Asok Kumar Ganguly, J.
1. The appellant is aggrieved by an order dated 11th February, 2004 passed by the learned Judge of the first Court refusing to grant injunction on its application (G. A. No. 2709 in C. S. No. 213 of 2003) filed alleging infringement of its design registered under No. 183322. The appellant's prayer for ad interim injunction was refused by another learned Judge on 18th August, 2003 and His Lordship directed the matter to be considered upon affidavits.
2. In respect of its design, the appellant obtained a certificate of registration on 2th January, 2001, from the Comptroller General of Patents, Designs and Trade Mark, and the certificate is dated 28th August, 2000, and numbered 183322. Admittedly the certificate was granted under the provisions of the Designs Act, 1911 (hereinafter referred to as 'old Act') and the Designs Rule, 1933. The design was in respect of figured glass and it was stated in the certificate that the design will subsist for 5 years from the date of registration and may be extended for two further periods of 5 years each. The certificate also shows that the novelty resides in the surface pattern and ornamentation of the figured glass. The design, which is known as Karatchi, was produced before this Court. On seeing the design we found that designs has no projections but they have grooves on the glass.
3. The relevant facts of the case are that in the month of September, 2002 the plaintiff-appellant issued caution notices in the newspapers published from several cities of the country warning various manufacturers against infringement of its registered design 'Karatchi'.
4. On or about 15th January, 2003 the respondent filed a petition under Section 19 of the new Act for cancellation of registration of the plaintiffs design (design No. 183322) before the Controller of Design. It is not in dispute that the plaintiff-appellant is contesting such cancellation proceeding and the matter is still pending before the Controller. While such cancellation proceeding is pending, the suit, out of which this application arose, was filed in July, 2003, by the plaintiff-appellant seeking permanent injunction restraining the defendant from infringing its copyright in its design 'Karatchi'.
5. The case of the plaintiff-appellant, inter alia, is that Karatchi glass is distinguished in its unique surface pattern and is closely and exclusively associated with the appellant and the design appearing on the glass is a three-dimensional reproduction of a two-dimensional artistic work. The appellant received information in September, 2002 that some other glass manufacturers were taking steps to introduce in the market figured glasses in the Karatchi design despite its caution notices. It is the further case of the appellant that during the subsistence of its registration the respondent had no right to manufacture and sell figured glasses with Karatchi design.
6. The learned Counsel for the appellant submitted that the registration certificate obtained by it under the old Act is still valid upto August, 2005. Under Section 2(5) of the old Act, design has been defined as under :
"2(5) 'design' means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are 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 or property mark as defined in Section 479 of the Indian Penal Code".
7. The learned Counsel referred to Section 43 of the old Act and submitted that the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in India, register the design under Part II of the old Act. After it was so registered a certificate was issued by the Controller under Section 45 of the old Act and in this case the certificate so issued is still valid. Referring to Section 46 of the old Act, the learned Counsel submitted that after such registration, the name of the appellant as proprietor of registered design has been entered in the book called the Register of Design. That is the prima facie evidence of any matter relating to design under the old Act. The learned Counsel further submitted that under Section 47 of the old Act such registration will continue for five years from the date of registration and is also liable to be extended. Attention of the Court was also drawn to Section 53 of the old Act. It was submitted that under Section 53(2) of the old Act, in case of infringement of a registered design, if the proprietor of the design files a suit in that case the person who contravenes Section 53 and indulges in an infringement, is to be restrained by an order of injunction. Relying on Section 53(2), the learned Counsel submitted that right to get an injunction in such a case is a statutory right and injunction is to be issued as a matter of course. The learned Counsel submitted that in the injunction petition it was averred that after October, 2000, when the Karatchi design was first introduced by the appellant in the trade, the sales of the appellant under the name of "Karatchi" have been to the tune of Rupees 51 crores. It was also averred that the respondents are trying to introduce the same design with a view to deriving similar benefits and thus are trying to invade the petitioner's copyright in the same design. The complain of the appellant is that even in such a clear case, the learned Trial Judge has erroneously come to the conclusion that the appellant does not have a prima facie case.
