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2010 (1) Supreme 745
SUPREME COURT OF INDIA
Altamas Kabir and Cyriac Joseph, JJ.
M/s. Godrej Sara Lee Limited — Appellant
vs.
Reckitt Benckiser Australia Pty. Ltd. & Anr. — Respondents
Civil Appeal Nos. 996-997/2010
(Arising out of SLP(C) Nos. 21955-21956 of 2008)
Decided on : 29-01-2010
Facts of the Case :
Two Appeals were filed in the Delhi High Court, against two orders, passed by Controller of Patents and Designs, Kolkata,under Section 19(1) of the Designs Act, 2000,cancelling two registered designs for “Insecticide Coil” in Class 12 belonging to the Respondent No.1herein in the instant case.The question for determination before High Court in two appeals was whether Delhi High Court had jurisdiction to entertain the same against the order passed by the Controller of Patents and Designs, Kolkata. In the said two appeals, it was held by Delhi High Court that it had jurisdiction to entertain Appeals.
2. Present two appeals thereagainst have been preferred by M/s. Godrej Sara Lee Ltd. against said decision.
Findings of the Court :
In contrast to the provisions of Section 51A(1)(a) of the 1911 Act, Section 19(1) of 2000 Act, which also deals with cancellation of registration, provides for a petition for cancellation of registration of a design to be filed before the Controller and not to the High Court. On a comparison of two provisions of two enactments, held obvious that under 2000 Act the intention of the Legislature was that an application for cancellation of a design would lie to the Controller exclusively without High Court having a parallel jurisdiction to entertain such matters. It was also very clear that all the appeals from any order of the Controller under Section 19 of the 2000 Act shall lie to the High Court. The basic difference is that while under Section 19 of the 2000 Act an application for cancellation would have to be made to the Controller of Designs, under Section 51A of the 1911 Act an application could be preferred either to the High Court or within one year from the date of registration to Controller on the grounds specified under Sub-clauses (i) and (ii) of Clause (a) of Section 51A(1). Under Section 19 of the 2000 Act the power of cancellation of the registration lies wholly with Controller. On the other hand, an application for cancellation of a design could be made directly to the High Court under Section 51A of the 1911 Act. Under the 2000 Act, High Court would be entitled to assume jurisdiction only at the appellate stage, whereas under Section 51A of the 1911 Act High Court could itself directly cancel registration.In the instant case, doctrine of cause of action, as understood under Section 20 C.P.C., has been imported on the basis of the provisions of Section 51A of the Designs Act, 1911, whereas case of the appellant would fall under Section 19 of the Designs Act, 2000, where High Court functions as the Appellate forum. The cause of action for the instant proceedings was most certainly the cancellation of the registered design of the appellant which happened in the State of West Bengal which gave the Calcutta High Court jurisdiction to deal with the matter. Delhi High Court, erred in holding that cause of action had arisen within its local jurisdiction, whereas the jurisdiction of the High Court was on account of the cancellation of registration of the design and not on account of the impact thereof in any particular State. Impugned order of Delhi High Court being unsustainable was set aside. Appeals allowed
Result : Appeals allowed
JUDGMENT
Altamas Kabir, J.
1. Leave granted.
2. Two First Appeals were filed in the Delhi High Court, being FAO No.131 and 132 of 2008, against two orders, both dated 28th March, 2008, passed by the Controller of Patents and Designs, Kolkata, under Section 19(1) of the Designs Act, 2000, cancelling two registered designs for “Insecticide Coil” in Class 12 belonging to the Respondent No.1 herein. The question for determination before the High Court in the two appeals was whether the Delhi High Court had jurisdiction to entertain the same against the order passed by the Controller of Patents and Designs, Kolkata. Inasmuch as, in the said two appeals, it was held by the Delhi High Court that it had jurisdiction to entertain the appeals, these two appeals have been preferred by M/s. Godrej Sara Lee Ltd. against the said decision.
3. On 27th January, 2005, the Respondent No.1 herein, M/s. Reckitt Benckiser Australia Pty. Ltd., filed a suit, being C.S.(O.S.)No.121 of 2005, against the appellant, in the Delhi High Court alleging infringement of its Registered Designs bearing Nos.184136 and 184137. The said suit is yet to be decided. On 4th February, 2005, the appellant herein filed his written statement in the suit, inter alia, contending that the aforesaid Designs of the Respondent No.1 were liable to be cancelled under Section 22(3) of the Designs Act, 2000, on the ground that registration of the same had been obtained by concealment of facts and infringement of the Designs Registration Nos. 197811 and 197426, before the Controller of Designs at Kolkata. Similarly, the appellant herein also filed a Designs Cancellation Petition for cancellation of the Registered Design Nos.184135, 184136 and 184137 standing in the name of the Respondent No.1 on the same ground as alleged by the respondent in its petition for cancellation of the appellant’s Designs. After certain interlocutory proceedings relating to the prayer made for transfer of the cancellation proceedings from the Controller of Designs to the Delhi High Court, the Controller of Designs heard the parties on 5th March, 2008 and reserved his order. Meanwhile, the respondents filed FAO (OS) No.101/08 against the orders dated 13.2.2008 and 5.3.2008 passed by the Controller of Designs, Kolkata and the same was converted into a Petition under Article 227 of the Constitution. Initially the learned Single Judge was doubtful about the maintainability of the appeals. Thereafter, on 28th March, 2008, by three separate orders the Controller of Designs, Kolkata, cancelled the Registered Design Nos.184135, 184136 and 184137 belonging to Respondent No.1. As indicated hereinabove, three First Appeals were preferred before the Delhi High Court, where a question arose with regard to the High Court’s jurisdiction to entertain the appeals and by the orders impugned in these appeals the Delhi High Court held that the appeals were maintainable and it had jurisdiction to entertain the same.
4. Appearing in support of the appeals, Mr. Dushyant Dave, learned Senior Advocate, questioned the decision of the Delhi High Court based on the interpretation of Section 19(2) read with Section 2(e) of the Designs Act, 2000. He submitted that the expression “High Court” as used in Section 19(2) and Section 2(e), would have to be read in relation to the cause of action and not otherwise. In the instant case, since the cause of action for the appeal has arisen on account of the cancellation of Designs by the Controller of Designs at Kolkata, it is only the Calcutta High Court, which would have jurisdiction to entertain the appeals under Section 19. Any other interpretation would be contrary to the principles relating to the filing of suits where the cause of action arises as contemplated under Section 20 of the Code of Civil Procedure.
5. Mr. Dave urged that the High Court appears to have gone wrong in making a comparison between the provisions relating to cancellation of designs under Section 51A of the Designs Act
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