Judgment : Ashim Kumar Banerjee, J. FACTS From the pleadings and rival contentions the admitted position that we arrive at, would be, as stated hereinafter. Kent R-O systems Limited the appellant, would claim to be well known in the field of water purifier. They are engaged in manufacture of water purifier as per the design duly registered and certified by the appropriate authority. The Patent Office of the Government of India would certify the design that we find from the photograph and the equipment produced in Court. The certificate would appear at pages 26-32 of the paper book. The respondents would claim to be also dealing with the business of water purifier. They would buy components as well as case from the market and assemble it in their workshop that they would mark in the name of Aryan Appliances. The subject controversy would relate to the case used by Aryan Appliances that is almost identical with that of Kent R-O systems Limited. The appellant Kent R-O systems Limited would claim, they are registered in class 23-01 whereas Aryan Appliances would also claim, they are permitted user of the case from A.N. Polymer Pvt. Ltd. the registered mark holder under the same class. They would rely upon the patent certificate of A.N. Polymer Pvt. Ltd. appearing at pages 46-52 coupled with a letter of Authority from A.N. Polymer Pvt. Ltd. dated October 06, 2013, copy of which was produced in Court during hearing. We are told, Kent R-O Systems Limited filed the suit against Aryan Appliances, they would claim, they did not know about the A.N. Polymer Pvt. Ltd.. Hence, they could not make them party, however, despite having knowledge Kent R-O Systems Limited up till date did not make any application for amendment bringing A.N. Polymer Pvt. Ltd. into controversy. Kent R-O Systems Limited also did not file any application for cancellation of the registration of A.N. Polymer Pvt. Ltd.. They would insist upon an order of injunction restraining Aryan Appliances in using the design and marketing or selling similar product. Learned Judge did not feel inclined hence, this appeal. [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. Learned Judge did not feel inclined hence, this appeal. [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: “i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design. The expression “any person” found in Section 22 of the Designs Act would not exclude a subsequent registrantas, according to us, no such words of limitation are found in said Section. ii) The plaintiff would be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding. The argument that such a suit could be instituted only after the expiry of the statutory period provided under Section 11 of the Designs Act, does not find favour with us. This is for the reason that in a given fact situation the plaintiff may have commenced the use of the design as a trademark after its registration. While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in Clause © of Section 2 of the Copyright Act the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act. (ii) (a) In this context we must note the argument of Ms. Singh, learned amicus, that passing off action may perhaps be maintainable provided the mark has attained secondary meaning. (ii) (a) In this context we must note the argument of Ms. Singh, learned amicus, that passing off action may perhaps be maintainable provided the mark has attained secondary meaning. In our opinion, the issue before us is limited to whether a remedy by way of passing off action would be available qua a registered design used as a trademark by the plaintiff- we are not inclined to comment on the quality of evidence which may be required, if at all, to be produced by the plaintiff to prove whether the mark has acquired the necessary secondary distinctive meaning, for him to secure success, in the action instituted in that behalf. (iii) We are also of the view that a composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the Court in this matter would necessarily be paramount.” Mr. Bhattacharya would submit, Aryan Appliances is not the registered holder hence, the learned Judge could not have vacated the interim order. Even if Aryan Appliances was authorized to use the design purported to be registered in favour of A.N. Polymer Pvt. Ltd., Kent R-O systems Limited was entitled to an order of injunction as it would amount to infringement of the registered design of Kent R-O systems Limited that was admittedly the prior user of the mark having registration much prior in time. Pertinent to note, Patent certificate of Kent R-O systems Limited was dated September 23, 2009 whereas A.N. Polymer Pvt. Ltd. would have registration on February 3, 2012. 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. 