8. The learned Counsel for the respondent submitted that the design Karatchi is neither a new nor an original one when the appellant applied for its registration.
9. In glass manufacturing industry, the said design is in public knowledge for more than 35 years. The design is embossed on the glass on the basis of a roller and many companies around the world manufacture such embossing rollers, which are freely available in international market. The appellant imported an embossing roller containing the 'Karatchi' design from Jin Hwa Machinery Co. Ltd. of Taiwan. The said roller is not manufactured in India. Such roller is manufactured by foreign companies like Jin Hwa of Taiwan and Dornbusch Gravuren GMBH of Germany, Keller Dorian of France.
10. The specific case of the respondent is that it has also imported the embossing roller of the same design and wants to manufacture glass applying the same. It is also the case of the respondent that the appellant has failed to disclose any material whatsoever to show that it is the proprietor of Karatchi design.
11. According to the learned Counsel, molten glass comes out of the furnace and passes between powered rollers. The bottom of the roller has the required design and this engraved design is embossed on the glass in the rolling process. So the design is decided by the roller. Rollers with such design have been introduced openly in international market long ago. The appellant by utilizing such a roller which is freely available in the open market internationally cannot maintain a petition for injunction in a suit, which has been filed after the new Act has been enacted. These are basically the rival contentions of the parties.
12. The new Act and its provisions have a considerable bearing on the points at issue.
13. The new Act has come into existence on 25.05.2000 and the new Act is a consolidating and amending Act relating to the protection of design. From the Statement of Objects and Reasons of the new Act, it appears that the framers of the law became aware of the considerable progress in the field of science and technology which has taken place since the enactment of the old Act in 1911. As such, one of the objects of the new Act was to ensure effective protection to the registered designs. One of the objects was also to ensure that law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity and one of the main objects was to remove impediment to the free use of available design.
14. In order to promote such objects and reasons some new features have been added to the new Act.
15. Those new features, which are relevant in the context to the present case, are that there was no definition of the word 'original' under the old Act. But, the word 'original' has been defined in the new Act under Section 2(g). The new Act also introduces the internationally followed system of classification in case of the Indian classification under the old Act. The new Act introduces additional grounds under Section 19(1) for cancellation of registration as compared to the grounds in Section 51A of the old Act. One of the grounds of cancellation in the new Act is that the design has been published in India or in any other country prior to the date of registration. But the ground for cancellation under the old Act was the publication of the design only in India prior to the date of registration. Apart from that there are two additional grounds of cancellation under the new Act incorporated under Clauses (d) and (e) of Section 19(1) of the new Act. Section 4 of the new Act provides for grounds for prohibition of registration of certain designs. Section 4 of the new Act is also a new provision. Apart from that, in Chapter V of the new Act, which deals with legal proceeding, there is a substantial difference from the corresponding provisions of legal proceeding under Section 53 of the old Act. Under Section 22(2)(3) of the new Act, it has been provided that in any suit or any other proceeding for relief under Sub-section (2), every ground on which the registration of design may be cancelled under Section 19 shall be available as a ground of defence. This is entirely a new provision under the new Act.
16. Now the question, which falls for determination in this case is how far these new provisions are attracted to the present proceeding in the context of the fact that the certificate of registration in the present proceeding was granted under the old Act and which is valid even when the new Act has come into force. In order to answer this question, the Court has to consider the new Act as a whole as also the provisions of repeal under the new Act.
17. Chapter XI of the new Act deals with the provisions of repeal and saving under Section 48. The said section is as under :
"48. Repeal and savings.--(l) The Designs Act, 1911 (2 of 1911) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897) with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Designs Act, 1911 (2 of 1911), shall, in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.
(3) The provisions of this Act shall apply to all applications for registration of designs pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.
