Tootal Broadhurst Lee Company Ltd v Ahamed and Sons Ltd (Consolidated Civil Case Nos. 281 and 350 of 1950 (Mombasa)) [1951] EACA 340 (1 January 1951)

### ORIGINAL CIVIL

# Before de LESTANG, J.

# TOOTAL BROADHURST LEE COMPANY, LTD., Plaintiffs

#### ν

## ALIMAHOMED HAJI AHAMED and SONS, LTD., Defendants

Consolidated Civil Case Nos. 281 and 350 of 1950 (Mombasa)

Infringement of designs—Public documents—Section 74-77 and section 82 Evidence Act-Patents and Designs Acts, 1907-46-Registered Designs Act, 1949—Claim for damages or other equitable relief—Whether plaintiffs entitled to an account of profits.

The plaintiffs claimed an injunction, damages, and other reliefs for infringement of registered designs. They relied on a document bearing the seal of the Patent Office of Great Britain, purporting to be a copy of the certificate of registration of the design, together with a certificate bearing the seal of the Patent Office of Great Britain.

$Held$ (10-7-51).—(1) That the certificate of registration though a public document is not a document which can be inspected by any member of the public so as to bring it within section 76 Evidence Act. Furthermore the present certificate was not written at the foot of the copy as required by section $76.$

(2) The document is admissible under section 82 Evidence Act as such documents would be admissible in England to prove the registration of the designs to which they refer under section 24 of the Registered Designs Act and other Acts.

(3) Though the plaintiffs claimed damages they asked for "such other relief as may<br>be just and equitable" and the plaintiffs are therefore entitled to delivery up of the fabrics and to an account of profits for infringement of design by way of equitable relief.

### $R.$ P. Cleasby for plaintiff.

O'Brien Kelly for defendant.

JUDGMENT.-In these two suits (C. C. 281 and 350 of 1950) which have been consolidated, the plaintiffs seek to obtain an injunction, damages and other remedies for alleged infringements of certain registered designs by the defendants.

The first question for decision is whether the plaintiffs are the registered proprietors of the designs annexed to the plaint as exhibit A in both suits. The plaintiffs rely, as proof of the registration of each design in their name, on a document bearing the seal of the Patent Office of Great Britain and purporting to be a copy of the certificate of registration of the relevant design together with a certificate also bearing the seal of the Patent Office of Great Britain in the following form: $-$

## "No. 413032

I, the undersigned, being an officer authorized by the Board of Trade under section 48 (2) of the Registered Designs Act, 1949, hereby certify that the attached document and representation of a design are true copies respectively of the Certificate of Registration of Design No. 413032 and the copy of the Design annexed thereto, that the Design No. 413032 was registered under the Patents and Designs Acts, 1907 to 1946, in Class 13, as of the 20th November, 1947, in the name of Tootal Broadhurst Lee Company, Limited, of 56, Oxford Street, Manchester 1-address for service as above—and that a copyright of five years was granted.

WITNESS my hand this 19th day of March, 1951.

Sd. S. MITTON.

The Manchester Branch of the Designs Registry of the Patent Office.

51, Regent House, Cannon Street. Manchester. 4."

It is contended for the plaintiffs that this document is conclusive evidence of the registration of the designs in question under sections 74 to 77 Indian Evidence Act. On behalf of the defendants it is contended that the documents are not certified copies of public documents within the meaning of those sections of the Indian Evidence Act and that they prove nothing. Sections 74, 76 and 77 of the Indian Evidence Act read as follows: -

"74. The following documents are public documents: -

(1) Documents forming the acts or records of the acts—

$(i) \ldots$

$(ii)$ . . ., and

- (iii) of public officers, legislative, judicial and executive, whether of British India, or of any other part of His Majesty's dominions, or of a foreign country; - $(2) \ldots$

76. Every public officer having the custody of a public document, which any person has a right to inspect, shall give that person on demand a copy of it on payment of the legal fees therefor, together with a certificate written at the foot of such copy that it is a true copy of such document or part thereof, as the case may be, and such certificate shall be dated and subscribed by such officer with his name and his official title, and shall be sealed, whenever such officer is authorized by law to make use of a seal, and such copies so certified shall be called certified copies.

