Ruma Pal, J:

The appellant manufacturers ball point pens. According to the appellant it has adopted specific designs with specific names for certain models of pens. In this appeal we are concerned with the pen which the appellant sells under the name "FIGHTER". According to the appellant this particular model has a special design which consists of several corrugations just above the tapering portion of the pen. The tapering portion is elongated. According to the appellant it sells this particular model in three distinctive colours namely silver green, silver blue and silver marron with a glossy finish which is distinctive and identified with the petitioner because of the wide advertisements. The design has been registered as Design No. 170654 by the Controller of Patents and Designs under the Designs Act, 1911. As far as the name "FIGHTER" is concerned, it does not appear on the pen but on the plastic pouch in which the pen is sold. According in the appellant it has applied for registration of the word "FIGHTER" and also for the artistic work as the word is written under the Trade and Merchandise Act 1958. The applicant says that the "FIGHTER" pens have been sold from February 1995. Each of the appellants pens is priced at Rs. 14/-. Sales of "FIGHTER" have increased from 2.20 lakhs in 1995-96 to 551.11 lakhs in 1996-97 and in the year 1997-98 (up to 30th September 1997) the turnover was 222.83 lakhs. for advertising this particular design alone, according to the appellant, it has spent 217.74 lakhs by way of advertisement expenses in the year 1996-97 and 74.86 lakhs for the year 1997-98 upto 30th September 1997.

According to the appellant it came to know in October 1997 that the respondent has been marketing ball point pens using an identical configuration and design in colours similar to the appellant under the mark "WRITER". According to the appellant the respondent was selling its "Writer" pens at Rs. 5/- per piece. The appellant has stated that the respondents pens are of poor quality.

The appellant filed the suit in November, 1997 against the respondent by which the appellant has sought to restrain the respondents from selling "WRITER" pens on the basis that the registered design was being infringed under the Design Act and on the ground of passing off. It has claimed inter alia a permanent injunction to restrain the respondent from infringing the registered design or from passing off its products as those of the appellant and for a decree for Rs. 50 lakhs on account of damages.

An application was moved by the appellant on 10.11.97 for inter-locutory relief by way of injunction against the respondent from using the appellants design and from passing off its products as those of the appellant. No interim order was passed by the learned Single Judge but short directions were given for filing of affidavits. The appellant preferred an appeal in December 1997 against the refusal of the learned Single Judge to pass any interim order (referred to as the first appeal). A stay application was moved in the first appeal. An interim order was passed on 6.12.97 by the Appeal court to the following effect:

"The respondent would be at liberty to carry on the manufacture of the ball point pen in the normal course of events but the respondent shall maintain a separate account until further order of this Court. Accounts shall also be maintained for ball point pens on hand/in circulation".

On 16th February 1998 the first appeal was disposed of as the appeal had been preferred against refusal to grant an ad interim order and since the interlocutory application was appearing in the list of the Single Judge, the Appeal Court was of the opinion that the matter before the learned Single Judge should be disposed of. It directed that the interim order dated 6.12.97 would continue until the disposal of the application by the Single Judge which would not however prevent the Single Judge from deciding the case on merits.

The appellants interlocutory application was ultimately disposed of by the learned Single Judge by directing the respondent to keep separate accounts in respect of the sales with regard to the design of the appellant and to furnish monthly account to the advocate on record of the appellant. Directions were also given for the hearing of the suit. No reason was given by the learned Single Judge for passing the interim order he did except to state that it was in the interest of justice to do so.

The appellant has appealed from this order. A stay application was filed on which affidavits were filed by the parties in opposition. We were of the view that having regard to the nature of disputes and in order to avoid duplication of arguments, the appeal itself should be speedily fixed for hearing and disposed after filing of informal paper books including all papers used in the court below. The appeal was argued and written notes of argument have also been submitted. It is recorded at this stage that on the second day of hearing the respondent sought to rely on documents which were not on record either before the Trial Court or before this Court. The respondent indicated that the documents which were sought to be brought on record related to the publication of the design in India prior to the registration granted to the appellant. As there was no application made under Order 41 Rule 27 of the Code and as the matter had been specifically fixed for hearing as an appeal and since we were prima facie satisfied that the documents should not be allowed to be brought on record at such a late stage, we did not adjourn the hearing of the appeal as sought for by the respondent.