(4) Notwithstanding anything contained in this Act, any proceeding pending in any Court at the commencement of this Act may be continued in that Court as if this Act has not been passed.
(5) Notwithstanding anything contained in Sub-section (2), the date of expiration of the copyright in the designs registered before the commencement of this shall, subject to the provisions of this Act, be the date immediately after the period of five years for which it was registered or the date immediately after the period of five years for which the extension of the period of copyright for a second period from the expiration of the original period has been made".
18. The learned Counsel for the appellant submits that under the provisions of Section 48(2), the registered certificate issued to the appellant under the old Act shall remain in force as if it has been given or issued under the corresponding provisions of the new Act. Relying on these provisions, the learned Counsel for the appellant submits that since the registration granted in favour of the appellant is still valid, the same cannot be subject to cancellation on the grounds incorporated under the present Act. It was also urged that on a proper construction of Section 48 of the new Act read with Section 6 of the General Clauses Act it cannot be said that the defence, which is available to a defendant under the new Act can be pressed into service here.
19. These contentions have been refuted by the learned Counsel for the respondents by relying on the provisions of Section 48 of the new Act and the fact that the suit admittedly has been filed after coming into effect of the present Act. Both sides cited a number of judgments, which will be considered later.
20. It is no doubt true that under Sub-section (2) of Section 48 of the new Act, the registration of the appellant is saved. But, the said registration shall continue in force and have effect as if it has been issued under the corresponding provisions of the new Act.
21. Once the new Act has come into force, the registration given under the old Act will continue in force as if given under the new Act. The obvious consequence is that such registration is subject to same grounds of cancellation, which are provided under Section 19(1) of the new Act. This is the obvious interpretation of Section 48(2). So, in my judgment even though the registration certificate is saved, but, its continuance is subject to the grounds of cancellation provided under the new Act. It has been already pointed out that the grounds of cancellation under the new Act are substantially wider and more comprehensive than those provided under the old Act.
22. This Court, however, makes it clear that since the cancellation proceeding is pending before the Controller, nothing said in this judgment shall be construed as an expression of opinion on the merits of such cancellation proceeding.
23. Now coming back to the provision of Section 48 of the new Act for deciding the question whether the defence which is available to a respondent in an injunction proceeding under Section 22(2)(3) of the new Act is also available to the respondents in this case, this Court is of the view that it is available. Sub-Section (4) of Section 48 of the new Act, in this context, is relevant. Sub-section (4) of Section 48 of the new Act says that if any proceeding is pending in any Court at the commencement of the new Act, the same may continue in that Court as if the new Act has not been passed. In the instant case, the suit was filed before the Calcutta High Court in the month of July, 2001 and the new Act came into force in the month of May, 2000. As such, the said suit, was filed about 1 year 3 months after the new Act has come into force and cannot be considered a pending proceeding under Sub-section (4) of Section 48 of the new Act. This is the plain interpretation of Section 48(4) of the new Act in the context of the present case and this interpretation emerges on a plain reading of Section 48(4) of the new Act inasmuch as the language of Section 48(4) is very clear and admits of no ambiguity.
24. In view of the aforesaid facts, the suit filed by the appellant is the subject to the provision of Section 22 contained in Chapter V of the new Act and consequently, Sub-section (3) of Section 22(2) of the new Act applies and the respondents are entitled to raise by way of defence in opposition to the appellant's injunction prayer every ground on which the registration of design may be cancelled under Section 19 of the new Act.
25. In order to wriggle out of this clear position in law, the learned Counsel for the appellant very much relied on a Division Bench judgment of this Court in the case of Rotomac Pens Ltd. v. Milap Chand Jain and Co., reported in IPLR 1999 page 149. It may be noted that the decision in Rotomac was rendered on 22.09.1998, when the new Act was not in existence. Rotomac had a registered design for fighter brand ball pens and the respondents introduced in the market a deceptively similar product. Rotomac filed a suit for permanent injunction to prevent infringement of its registered design and passing off. The learned Single Judge did not grant any interim relief and an appeal was filed before the Division Bench. In the Court of Appeal, while opposing Rotomac's prayer for injunction, the respondents urged that its registration of design is vague and invalid and the registration is lacking in any novelty and originality. It was also urged that the respondents' application for cancellation of registered design is pending. Reliance was placed on behalf of the respondents on certain decisions under UK Design Act for cancellation of registration.
