Design Act, 2000 – ss. 19 and 22 – Commercial Courts Act, 2015 – s. 3 – Plaintiff/respondent filed suit for declaration and permanent injunction to restrain the appellants from either directly or indirectly copying, using or enabling others to use the plaintiff ’s design of container and lid registered – The defendant/appellant filed written statement along with the counter-claim before the Commercial Court, inter-alia sought cancellation of the registered designs as same could not be registered in terms of s. 4(a) of the 2000 Act – The appellant also filed an application u/s. 22(4) r/w. s. 19(2) of the Design Act, 2000 to transfer the suit to the Madhya Pradesh High Court, Indore Bench – The District Judge allowed the said application and transferred the suit to the Calcutta High Court – The said order was challenged before the Madhya Pradesh High Court – The High Court relied upon Godrej Sara Lee Ltd case and held that an application for cancellation of registration of design would lie to the Controller exclusively without the High Court having a parallel jurisdiction to entertain such matter because the appeals from the order of the Controller lie before the High Court – On appeal, held: In the Godrej Sara Lee Ltd., it was held that any application for cancellation of registration u/s. 19 could be filed only before the Controller and not to the High Court – Therefore, in these circumstances, it was held that the High Court would be entitled to assume jurisdiction only in appeal – It was not a case of suit for infringement in which the defendant has raised a plea of revocation of registration which is required to be transferred to the High Court in terms of s. 22(4) of the 2000 Act – Such judgment was wrongly relied upon by the High Court – The order of the Commercial Court of the District Level is in accordance with law – However, the view of the Commercial Court to transfer such suit to Calcutta High Court is not correct – The High Court where the cause of action arises has the jurisdiction to entertain the suit – Since, no part of cause of action has arisen within the jurisdiction of Kolkata, the suit is liable to be transferred to Madhya Pradesh High Court, Indore Bench – The order of the High Court is not sustainable – The matter remitted to the High Court of Madhya Pradesh, Indore Bench to decide the suit in accordance with law.
Remitting the matter to High Court, the Court
HELD: 1. The judgment in Godrej Sara Lee arises out of an order passed by the Controller of Patent & Designs, Kolkata under Section 19(1) of the Design Act, 2000, cancelling the registered designs belonging to the respondent therein. The question examined was as to whether the Delhi High Court has jurisdiction to entertain the appeals against the order of the Controller. The respondent had also filed a civil suit before the Delhi High Court alleging infringement of registered designs and thus seeking cancellation of the designs. Later, the Controller of Design cancelled three designs belonging to the respondent. This order of cancellation was challenged by the respondent before the High Court. In these circumstances, the question examined was regarding interpretation of the expression High Court used in Section 19(2) and 22(4) of the 2000 Act and Section 51A of the Indian Patents and Designs Act, 1911. [Para 12][1113-H; 1114A-C]
2. It was held that any application for cancellation of registration under Section 19 could be filed only before the Controller and not to the High Court. Therefore, in these circumstances, it was held that the High Court would be entitled to assume jurisdiction only in appeal. It was not a case of suit for infringement in which the defendant has raised a plea of revocation of registration which is required to be transferred to the High Court in terms of Section 22(4) of the 2000 Act. Therefore, such judgment has been wrongly relied upon by the High Court assuming that the proceedings are before the Controller and that the plaintiff/respondent had filed a suit for infringement wherein a plea of revocation of registration was raised which was required to be transferred to the High Court in terms of Section 22(4) of the 2000 Act. [Para 13][1114-C-E]
3. Furthermore, in the 2000 Act, there are two options available to seek revocation of registration. One of them is before the Controller, appeal against which would lie before the High Court. Second, in a suit for infringement in a proceeding before the civil court on the basis of registration certificate, the defendant has been given the right to seek revocation of registration. In that eventuality, the suit is to be transferred to the High Court in terms of sub-section (4) of Section 22 of the 2000 Act. Both are independent provisions giving rise to different and distinct causes of action. [Para 14][1114-F-G]
4. In view of the above, the order of the Commercial Court at the District Level is in accordance with law. However, this Court does not agree with the Commercial Court to transfer such suit to Calcutta High Court. The High Court, where the cause of action arises has the Jurisdiction to entertain the Suit in terms of Godrej Sara Lee. Since no part of cause of action has arisen within the jurisdiction of Kolkata, the suit is liable to be transferred to Madhya Pradesh High Court, Indore Bench. In fact, the Plaintiff has filed suit at Indore, Madhya Pradesh only. [Para 20][1117-EF] Godrej Sara Lee Ltd. v. Reckitt Benckiser Australia Pty. Ltd. and another (2010) 2 SCC 535 : [2010]
2 SCR 147; R. N. Gupta and Co. Ltd. Jasola New Delhi v. M/s Action Construction Equipments Ltd. Dudhohla and 3 others (2016) SCC OnLine All 975 – referred to.
M/s Astral Polytechnic Limited v. M/s Ashirwad Pipes Private Ltd. ILR 2008 Kar 2533; M/s. Escorts
Construction Equipment Ltd. v. M/s Gautam
Engineering Company and another AIR 2010 J&K 13; Salutri Remedies v. Unim Pharma Lab Pvt. Ltd. (2009) SCC OnLine Guj 9488; Standard Glass Beads Factory and another v. Shri Dhar and Ors. AIR 1961 All 101; Whirlpool of India v. Videocon Industries Ltd. (2014) SCC OnLine Bom 565 – referred to.
As published in the Supreme Court Reports, Supreme Court of India. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
This page is for informational and research purposes only and does not constitute legal advice. Consult a qualified advocate for advice specific to your situation.