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: “I shall now sum up my answers to the questions under the reference in the following manner: a) A suit by the registered proprietor of Design for infringement of the registered design is not maintainable against another registered proprietor under the Designs Act, 2000 in so far as the registration cvers the same features of the shape and configuration of the same article under the Design. B) The remedy of passing off in so far as it relates to claim of protection for shape of articles is not available for the purposes of enforcement of rights and remedies under the Designs Act. The said remedy is clearly absent under the Designs Act considering the avowed objective of the Act of 2000 which is to provide limited protection with no unnecessary extension. C) The remedy of passing off in so far as it relates to claim of protection for shape of articles cannot be joined with the suit for infringement of the registered Design. The said remedy of the passing off is available in alternative to the statutory protection conferred by the Design right. For the purposes of the same, the suitor has to elect between the two inconsistent rights and remedies having distinct objects and policies. The said remedy of the passing off is available in alternative to the statutory protection conferred by the Design right. For the purposes of the same, the suitor has to elect between the two inconsistent rights and remedies having distinct objects and policies. Additional legal points determined A) Notwithstanding the above said conclusion in (b) and (c), the remedy of passing of would continue to be available along with the infringement of registered designs and can be joined with the same in order to prevent consumer confusion which may be caused by the use of trade mark, get up, trade dress or in any other manner excepting the shape of the goods which is or was forming the subject matter of the registration of the Design. B) The remedy of the passing off in so far as the shape of the article is concerned shall also be available even during currency of the design monopoly or even after the expiry of same to the extent that the claim of the feature of the shape is not covered within the novelty claim under the Design monopoly rights and the said claim of the protection qualifies all the necessary ingredients of the Trade Mark. C) A remedy of passing off in so far as the shape of the article is concerned shall not be available even after the expiry of the Design to the extent the said feature of the shape of the article is covered within the novelty claim as made under the Design Right as after expiration of the Design, the novel shape claimed under the Design Act goes in public domain.” He would also rely upon the Single Bench decision of the Madras High Court in the case of Hi-Tech Carbons & Engg. Pvt. Ltd., vs. M & K Technologies, Chennai reported in Madras Law Journal (2008)3 page- 604 to support his contention. Mr. Bhattacharjee while giving reply, would contend, assuming A.N. Polymer Pvt. Ltd. was a prior user, they should have raised objection when 2009 registration was granted to Kent R-O systems Limited. He would strenuously deny the assertion of Kent R-O systems Limited on prior use and reiterate what he had submitted earlier. 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. He would strenuously deny the assertion of Kent R-O systems Limited on prior use and reiterate what he had submitted earlier. 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. 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. We have scrutinized the pleadings. The appellant/plaintiff would contend, they invested huge sum to market their product. They are having registration of the design that the respondent copied , they were getting unfair advantage. They also copied the skill and technology used by Kent R-O systems Limited. Hence, Kent were entitled to an order of injunction restraining the respondent from selling their product and a special officer to remove all the products marketed by Aryan Appliances. As observed earlier, the shape per se could not be claimed as novel. Plaintiff is having the registration for the design used whereas the defendant was permitted by the authorized user to use the product manufactured by the authorized user. There is no evidence as on date revealed to the extent, the defendant copied the technology. The plaintiff, despite being informed about the registration of A.N. Polymer Pvt. Ltd., neither made A.N. Polymer Pvt. Ltd. a party to the suit nor approached the appropriate forum for cancellation of their registration. Learned Judge rightly vacated the ad interim order passed ex parte that would not call for any interference at our level. We expedite the hearing of the suit. The defendants are duly represented; they would file their written statement, if not filed earlier, within four weeks from date. Discovery of additional documents by the parties, if any, within two weeks thereafter. The parties are given liberty to approach the learned Judge taking suits ,to fix an early date of hearing. Learned Judge gave liberty to the plaintiff/appellant to make A.N. Polymer a party defendant and /or apply for cancellation of their registration before the appropriate forum. We do not disturb those liberties. The parties are given liberty to approach the learned Judge taking suits ,to fix an early date of hearing. Learned Judge gave liberty to the plaintiff/appellant to make A.N. Polymer a party defendant and /or apply for cancellation of their registration before the appropriate forum. We do not disturb those liberties. This order would also not preclude the plaintiff to approach learned single Judge again for interim protection after change in the scenario including taking steps as per the liberty granted by His Lordship RESULT Appeal is disposed of accordingly without any order as to costs. The interlocutory application is consequently disposed of by treating the same in day’s list. I agree.