The appellant has claimed before us that it is entitled to an order of injunction under the Designs Act, 1911 and also by virtue of the wrongful passing off by the respondent.

The respondent has not disputed that the appellants design has been registered under the Designs Act. According to the respondent there was no infringement because the refill was different, the diameters of the two pens were different, there was a difference in the weights of pens as well as in the packing. According to the respondent it sold its pens in sets of ten whereas the appellant sold its pen singly It is also said that plastic granule used for making the body of the respondents ball pen was of inferior quality to the quality used by the appellant which the visible.

According to the respondent the name "WESCO WRITER" was printed on its pens and that it was economically priced to meet the requirement of the Students/middle class. It is also said the "WRITER" pens were manufactured in five colours. It is denied that there was any likelihood of the students being misguided by the get up, design or colour particularly when the respondents sold its pens at 1/3rd of the cost of the appellant. It is also said that the respondent manufactured its product "for the past several years."

The respondent has further submitted that as far as registration of the appellants designs is concerned, it is vague and therefore the registration was invalid. It is also claimed that a registered design should be construed on a weaker footing in comparison to that of the registered owner of a trade mark or patent because both the Trade and Merchandise Act, 1958 and the Patents Act, 1970 contained specific provisions for advertisement and opposition before registration unlike the Designs Act, 1911. It is also said that in any event, the registration was liable to be cancelled as there was no novelty or originality in the designs. According to the respondent the design had been inspired by the original design of ROTRING, a German Concern. It is stated that several other manufacturers of ball pens have also "copied the same design after making some minor changes to avoid action if any, taken by the foreign manufacturer". Finally it is submitted that the appellants design was in any event of recent origin and that there was a serious challenge to the appellants design. In fact on 23rd December, 1997 the respondent had filed an application in this Court for cancellation of the registered design under the Designs Act. The application was pending. It is submitted that in the circumstances no injunction should be granted. The respondents have relied on the following decisions.

1) M/s. Niky Tasha India Pvt. Ltd. v/s. Faridabad Gas Gadgets Pvt. Ltd. : AIR 1985 (Delhi) 136 (DB) para 12;

2) M/s. Domestic Appliances & Ors. v/s. M/s. Globe Super Parts: 1981 PTC 239 (Delhi) at 242;

3) Amp Inc. v/s. Utilux Proprietary Ltd. (1972) 89 RPC 103 at 111 (HL);

4) Kestos Ld. v/s. Kempat Ld. : (1936) 53 RPC 139 at 152.

On the question of passing off it is said that no specific instance of confusion or deception had been cited by the appellant and it is said that the trademark "WRITER" had been used by the respondent before the appellant started selling its product under the name "FIGHTER".

The submissions of the parties with regard to the right of the appellant as the owner of the registered design under the Designs Act, 1911 and the right if any of the appellant on the basis of passing off are considered separately.

Before considering the respective submissions of the parties on the questions of the appellants right to protection under the Designs Act, 1911 it is necessary to consider the relevant provisions of the Designs Act, 1911, the Designs Rules, 1933 setting out inter alia the procedure for registration of designs (referred to as the Rules) as well as the corresponding provisions of the English Statute on which the cases cited by the respondents are based.

A design has been defined in the 1911 Act under S 2(5) as meaning

"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 (43 of 1958) or property mark as defined in Section 479 of the Indian Penal Code."

Section 43(1) of the Act requires that an application for registration of a design must be made to the Controller General of Patents, Designs and Trade marks by a person "claiming to be a proprietor of any new or original design not previously published in India". The application is required to be made in the form prescribed in Rules 35 to 38. The Controller may reject the application if he thinks fit under Section 43(4) read with Rules 39 and 40 in which event the applicant has the right to appeal to the Central Government. But if the Controller is satisfied and sees no grounds for rejection, he may register the design. Under Section 43(6) a design when registered shall be registered as of the date of the application for registration. Once a design is registered a certificate as granted by the Controller under section 45 which, under Section 71 "shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone."

Under Section 47(1) "the registered proprietor of the design shall, subject to the provisions of the Act, have copyright in the design during five years from the date of registration" `Copyright has been defined in S. 2(4) of the Act as "the exclusive right to apply to any article in any class in which the design is registered."