26. The Appeal Court, after comparing the law of designs between Indian and English statutes, pointed out the difference between two and came to the conclusion that the Courts in India have no jurisdiction to consider the validity of a registered design in a suit for infringement of design unlike the Courts in UK and, as such, the decisions of UK Courts are not applicable to Indian cases.
27. On that ground, the Court in Rotomac held that the Division Bench decision of the Delhi High Court in Nicky Tasha, which followed the English law, was erroneous.
28. The Court held that the only question, which was relevant under the old Act in a case for infringement of design, was whether there is a prima facie case for infringement of the registered design going by visual inspection. The Court on visual inspection found that the respondent's product was deceptively similar despite some small differences. As such, the Court in Rotomac granted interim order. As pointed out above, this was done under the old Act when the new Act was not in existence. The learned Judge delivering the judgment also found that Section 64 of the Patents Act, 1970 statutorily allows the issue of invalidity of registration to be raised by way of a counter-claim on the issue of infringement but there is no corresponding statutory provision in the Designs Act as it stood then. The learned Judge considered the same to be a 'lacuna' in the Act and held that the same is to be considered by the Parliament and the lacuna cannot be filled up by Court by incorporating the provisions of the Patent Act, 1970 'by a process of judicial interpretation'.
29. It is obvious that the lacuna has now been filled up by the legislature in view of the provision of Section 22(2)(3) of the Act. That being the position, the decision of the Division Bench of the Calcutta High Court in Rotomac was rendered when the law was different and its ratio cannot be applied in the present case.
30. The learned Counsel for the appellant also relied on Sections 6(c) and 6(e) of the General Clauses Act, 1897 and submitted that the provisions of the Act are applicable in the construction of Section 48 of the new Act. It has also submitted that repeal of the old Act shall not affect any right, privilege, obligation or liability acquired under the enactment under repeal and it was also submitted that the repeal shall not affect any legal proceeding or remedy in respect of such right, privilege or obligation and any such proceeding or remedy may be continued as if the repealing Act or regulation had not been passed.
31. Relying on those provisions, the learned Counsel submitted that the suit, which has been filed by the appellant even after the repeal of the old Act in respect of its registered design, must proceed in accordance with the provisions of the old Act and Section 22 of the new Act shall not apply. In support of such submission, the learned Counsel relied on the decision of the Hon'ble Supreme Court in the case of Jindas Oil Mill v. Godhra Electricity Co., . Reliance was placed on para 8 of the judgment in which, the learned Judges considered Section 6(c) of the General Clauses Act, 1897 relating to the consequences of the repeal. The learned Judges held where repeal is followed by fresh legislation on the same subject, the Court has undoubtedly to look into the provisions of the new Act for the purpose of determining whether they indicate a different intention. According to the learned Judges, the line of inquiry would be not whether the new Act keeps alive the old rights and liabilities, but, whether it manifests any intention to destroy them.
32. In the case of Commissioner of Income Tax, Calcutta v. Bishu Bhusan Sarkar, reported in 59 ITR 590, a Division Bench of Calcutta High Court, while dealing with the question of application of Section 6 of General Clauses Act, came to the conclusion that Section 6 will apply if there is no saving clause in the repealing enactment or unless a different intention appears. The learned Judges held that if the repealing enactment makes a special provision regarding pending or past transaction, it is the later provision that will decide whether the liability under the repealed enactment survives or is extinguished.
