Back
SUPREME COURT OF INDIA
L. NAGESWARA RAO, HEMANT GUPTA, AJAY RASTOGI, JJ.
S.D. CONTAINERS INDORE – APPELLANTS
VERSUS
M/S. MOLD TEK PACKAGING LTD. – RESPONDENT
CIVIL APPEAL NO.3695 OF 2020 (@ SLP (C) NO. 11488 OF 2020)
Decided on : 01-12-2020
Designs Act, 2000 – Section 22(4) – Commercial Courts Act, 2015 – Sections 3, 7 and 21 – Transfer of suit – Suit for declaration and permanent injunction – Section 7 of 2015 Act only deals with situation where High Courts have ordinary original civil jurisdiction – There is no provision in 2015 Act either prohibiting or permitting transfer of proceedings under 2000 Act to High Courts which do not have ordinary original civil jurisdiction – Since 2015 Act has no provision either prohibiting or permitting transfer of proceedings under 2000 Act, Section 21 of 2015 Act cannot be said to be inconsistent with provisions of 2000 Act – It is only inconsistent provisions of any other law which will give way to provisions of 2015 Act – If a suit is to be transferred to Commercial Division of High Court having ordinary original civil jurisdiction, then Civil Suit in which there is plea to revoke registered design has to be transferred to High Court where there is no ordinary original civil jurisdiction – High Court, where cause of action arises has Jurisdiction to entertain Suit – Since no part of cause of action has arisen within jurisdiction of Kolkata, suit is liable to be transferred to Madhya Pradesh High Court, Indore Bench – Plaintiff has filed suit at Indore, Madhya Pradesh only – Order of High Court is not sustainable – Same set aside and matter remitted to High Court of Madhya Pradesh, Indore Bench, who shall decide the suit in accordance with law. (Paras 11, 20 and 21)
Facts of the case:
The plaintiff/respondent herein filed a 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 under Design Application Nos. 299039 and 299041 respectively. Present appeal has been filed to challenge an order passed by the Madhya Pradesh High Court, setting aside an order dated 23.03.2020 transferring the suit under Section 22(4) of the Design Act, 2000 to the Calcutta High Court. It is the said order which was set aside by High Court on 1.9.2020 directing that Commercial Court, Indore is itself competent to decide suit in terms of the Commercial Courts Act, 2015.
Findings of Court:
Since 2015 Act has no provision either prohibiting or permitting the transfer of proceedings under the 2000 Act, Section 21 of the 2015 Act cannot be said to be inconsistent with the provisions of the 2000 Act. It is only the inconsistent provisions of any other law which will give way to the provisions of 11 the 2015 Act. In terms of Section 22(4) of the 2000 Act, the defendant has a right to seek cancellation of the design which necessarily mandates the Courts to transfer the suit. The transfer of suit is a ministerial act if there is a prayer for cancellation of registration.
Result : Appeal disposed of.
JUDGMENT :
HEMANT GUPTA, J.
1. The present appeal has been filed to challenge an order passed by the Madhya Pradesh High Court, setting aside an order dated 23.03.2020 transferring the suit under Section 22(4) of the Design Act, 20001[for short the ‘2000 Act’] to the Calcutta High Court. It is the said order which was set aside by the High Court on 1.9.2020 directing that the Commercial Court, Indore is itself competent to decide the suit in terms of the Commercial Courts Act, 20152[for short the ‘2015 Act].
2. The plaintiff/respondent herein filed a 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 under Design Application Nos. 299039 and 299041 respectively
3. In the said suit, the defendant/appellant had filed a written statement along with the counter-claim before the Commercial Court, inter alia seeking cancellation of the abovementioned registered designs for the reason that the said designs were not new or original and hence could not be registered in terms of Section 4(a) of the 2000 Act. The appellant also filed an application under Section 22(4) read with Section 19(2) of the 2000 Act to transfer the suit to the Madhya Pradesh High Court, Indore Bench. It is the said application which was allowed by the learned District Judge and the suit was thus transferred to the Calcutta High Court.
4. The said order passed by Commercial Court was challenged by the plaintiff/respondent before the Madhya Pradesh High Court. The High Court examined the question as to whether the proceedings of the said suit was liable to be transferred to the High Court or if the Commercial Court at Indore was competent to decide the matter. The High Court relied upon Godrej Sara Lee Ltd. vs Reckitt Benckiser Australia Pty. Ltd. and another, (2010) 2 SCC 535 to hold that the legislature intended 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. It was further held that the 2015 Act is a special enactment having an overriding effect, save as otherwise provided the provisions, by virtue of Section 21 of the said Act.
5. The relevant provisions of the statutes, i.e. the 2000 Act and the 2015 Act are reproduced below:
“The Design Act, 2000
4. Prohibition of registration of certain designs.--A design which—
(a) is not new or original; or
(b) xx xx xx
(c) xx xx xx
(d) xx xx xx
shall not be registered.”
Xx xx xx
19. Cancellation of registration. --(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:--
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2.
(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.
Xx xx xx
22. Piracy of registered design. —
(1) xx xxx xxx
(2) xx xxx xxx
(3) In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence under sub-section
SupremeToday
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
