendants had been previously making curtains before registration and that the design was not a new one and two years before registration the design had been published in British India by a merchant in Bombay receiving a copy of the design which was an Italian one by post from London. Under these circumstances a Bench of this Court held that the defence had been established and that the plaintiffs failed to show that they were the proprietors. On p. 498 it was stated:
A further requirement is that the design shall be a new and original design. It is perfectly manifest from the evidence that this design is not a new and original design. The fact that it was in the possession of Jehangir Framji in 1897, two years before the registration of the design by the plaintiffs, is conclusive evidence on this point.
12. Now, in Act 5 of 1888, there was a slight difference in regard to the word "proprietor." In Section 51(1) there was provision similar in effect to the present Section 43 for an application for registration of designs, and it was stated:
Any person whether a British subject or not claiming to be the proprietor of any new and original design not previously published in British India may apply to the Governor-in-Council for an order for the registration of the design.
13. In Section 43(1) of the present Act it is stated:
The Controller may on the application of any person claiming to be the proprietor of any new or original design not previously published in British India register a design under this part.
14. In Act 5 of 1888, Section 50(3), stated:
The author of any new and original design shall be considered the proprietor thereof etc.
15. The definition in Act 2 of 1911 is similar, and in place of "proprietor thereof" we have a definition of "proprietor of a new and original design." We consider that no substantial change was intended by this alteration in the Act. No importance therefore Can be attached to this alteration. The ruling of this Court in Bahal Rai v. Sumer Chand (1903) 25 All. 493, appears to us to apply with equal force to the law as it now stand? in Act 2 of 1911. We see no reason to differ from that ruling which clearly laid down that the points pleaded in the written statement are points which can be raised in a suit like the present. Therefore we consider that the points of law raised for the appellant are incorrect.
16. We now come to deal with the appeal on the facts. In our opinion it was for the defendants to show to at the plaintiff was not the proprietor of the registered design in question. The defendants called evidence to show that this design had been commonly used in Moradabad for 20 years. Evidence to this effect was given by the defence witness, Prem Prasad, and Nazir Husain. Evidence was given by Liaqat Ali and by Nnsir Khan to the effect that articles of this design had been made and sold for a period of 14 to 16 years., Evidence was given by Ram Narain to the effect that this kind of tray had always been made in Moradabad, and that all the brass-workers' shops, in Moradabad, of which there are a large number, had been making such trays. This witness had been in business for 14 or 15 years. On the other hand the plaintiff relied on the evidence of his father which was to the effect that his father had a factory going on for 30 years and it was the first to make a "jaipuri kamrakhi thai" in Moradabad. lie goes on to say: "I have been making "thals" 30 years." He does not say that he had been making this kind of tray for 30 years. In cross-examination he states:
People began to make these Thais two or throe yoars ago About 8 or 10 years after I started making these Thais others learnt to make them and began to make them.
17. This statement shows that the plaintiff's father first began to make these trays 10 or 13 years ago. That is a period which is less than the period indicated by the defence evidence of 20 years ago. The next point is in regard to the authorship of this design. In a question to the Court the plaintiff's father stated:
I learnt from my brother Muhammad Hussain; I cannot say where he learnt; perhaps he thought of them himself. I do not know why these Thais are known as Jaipuri.
18. He then added : "I have been making these particular thals 30 years." This last observation is contradictory to what be had stated in cross-examination. Now, the fact that the witness learnt from his brother does show that the witness was not the author. In regard to whether his brother was the author the witness says that be does, not know where his brother learnt and perhaps he thought of them himself. This is no evidence whatever that his brother was the author of the design. The brother is alive and be has not been called as a witness. Learned Counsel relied on a certain document by which he said the brother Muhammad Husain bad assigned the design to the plaintiff. When this document of 7th January 1930, which is subsequent to the registration on 17th August 1929, was examined it appears that it is not a deed of transfer at all but it is an undertaking by Muhammad Husainthat he will not manufacture these trays without putting the mark of the plaintiff on the trays. Further the document states : "I learnt the manufacture of the trays from Abdul Karim, (the plaintiff)." This supplies a reason why Muhammad Husain was not produced, as a witness. He would have been confronted with this previous statement that he himself had learnt from the plaintiff the manufacture of these trays and therefore he could not have stated that he was the author of the design or if he had stated that, it would have been improbable that that statement would have been accepted. Under these circumstances it is clear that the plaintiff has failed to prove that Muhammad Husain was the author of the design or that the plaintiff or his father had acquired the design from Muhammad Husain. In our opinion to acquire a design within the meaning of Section 2(14)(b) means the transfer of proprietary rights in a design and not merely learning a design. For all these reasons we consider that the defence has been established and that the present suit of the plaintiff must fail.
19. Accordingly we dismiss this first appeal with costs.