33. A repealing Act can contain different intention is also recognized in Section 6 of the General Clauses Act. A bare perusal of Section 6 makes it clear that clauses (a) to (e) will apply 'unless a different intention appears'. Here Section 48(2) of the new Act contains a different intention inasmuch while saving the registration under the old Act, the express different intention, which Section 48(2) manifests is that such registration will continue to be in force and have the same effect as it is issued under the corresponding provisions of the new Act. The registration certificate is thus made subject to challenge under the additional grounds introduced in the new Act. Therefore, Sub-clause (c) or (e) of Section 6 of the General Clauses Act do not come to the aid of the appellant at all. The suit of the appellant is not, as noted above, a pending proceeding on the date of coming into effect of the new Act. So the suit must be governed by the new Act which express different intention in very uncertain terms in Sections 19(1) and 22(2)(3) thereof.
34. A Single Bench judgment of the Bombay High Court in the case of Faber Castell Aktiengesellschaft v. Pikpen (P). Ltd., reported in 2003(7) Indian Law Decision 797 (Bom), has also come to the same conclusion. Reliance on this decision was placed by learned Counsel of both the sides. In Faber Castell, the plaintiffs, who were selling marker pens, alleged that the defendants had adopted an identical design in their products and the defendant's trade mark 'Textliner' was also identical, which was even arranged in the same manner as on the plaintiffs' marker pens. The plaintiffs were the proprietors of the said design registered in 1997 under the old Act. Therefore, the plaintiffs prayed for an injunction restraining the defendants from infringing the plaintiffs' registered design. The plaintiffs also claimed injunction restraining the defendants' from passing off heir highlighters under the trade mark 'Textliner' by using the said trade mark. The learned Judge dismissed the plaintiffs' prayer for injunction against the alleged infringement of copyright, but granted the prayer for injunction in the passing off. In the instant case before us, no case of passing off was made out.
35. In Faber Castell, the learned Judge construed Section 48 of the new Act and held that the registration of the design of the plaintiffs may continue to be in force, but, the design must be the subject to the provisions of the new Act. (see para 9 of the judgment).
36. The learned Judge considered various notes on clauses on the new Act and which were published in the Gazette of India, Extra ordinary and referred to Clause 19. Construing the said Clause 19 in the context of the grounds for cancellation of registration under the new Act, the learned Judge held at the concluding portion of para 9 and at page 809 as follows :
"It is obvious, that it was the avowed intention of Parliament to provide for new ground for cancellation of registration so as to include prior publication in any other country and also to bring about changes in the conditions of registration of designs vide Clause 5. It appears that it is the intention of Parliament to specifically consider the question of prior publication 'on global basis instead of regional basis, i.e. in India' vide Clause 19".
37. The said conclusion has been reiterated also in the concluding portion of para 11 wherein the learned Judge further held that in a suit for injunction filed by the proprietor of registered design the defence by way of new ground for cancellation of registration can also be urged. In para 12, the learned Judge held that the plaintiffs are not entitled to injunction on the ground of infringement of design in view of the provisions of Section 19 read with Section 21 (this must be typographical error, as the grounds of defence are contained in Section 22) of the Designs Act, 2000. This Court is in respectful agreement with the said ratio in Faber Castell.
38. Two other judgments on which the learned Counsel for the appellant relied upon, are not of much relevance to the facts of the present case. The first of which was rendered by a learned Single Judge in the case of Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd., reported in 1996 PTC (16) 202. That was a case decided under the old Act about the originality of design under Section 53(2)(b) of the old Act. The learned Single Judge, while delivering the judgment, held that the test of deceptive similarity is an appropriate test in case of passing off. But, in so far as the cases of infringement of the design are concerned, the question is not one of similarity or whether there is a confusion inasmuch as any imitation of the registered design is sufficient to destroy the exclusive right of user of the proprietor despite the fact that confusion may or may be caused as to the source of the goods. In this case, the question is whether the appellant is entitled to an injunction in the suit filed after the new Act has come into force in view of the new grounds of defence introduced under Section 22 of the new Act. Such question could not have been considered in the decision in Castrol India Ltd. rendered on 26.08.1994, when the old Act was holding the field.