Section 53 provides for the protection of the exclusive right of the proprietor of the registered design in the following terms --

"53. Piracy of registered designs,--(1) During the existence of copyright in any design it shall not be lawful for any person--

(a) For the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(aa) To import for the purpose of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or

(b) Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

(2) If any person acts in contravention of this section, he shall be liable for every contravention --

(a) To pay to the registered proprietor of the design a sum not exceeding five hundred rupees recoverable as a contract debt, or

(b) If the proprietor elects to bring a suit for recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly.

Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed one thousand rupees.

(3) When the Court makes a decree in a suit under sub- section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs."

On the request of any person whether thee is a copyright in respect of the design the Controller is obliged under section 51 to inform the person whether the registration exists, the class of goods, the date of registration and the name and address of the registered proprietor. Any person interested can also present a petition for cancellation of registration under Section 51A.

Section 51A(1) provides :-

"51A. Cancellation of Registration:- (1) any person interested may present a petition for 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 India; or

(ii) that it has been published in India 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-clause (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."

The respondent has made an application before the High Court under this Section (being AIR No. 11 of 1997).

As far as the United Kingdom is concerned, the law relating to designs was enacted in the Patents & Designs & Trademark Act, 1883. This was amended by the Patent & Designs & Trademark (Amendment) Act, 1885 and subsequently repealed and replaced by the Patents, Designs & Trademarks Act, 1888 which was in turn repealed by the Patent & Design Act, 1907. The statute now covering the field in the United Kingdom is the Registered Designs Act, 1949.

For the purpose of this case, the first obvious difference between the Indian Designs Act and the English Statute is the absence of a provision in the latter of a provision similar to Section 53 of the Designs Act which gives a statutory right to an owner of a registered design to sue for protection of his exclusive user. The second difference is that under the English Statute unintentional infringement is a complete defence to damages under section 9.

"(a) Exemption of innocent infringe from liability for damages

(1) In proceedings for infringement of copyright in a registered design damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered, and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the marking of an article with the word `registered or any abbreviation thereof, or any word or words expressing or implying that the design applied to the articles has been registered, unless the number of the design accompanied the word or words or the abbreviation in question.

(2) Nothing in this section shall affect the power of the Court to grant an injunction in any proceedings for infringement of copyright in a registered design."

Therefore the fact that the design may have been recently registered would be a relevant consideration for a Judge in the United Kingdom as it would be supportive of a lack of knowledge in the infringers. There being no such corresponding provision under the Designs Act, in terms of our statute the right of a proprietor of a registered design under Section 53 to damages is not defeated by showing that the infringement was unintentional. In India the recentness of the registration would not therefore be at all a material consideration.

The third difference lies in the concept of compulsory licensing, Under Section 53 of the Designs Act, 1911 as action for infringement does not lie against a person who uses the design with the consent or licence of the registered owner. However, in the United Kingdom the Registrar may grant a licence to any person to use a registered design. Section 10 of the English Act allows this.

10. Compulsory licence in respect of registered design.

(1) At any time after a design has been registered any person interested may apply to the Registrar of grant of a compulsory licence in respect of the design on the ground that the design is not applied in the United Kingdom by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case; and the Registrar may make such order on the application as he thinks fit".

Finally, and most importantly, is the fact that in this country under Section 53, the proprietor is entitled to file a suit for the relief of damages and injunction for protection of the registered design and a person desiring cancellation of the registration has to apply for it by an independent application under Section 51A. This is not an application in the suit for infringement. Therefore in the proprietors suit, the Court cannot direct cancellation of the registration of his design.

In India the Designs Act, 1911 originally dealt not only with designs but with patents as well. In 1970 the law relating to patents was re-enacted in the form of the Patents Act, 1970 and the sections in the Designs Act which related to patents were repealed. The legislature has not thought it fit to either re- enact or otherwise amend the law pertaining to designs as originally enacted.

Section 64 of the Patents, Act, 1970 statutorily allows the issue of invalidity to be raised by way of a counter claim in a suit for infringement. There is no corresponding statutory provision in the Designs Act. It follows that in the Designs Act, 1911 the power of the Court to go into the invalidity of the registration is limited to S. 51A. The lacuna, if any, in the Designs Act, is to be considered by Parliament and is not one which can be filled in by incorporating the provisions of the Patents Act by a process of judicial interpretation.