Explanation.-Any officer who, by the ordinary course of official duty, is authorized to deliver such copies, shall be deemed to have the custody of such documents within the meaning of this section.

77. Such certified copies may be produced in proof of the contents of the public documents or parts of the public documents of which they purport to be copies."

The documents on which the plaintiffs rely purport to be copies of the registration certificates issued in respect of each design by the Controller General of Patents and Designs under the authority of law. (Vide section 18 Registered Designs Act, 1949, which reproduces section 51 of the Patents and Designs Act, 1947.) It seems to me, therefore, that the certificate of registration being a document issued by authority of law by a public officer must necessarily be a public document. It is not, however, all public documents that can be proved by means of certified copies but only those "which any person has a right to inspect". There is no evidence before me and I can see nothing in the law to the effect that the Registrar of Designs keeps or is bound by law to keep a copy of every certificate of registration which he issues for inspection by the public. He has to keep a register in which he must enter certain prescribed particulars concerning every

registered design which is open to public inspection but I cannot see how a certificate of registration itself which can only be given to the proprietor of the registered design can be inspected by any member of the public. It seems to me, therefore, that a certificate of registration does not come within the category of public documents which can be proved by means of certified copies. There is another objection to the admissibility of the documents produced. It is one of form only but nonetheless valid for that. Section 76 Indian Evidence Act requires a certificate to be written at the foot of the copy and not on a separate sheet of paper as has been done here. In my view, therefore, the document on which the plaintiffs rely to prove their ownership of the designs are not admissible in evidence under sections 74 to 77 Indian Evidence Act. This, however, does not mean that they are not admissible at all as they may be admissible under some other provisions of the Indian Evidence Act and I think that they are under section 82 of that Act.

This section provides that—

"82. When any document is produced before any Court, purporting to be a document which, by the law in force for the time being in England or Ireland would be admissible in proof of any particular in any Court of Justice in England or Ireland, without proof of the seal or stamp or signature authenticating it, or of the judicial or official character claimed by the person by whom it purports to be signed, the Court shall presume that such seal, stamp or signature is genuine, and that the person signing it held, at the time when he signed it, the judicial or official character which he claims, and the document shall be admissible for the same purpose for which it would be admissible in England or Ireland."

For a document to be admissible under that section it is only necessary that it should be one which is admissible in England in proof of the fact which it is intended to establish without proof of authentication. If one examines the documents produced one will see that they are a combination of two things, viz., the first part of the documents purport to certify as true the copies of the certificates of registration attached to it while the latter part consists of a certificate that the designs in question were registered in the name of the plaintiffs under the Patent and Designs Act, 1907 to 1946, in class 13 on the dates therein stated and that a copyright of five years was granted. It seems to me without doubt that such documents would be admissible in England to prove the registration of the designs to which they refer under section 24 of the Registered Designs Act, 1949, and corresponding provisions of the prior acts repealed by that act. Section 24 provides that:-

(1) A certificate purporting to be signed by the registrar and certifying that any entry which he is authorized by or under this Act to make has or had not been made, or that any other thing which he is so authorized to do has or has not been done shall be prima facie evidence of the matters so certified.

(2) A copy of any entry in the register of designs or of any representation, specimen or document kept in the Patent Office or an extract from the register or any such document, purporting to be certified by the registrar and to be sealed with the seal of the Patent Office, shall be admitted in evidence without further proof and without production of the original."