39. The other decision cited was of the Division Bench of the Delhi High Court in the case of Penguin Books Ltd., England v. India Book Distributors and Ors., . The facts in that
case were that certain hooks of British Publication were imported from America and were sold in India without a licence the exclusive licensee of those books in India. The Court held that such sale amounts to infringement of copyright of the exclusive licensee and the Court held that it cannot be said that importation of lawfully published books from America into India is not an infringement of the copyright under Section 54(a) of the Copyright Act, 1957. This Court fails to appreciate the relevance of the aforesaid ratio in the facts of this case.
40. In this case, various judgments were cited by the learned Counsel for the parties on the interpretation of consolidating and amending statute for a proper interpretation of various sections and particularly Section 48 of the new Act. Reliance was placed on the decision of the House of Lords in the case of Governor and Company of the Bank of England and Vagliano Brothers, reported in 1891 Appeal Cases 107. Reliance was placed on the speech of Lord Herschell (page 143 of the report). The learned Judge was construing Bill of Exchange Act which codified the law relating to the negotiable instrument in England and the learned Judge held that for construction of such a statute the proper course, in the first instance, is to "examine the language of the statute and to ask what is its natural meaning uninfluenced by any consideration derived from the previous state of the law, and not to start with inquiring how the law previously stood". These classical observations of Lord Herschell for construction of codifying law have also been subsequently applied by different Courts including the Hon'ble Supreme Court for construction of consolidating and amending statutes also.
41. The decision of the Privy Counsel in Municipal Council of Sydney and Mary Jane Bourke, reported in 1895 Appeal Cases 433, was also referred to. The facts in that case were that one Charles Bourke was thrown from a cart while he was driving, the same in Kane Street, a street in Sydney, and Bourke died. Charle's wife brought an action to recover damages from the Municipal Council of Sydney. In that context, the word 'liabilities' came up for construction in an Act, which was meant to consolidate and amend laws relating to powers of the Council for regulations of public ways. While considering the said question, the Lord Chancellor, delivering the judgment observed that it is not necessary to look back to all the repealed statutes for ascertaining the duties or the powers of the Corporation and to treat the provisions of the repealed statutes as still in force, and ignoring the consolidating and amending statute, where the enactments dealing with the subject-matter are in different terms (page 438). Such an interpretation, in the opinion of the Lord Chancellor, was inadmissible and opposed to sound canon of construction.
42. The learned Counsel for the respondents submitted, and in our view rightly, that in the instant case, the matter relating to legal proceeding must be considered in the light of the provisions under Section 22(2)(3) of the new Act and not under the provisions of Section 53 of the old Act which have gone out of statute book in view of its repeal, excepting what has been saved under Section 48 of the new Act.
43. A similar rule of construction has been laid down by Lord Esher, Master of Rolls, sitting in the Court of Appeal in Abbott and Co, v. Wolsey, 1859(2) Queen's Bench Division 97. At page 100 of the report, the Master of Rolls, while construing the Sale of Goods Act, held that once statute was passed to declare the law, the Court is bound by it and "can look to nothing else".
44. A few years later, the Court of Appeal in Bristol Tramways v. Fiat Motors Ltd., 1910 King's Bench (2)831, while construing Section 14 of the Sale of Goods Act, speaking through Cozens Hardy, Master of Rolls, held when there is an express statutory enactment that alone must be looked at and must alone govern the rights of the parties, even though the section may to some extent have altered the prior common law (page 836 of the report). In the instant case instead of common law, Section 22(2)(3) of the new Act has altered previous statutory law under Section 53 of the old Act.