In the United Kingdom, on the other hand, Order 04 Rule 18 of the Rules of the Supreme Court allows the Court to do just this and to consider a plea of invalidity of the registration raised by the defendant in a suit by the owner for infringement.

"Counterclaim for rectification of register of designs (O. 104, R.18)

18 - (1) Where in any proceedings a claim is made for relief for infringement of the copyright in a registered design, the party against whom the claim is made may in his defence put in issue the validity of the registration of that design or may counterclaim for an order that the register of designs be rectified by cancelling or varying the registration or may do both those things."

In addition to this right of defence, the "infringer" in the United Kingdom also has the right to protect himself by suing the owner of the registered design as a preemptive measure to in effect restrain the owner from bringing an action for infringement by showing that the registration is invalid.

Section 26 of the English Statute thus provides :

"26. Remedy for groundless threats of infringement proceedings

(1) Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisement or otherwise threatens any other person with proceedings for infringement of the copyright in a registered design any person aggrieved thereby may bring an action against him for any such relief as in mentioned in the next following sub-section.

(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following, that is to say :-

(a) a declaration to the effect that the threats are unjustifiable,

(b) an injunction against the continuance of the threats, and

(c) such damages, if any, as he has sustained thereby".

In the United Kingdom, therefore before taking any decision in a suit for infringement of design the Courts unlike their Indian counter-parts can take into consideration a challenge to the invalidity of the registration.

Seen from this perspective it is clear that the Courts in India, while deciding the right to relief, whether temporary or final in a suit under Section 53, cannot import the reasoning in the decisions rendered by the English Courts to the issues involved.

It follows from this that in India the only question before the Court in a suit by the registered owner is whether the design is registered in fact an whether there is any infringement of the design. The Courts in such a suit are precluded by the Statute from considering the validity of the registration. But the effect of a decision of the Court in such a suit would necessarily be subject to any finding on an application under Section 51A that the registration is invalid [See : M/s. Domestic Appliances & Ors. V/s. M/s. Globe Super Paints 1981 PTC 239 (Del)].

The decision which is the sheet-anchor of the respondents case before us is that of the Division Bench of the Delhi High Court in M/s. Nicky Tasha India Private Limited Vs. M/s. Faridabad Gas Gadgets Pvt. Ltd. AIR 1985 Del 136 [LQ/DelHC/1984/131] . The Learned Judges relying on decisions and authorities on the English statute held:

"So far as the question of injunction is concerned, the law in India and English is the same. In the English Registered Designs Act, 1949 there is a provision for grant of injunction under S. 26 and for cancellation of registration in S. 11 of the Act" and referring to Section 26 of the English Statute that "It is misreading of the English Act to say that it has no provision analogous to S. 53 of the Indian Act."

With respect, we cannot hold this. Section 53 of the Designs Act cannot be equated with S. 26 of the English Statute. The subject-matter, object, and scope of both the sections are wholly disparate. The first protects the absolute rights of exclusive user of the registered design, the second is destructive of that right.

The Division Bench went on to say :

"The Court will not grant an interlocutory injunction, ..... when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made. ..... Every ground on which a registered design may be cancelled under the Act should be available by way of defence to a suit for infringement. It will be odd to hold that on the strength of a recent registered design, the plaintiff can claim an absolute right to restrain everyone else from carrying on his business unless and until the registered design of the plaintiff is cancelled in appropriate proceedings by a competent court of law."

We cannot see how this follows on an interpretation of the provisions of the Designs Act, 1911 at all. It would appear that the Division Bench overlooked the differences between the Indian and English Statutes and applied principles pertaining to provisions in the latter which are absent in the former.

Under the scheme of the Designs Act, 1911, as it stands the pendency of an application under Section 51A for cancellation can have no bearing on the consideration of an action under Section 53. It makes no difference that the application under Section 51A is pending before the same High Court. That might be a fortuitous circumstances. The suit for infringement need not necessarily be in the Court in which the application under Section 51A is filed. The court entertaining such a suit cannot prejudge or encroach upon the jurisdiction of the Court before which the application under Section 51A is pending.

In holding as it did, the Division Bench in Nicky Tashas case upset the view expressed by two Learned Judges of the same High Court sitting singly in Sat Pal Singh vs. S.P. Engineering Works : 1982 PTC 193 and in Tobu Enterprises Pvt. Ltd. Vs. Joginder Metal Works: ILR (1983) 1 [LQ/KerHC/1982/139] Del 451.

