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[ JUDGMENT AND ORDER IMPUGNED Learned Judge passed the order impugned on October 9, 2013 by vacating the earlier interim order passed ex-parte and gave directions for filing of affidavits. We are told, the application is still pending and awaiting its logical conclusion.

RIVAL CONTENTIONS Mr. Rudraman Bhattacharya, learned counsel would base his argument wholly relying on a Full Bench decision of the Delhi High Court in the case of Micolube India Limited Vs. Rakesh Kumar & Ors. reported in 2013 (55) Patent and Trade Mark Cases Page-1 wherein the judgment per majority held, the suit for infringement of a design would also lie against another registered holder. The relevant paragraph is quoted below:

Per contra, Mr. Abhrajit Mitra, learned counsel appearing for Aryan Appliances would contend, Kent R-O systems Limited did not make A.N. Polymer Pvt. Ltd. a party defendant Aryan Appliances used to purchase case manufactured by A.N. Polymer Pvt. Ltd. the registered design holder, and use it for marketing whole product after assembling that could not be said to be an infringement of the mark by Aryan Appliances. Aryan Appliances was not the manufacturer. They use cases manufactured by A.N. Polymer Pvt. Ltd. He would rely upon Section 22(3) of the Designs Act and Rule 22 framed there under, to contend, the suit in absence of A.N. Polymer Pvt. Ltd. was not maintainable and in any event, complete procedure was prescribed in law and any suit, if filed, could be defended by taking the plea that an alternative procedure had been provided for under Section 19 for cancellation of the design. According to him, even if the suit was held to be maintainable Aryan Appliances was entitled to take the plea of alternative remedy. He would rely upon the minority view in the case of Micolube India Ltd. Vs. Rakesh Kumar & Ors.(supra) as expressed in paragraph 133 and contend, the same would be the correct view. The relevant extract is quoted below:

THE LAW ON THE SUBJECT Both parties would heavily rely on Micolube (supra), Kent R-O systems Limited would rely upon majority view whereas Aryan Appliances would rely upon the minority one. The judgment per majority, would permit a suit to maintain for infringement of design as "any person" provided in Section 22 of the Designs Act would not exclude a subsequent registrant in absence of any qualification. The comprehensive suit for infringement as well as passing off would not lie. The minority view would, however, be otherwise. According to His lordship, a holder of a registered design was not entitled to sue another registrant. The remedy of passing off in the nature of protection so far as the shape of the article, however, was not available under the Designs Act. meaning thereby , there could not be any monopoly in a design, at least in a passing off action. Section 22 of the Designs Act would talk about piracy of a registered design, if taken as a whole, would protect the registered design from being copied by any person. If we closely look to the section particularly Sub-Section 3, we would find that in such an action the defendant would be entitled to contest such proceeding by taking such defence that might cancel the registration of the plaintiff under Section 19. Section 19 would permit any person interested in a design to pray for cancellation of the registration of a design on the grounds mentioned in the application. If we take section 19 and 22 together it would be difficult for us to support the majority view, rather the minority view was more appealing. The matter may be viewed from another angle. If an action is brought under Section 22 the defendant would be entitled to defend the same on the analogy of Section 19. So a registered user is only permitted to pray for cancellation of another registration if he feels, the other registration would jeopardize his design that he is entitled to protect by dint of registration of the same. With all humility, we are unable to agree with the full Bench decision that would otherwise have a persuasive value on us. Sitting in Division Bench, we are unable to agree with the view expressed by the said decision, per majority.