45. The purpose and object of a consolidating statute was explained by the Privy Council in the case of Administrator General of Bengal v. Premlal Mallik, 22 Indian Appeal 107. In that case, the power of Hindu Executor to transfer the testator's estate came up for consideration and Section 31 of Administrator-Generals Act, 1874 fell for interpretation by the Court. Before the Privy Council, it was sought to be argued that while construing a consolidating statute each enactment must be traced to its original source and must be interpreted according to its circumstances, which existed when it first became law. Repealing the said submission. Lord Watson, speaking for the Judicial Committee of the Privy Council, held that the submission has neither reason nor authority to recommend it. "The very object of consolidation", explained the learned Judge, "is to collect the statutory law bearing upon the particular subject and to bring it down to date, in order that it may form a useful Code (page 116 of the report).
46. Many years thereafter the House of Lords in Farrell v. Alexander, 1976(2) All ER 721, speaking through Lord Wilberforce reiterated the same principle that in interpreting consolidating statute recourse to previous law is not necessary and the recourse "should only be had when there is a real and substantial difficulty or ambiguity which classical methods of construction cannot resolve" (page 726 of the report). Lord Simor of Glais dale also shared the same view and held that "the intention of Parliament as to the legal consequences ............. is to be collected from the Consolidation Act and not from the repealed enactments". The learned Judge also explained that it is not legitimate to construe the Consolidation Act as if its provisions are still contained in the repealed Act for two reasons - firstly, the Parliament has provided for abrogation of the previous law and secondly, such a construction would nullify much of the purpose of passing a Consolidation Act (page 733 of the report).
47. Following such consistent view, as referred to above, I am of the opinion that if provisions relating to legal proceedings under Section 53A of the old Act are applied to the facts of this case "much of the purpose" of the new Act would be nullified. Such an interpretation is opposed to fundamental canons of construction.
48. The dictum of Lord Herschell in Bank of England (supra) while construing a consolidating statute, was been expressly approved by the Hon'ble Supreme Court in Subba Rao v. I. T. Commissioner, , in which the Court was construing the provision of Income-tax Act, 1922, a consolidating and amending Act relating to Income-tax. The dictum of Lord Herschell which has been discussed above, has been quoted with approval in paragraph 10 at page 610 of the report.
49. In Sales Tax Officer, Banaras v. Kanhaiya Lal Makund Lal Saraf, , the Hon'ble Supreme Court was dealing
with the provisions of Section 72 of the Contract Act and in doing so, the learned Judges again approved the dictum of Lord Herschell in Bank of England in paragraph 17 of the judgment.
50. The learned Counsellor the respondent by relying on judgment of Justice Chitty in the decision 'In re Budgett Cooper v. Adams, reported in 1894(2) Chancery Division 557, argued that the dictum of Lord Herschell in Bank of England was rendered in construing the provision of a consolidating Act and the same cannot be relied on to interpret the provisions of a consolidating Act and the same cannot be relied on to interpret the provisions of a consolidating and amending law like the new Act.
51. This distinction cases to have any relevance in view of the judgments of Supreme Court referred to above where the Apex Court applied Lord Herschell's opinion in Bank of England which interpreting consolidating statutes in Subba Rao and other cases.
52. Apart from that the distinction by Justice Chitty has been criticised as obscure by Maxwell on Interpretation Statute, 11th Edition (see page 24) and as incorrect by G.P. Singh on Interpretation of Statutes, (7th Edition P. 251).
53. In D.C. Bhatia v. Union of India, reported in 1995(1) SCC 105, the Hon'ble Supreme Court was construing the provisions of partial but express repeal of Delhi Rent Control Act and while doing so the learned Judges took into consideration the judgment of Chief Justice Tindal in Ray v. Goodwin, 130 ER 1403. Chief Justice Tindal opined that the effect of repealing a statute is to obliterate it completely as if the law had never existed except for those actions, which were commenced, prosecuted, concluded while the repealed Act was an existing law. Following the views of Chief Justice Tindal, the Apex Court observed if anything has been acquired under the repealed Act that cannot be disturbed and but if any new step is needed to be taken, that cannot be taken under the repealed Act (para 53).