For the reasons stated we are unable to agree with the view expressed by the Bench in Nicky Tasha case (Supra). The other Indian decision relied on by the respondent viz. M/s. Domestic Appliances vs. Globe Super Parts (Supra) merely followed the reasoning in Nicky Tashas case and is unacceptable for the same reasons. The law, in our view was correctly stated by Prakash Narain, J. in Sat Pal Singh vs. S.P. Engineering Works (Supra) when he said that:

"the English precedents are not of much help in our country. The Scheme of our Act is different from the Scheme of the English Statute. Apart from everything else in the Indian Act there is a provision, S. 53(2) which is not found in the English Act at all. Nor is there any provision, similar to it in the English Act of 1949. The relief of injunction is not one of the reliefs which have been statutorily recognised in England and the absence of such a provision, which is found in the Indian Statute, will naturally condition the observation Learned Judges in English Courts.

We also agree with H.L. Anand, Js view expressed in Tobu Enterprises Pvt. Ltd. Vs. Joginder Metal Works (supra) when he said that:

"the defence of invalidity of the registration of the design on any of the grounds which may justify cancellation of registration are not open to a defendant in a suit for infringement without resort to proceedings for cancellation of registration under Section 51A of the Act."

The decision in Nicky Tashas case was considered, albeit at an interim stage, by a Division Bench of this Court in an unreported judgment in Priya Food Products Limited vs. Sona Biscuits (P) Ltd. (Appeal No. 766 of 1997, judgment dated 22.12.97) and this is what was said :

Section 53A of the Designs Act, 1911 categorically provides that during the existence of copyright in any design it shall not be lawful for any person for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor or to do anything with a view to enable the design to be so applied. The heading of Section ought also to be noticed and the same reads, `piracy of registered design and sub-section (2) of Section 53 provides that if any person acts in contravention of this section, he shall be liable for every contravention to pay the registered proprietor of the design a sum not exceeding five hundred rupees recoverable as a contract debt or if the proprietor elects to bring a suit for recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly.

From the factual score it further appears that there is in fact an application for cancellation of the design pending in this Court but without however there being any order passed thereon. Be it also noted that this application has been filed after initiation of the suit in this Court. The registered design gives some amount of protection and there cannot be any denial with regard thereto and the Statute is clear and categorical on the score. The registered holder has a copyright in the design and in terms of Section 53, no one has the authority to act contrary to, or pirate the design which stands registered with the Registrar.

Mr. Chakraborty further relied on Section 51A of the Act as regards the cancellation of the registration and submitted that by reason of the fact that his client has already applied for cancellation, question of having a right of injunction does not and cannot arise and the learned Trial Judge had rightly decided the matter on the application stage without granting any interim order.

Admittedly the application for cancellation is pending and there has not been any order on the application. Till such time the cancellation of registration takes place, the design registered has some value and Section 53 comes into operation and lends assistance to the registered holder."

We see no reason to differ with the view expressed."

We would also like to point out that at this stage my decision in Castrol India Limited vs. Tide Water Co. (I) Ltd. : 1996 PTC 16 did not turn on the fact that no application had been made for cancellation of the registration and any observation in that judgement which suggests that the Courts in a suit for infringement under Section 53 can go into the question of validity of registration of the design must be held to be erroneous.

Therefore insofar as the respondents defence relates to the invalidity of appellants registration either on the ground of vagueness, lack of originality or pre-publication, they are outside the purview of the Courts consideration in this proceeding. The only question is -- is there a prima facie case of infringement.

In this case the appellant applied for registration of its designs on 31.1.96. Although the certificate of registration was issued in November, 1997, by virtue of section 43(6) the design was registered with effect from 31.1.96. The novelty claimed was in respect of the `shape and configuration. The statement must be read with reference to the illustrations of the product which shows the corrugations and elongated portion above the nib and in terms of S. 2(5) we have to judge the similarity solely by eye- appeal.