It is true that this section requires that the certificate or copy of the register, etc. as the case may be should be signed and certified or merely certified and sealed by the registrar and it may be argued that as the documents in the present case have not been so certified and sealed they are not admissible under the provisions of this section. The answer is, in my view, quite simple. The Patent and Designs Office is a department of the Board of Trade and it is provided in the Patents and Designs Acts, 1907 to 1946, that any act prescribed to be done or authorized to be done by the registrar may be done by any officer authorized by the Board of Trade (vide section 62 (3) Patents and Designs Act, 1907) and any such authority given by the Board of Trade is preserved by virtue of section 48 (2) of the Registered Designs Act, 1949, so that any certificate or copy of any register signed by any person authorized by the Board of Trade and bearing the seal of the Patent Office has the same validity as if it were signed or certified by the registrar. I, therefore, answer the first question in the affirmative and hold that the plaintiffs are the owners of registered designs No. 413032 and No. 413422 as stated in the documents. produced.

The second question is whether there have been infringements of these designs by the defendants. The defendant company is affiliated to Khandwalla and Company, Limited, and is indeed known in business circles as Khandwalla Wholesale Department. In November, 1948, Khandwalla and Company purchased from the plaintiffs through their local agents Messrs, A. Gill and Company three lengths of 15 yards each of cotton fabric printed with the registered designs of the plaintiffs. One of the lengths was of Registered Design No. 413032 and two of Registered Design No. 413422 in different colours. Subsequently in 1950 the defendants were found to have imported and to be selling printed cotton fabric manufactured in Japan bearing designs resembling those of the plaintiffs. It is argued that the designs are not identical. To this I would say that it is only necessary to place the fabrics side by side to see that the designs are identical in every respect. The only differences which I can see are in the quality of the fabric and in the colour of the designs on the material. Indeed the designs are so alike that they are even of the same size and I find infringement clearly established.

I now come to the remedies claimed by the plaintiffs. There is no difficulty about any of the remedies claimed except the question of damages. On this question it is contended by Mr. Cleasby that the plaintiffs are entitled at their option either to damages representing the loss which they have sustained or to the profits realized by the defendants out of the infringement. It is contended by Mr. Kelly on behalf of the defendants that the plaintiffs have no such option and that they are merely entitled to damages sustained and that they are not entitled to an account of profits. He further contends that if they have such an option then they have elected for damages in their plaint and that they are not now entitled to an account of profits. Dealing with the last point first it is true that in their plaints the plaintiffs have in each suit claimed "damages in the sum of Sh. 20,000" but they have also asked "for such other relief as may be just and equitable" and not only was evidence led as to the profits which the defendants might have made on the sale of the infringing material but in his final address to the Court Mr. Cleasby definitely asked for an account of the profits. I do not think that the plaintiffs are debarred from this remedy merely because they have asked for damages in their plaints so long as they make it quite clear in the course of the proceedings that they are claiming one or the other and not both of these remedies. The other point, whether the remedy by way of account of profits is available in an infringement of design case was not fully argued at the hearing and I have received written arguments on this point from learned advocates on each side. I do not propose to analyse these arguments here as they are on the file and only wish to say that I fully agree with Mr. Cleasby's submission which is to the effect that the Courts when directing an account of profits in patent and allied cases were not acting in

pursuance of any statutory power but as Courts of equity exercising an equitable remedy. It is for this reason that orders for injunction and accounts of profits have been made in design cases although no statutory recognition has ever been given to the applicability of those remedies to infringements of designs as has been done in the case of patents. It is unnecessary for me to repeat here all the arguments put forward by Mr. Cleasby in support of this view and I will content myself in quoting a short extract from Patents for Inventions and the Registration of Industrial Designs by T. A. Blanco White, a very modern work which removes any doubt on this point. At page 248 there is a note 79 which reads as follows:—

"The latter remedy (an account of profits) originally available for both patents and designs in the ordinary Chancery practice, was abolished for patents only in 1919: section 60 has now restored it. It has rarely been asked for in recent years, probably mainly because pleadings have tended: to follow the Patent practice."

I, therefore, hold that the plaintiffs are entitled to an account of profits from the defendants.

The result is that there will be judgment for the plaintiffs for an injunction and for delivering up the offending fabrics as prayed for in paragraph $(a)$ and (b) of the plaint in each suit and for an account of the profits realized on the sale of the infringing fabrics and payment thereof to the plaintiffs by way of damages for the infringements.

The plaintiffs to have the costs of the suits