54. If we apply the aforesaid ratio to the facts of this case, it becomes clear that the registration certificate granted under the repealed Act is saved, but when the said certificate is impugned in a cancellation proceeding, it has to be defended against all the grounds of cancellation under the new Act. Similarly, when a suit has been filed by the appellant after coming into effect of the new Act, that suit must be governed by the provisions of the new Act and the respondents are entitled to raise its defence in accordance with Section 22(2)(3) of the new Act.
55. The provisions of Section 48(2) and Section 48(4) are very clear and a different intention in the new Act has been expressed in very clear terms. There is hardly any scope for interpreting it differently or imputing any intention to such clear works. The principles in this regard have been very succinctly summarised by Lord Atkin in Pakala Narayan Swami v. Emperor, reported in AIR 1939 Privy Council 47. The learned Judge said, "when the meaning of the words is plain it is not the duty of the Courts to busy themselves with supposed intentions" (page 51 of the report).
56. Following the aforesaid principles, this Court finds that in the instant case the respondent, while resisting the appellants' prayer for injunction, can raise the plea that the design in respect of which the appellants are claiming registration is not a new or original design as it has been published outside India. In support of such contention, the learned Counsel for the respondent has drawn the attention of this Court to paragraph 28 of the affidavit-in opposition filed before the learned Judge in opposition to the injunction petition of the appellant. In the said paragraph it has been very categorically stated that the roller in question, which churns out the subject design, was not specifically designed for the petitioner by any company. It has been stated that the said roller is easily available and the said roller is nothing but a commodity, which is available off the self. The Taiwanese Company Jin Hwa Machines Co. Ltd. is offering the said roller to all glass manufacturers including the respondent. It was also said that one Slam Pattern Glass Co. Ltd. of Thailand has been selling the said figured glass under the name "Victory" all over the world much before the date of registration of the impugned design by the petitioner. It has been categorically stated that the said design was neither new nor original on the date when the appellant applied for registration and it cannot be said that the said design was not published in any other country prior to the date of its registration. These categorical averments have been sought to be dealt with by the appellant in its reply in paragraph 8. However, the averment made in paragraph 28 that such a design was published by any other country of the world has not been denied and the appellant's denials to the specific case made out by the respondent in paragraph 28 of the opposition are very vague and evasive in nature. Apart from paragraph 28, in paragraph 35 of the opposition also the respondents categorically stated that the appellant is not the proprietor of the alleged design and nowhere in the plaint or in the injunction petition the appellant has described how it came to be proprietor of the said design. It was also stated that nowhere the appellant had alleged that the design was authored by any of its director or employees. Those averments in paragraph 35 have also not be properly refuted by the appellant.
57. The respondent also relied on its letter to Jin Hwa Machinery Co. Ltd. and its reply to the respondent that the roller is in existence for the last 15 years. The respondent also relied on the fact that it purchased in July, 2003 a similar roller from Dornbusch Gravuen GMBH, a German Company.
58. For the reasons discussed above and in view of the aforesaid factual position it is difficult for this Court to opine that the learned Judge of the First Court in the prima facie exercise of His Lordship's discretion acted erroneously by refusing the appellant's prayer for injunction. This Court does not find any reason to take a view different from the one which has been taken by the learned Judge of the First Court on a pruna facie consideration of the facts and law on the subject.
59. The views expressed by this Court in this judgment is also on the basis of a prima facie consideration of the facts and law, involved in this case and this Court makes it clear that the views expressed in this judgment will not bind the Controller when the cancellation proceeding will be heard by the Controller on merits.
60. The observation and findings in this judgment are confined for the purpose of deciding this interlocutory appeal.
61. For the reasons aforesaid, both the appeal and the applications are dismissed. The order of the learned Judge of the First Court is affirmed.
62. There will be no order as to costs.
63. Urgent xerox certified copy, if applied for, may be given expeditiously to the parties.
Soumitra Sen, J.
64. I agree.