On a visual comparison of the respondents and the appellants product it appears to us that the design adopted by the respondent is virtually identical with the appellants design. The differences which the respondents sought to point out in its affidavit-in-opposition before the Trial Court do not appear to be relevant to the question of similarity in design. It is true that the respondent produces its pens in five colours and of these five colours only three colours are similar to the colours used by he appellant on its pens, but all have the same glossy finish. It is not necessary for the purpose of considering an allegation of infringement of a design to decide whether the purchasers are likely to be deceived. As said in Castrol India Limited (Supra):

"It [is not] necessary to break the articles down into integers for descriptive purposes but in the ultimate result it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered......

The test of deceptive similarity would be appropriate where the petitioner pleads passing off. But in cases of infringement of design the question is not whether the similarity has or [is] likely to cause confusion or deception of a purchaser but whether the similarity is an imitation of the registered design sufficient to destroy the exclusive right of user of the proprietor despite the fact that no confusion is or may be caused as to the source of the goods. Otherwise every registered design could be imitated with impunity merely by changing the colour of the two products thus obviating any confusion. In my view the respondents have so imitated the petitioners design as to deprive the petitioner of the protection under the Statute."

We have no hesitation in holding at least prima facie, that the designs of the respondents pens are imitations of the appellants registered design and constitute infringements of the copyright in it. Where there is infringement of a copyright, an injunction should normally be granted as a matter of course as damages would not be an adequate remedy (See : Penguin Books Ltd., England vs. India Book Distributors : AIR 1985 Del. 29 [LQ/DelHC/1984/317] ; also Castrol India vs. Tide Water Oil (Supra). This principle should all the more be applicable to a suit under Section 53 which limits the damages to Rs. 1000/- only.

There is no substance in the submission of the respondent that Section 53 give the Court the power only to pass a decree for permanent injunction but not a temporary injunction. If the Court has the power to grant the ultimate relief of a permanent injunction, it cannot be denied the power to grant the lesser relief of a temporary injunction.

Besides under Chapter 38 Part XIIB of the High Court Rules applicable to the Original Side of this Court, the practice and procedure of the Court and the provisions of the Code of Civil Procedure so far as applicable have been made applicable to all proceedings under the Designs Act. The power to grant interim relief is therefore available under Order 39 of the Code.

Although in view of our findings it is unnecessary to consider the issue of passing off we deal with the issue briefly. The appellant has given some proof of advertisement of its product: "fighter" pens. It has thereby gained some reputation with regard to the product which it is entitled to protect. The question of actual deception is not necessary. It is the likelihood of deception. The similarity in the two products is evident. Admittedly, the quality of the respondents pen is inferior to that of the appellants and it is selling at a lower price. While the respondent has provided some evidence that it sold pens under the mark "WRITER", no evidence was produced before the Trial Court that it used the name "WRITER" on pens with the design similar to the appellants registered design. The words "fighter" and "Writer" are sufficiently similar to cause confusion, particularly when used in connection with visually similar products.

As opposed to the possible loss of the appellants goodwill/reputation in its product, no such damages would be suffered by the respondent as cannot be compensated in damages if the appellants suit is ultimately dismissed. It is on record that the respondent sells ball pens with different get ups under different names, such as Bozo, Solo, Sento, Perform, Corner and Royal. The appellant is said to have made a complaint to the Chief Metropolitan Magistrate, Calcutta under Section 63 of the Copyright Act and under Sections 420/481/483/484/485/486/487/120B of the Indian Penal Code. According to the respondent on the basis of such complaint the enforcement Directorate arrested one of the employees of the respondent on 12th November 1997. It is said that the employee has since been granted bail.

The appellant has alleged that because of this the Calcutta Pen Manufacturers & Dealers Association of which the respondent is a member, have called for a boycott of all the appellants products during the pendency of these proceedings. Neither of these actions affect the merits of the case before us.

But to have directed the respondent only to furnish accounts to the appellant of its sales in the circumstances was no protection against the infringement of copyright in the design at all. Incidentally, according to the appellant no accounts have in fact been furnished by the respondent to the appellant despite the order of Court. This has not been disputed by the respondent. We accordingly allow the appeal and set aside the impugned order and restrain the respondent whether by itself, by its employees, servants, agents, representatives and dealers or otherwise howsoever from using on any of its pens the design registered under No. 170654 or any get-up, design or colour which resembles the said registered design No. 170654; from using the design in connection with the registered design No. 170654 the trademark "WRITER" or any other design and/or trademark deceptively similar thereto. There will be no order as to costs.