The main legal point established in the judgment is the maintainability of a counter claim seeking cancellation of registered designs under Section 19 of the Designs Act.

JUDGMENT (Oral)

C. Hari Shankar, J.

CC(Comm) 2/2022

1. By this order, I proceed to decide the preliminary objection advanced by Mr. Hemant Singh, learned Counsel for the plaintiff to the maintainability of CC (Comm) 2/2022, which is the counter claim filed by the defendant in the present suit.

2. The present suit [CS(COMM) 567/2021] alleges piracy, by the defendant, of the designs registered in favour of the plaintiff vide Registration Nos. 296178, 296179 and 296180 ('the suit designs') and seeks reliefs of injunction against the plaintiff from directly or indirectly dealing in the switch plates manufactured by the plaintiff, which allegedly infringe the suit designs.

3. Among the defences taken in the written statement filed by the defendants, to the plaint, is the plea that the suit designs are invalid on the ground of prior publication.

4. During the pendency of these proceedings, the defendant has filed the present counter claim CC (Comm) 2/2022, seeking cancellation, and expunction from the Register of Designs, of the suit designs 296178, 296179 and 296180. The defendant has also filed, with the counter claim, an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking stay of operation and effect of the suit designs.

5. Mr. Hemant Singh, learned Counsel for the plaintiff, has objected to the counter claim filed by the defendant. He submits hat it is not maintainable. Though Mr. Sachin Gupta, learned Counsel for the defendant, points out that notice already stands issued on the counter claim and pleadings completed therein, there can be no gainsaying that an objection regarding maintainability can be raised at any stage, including appeal, as it goes to the very root of the proceedings and the jurisdiction of the court to entertain the matter.

6. I am not, therefore, inclined to foreclose the objection of Mr. Hemant Singh merely on the ground that notice stands issued in the counter claim and pleadings completed therein.

7. On the merits of his objection, Mr. Hemant Singh submits that, there is no provision in the Designs Act which provides for filing of a counter claim. That apart, he submits that the counter claim filed by the defendant seeks revocation and cancellation of the suit design, which, as per Section 19^{1[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.]}

of the Designs Act, has specifically to be raised only before the Controller of Designs. Mr. Hemant Singh submits that Section 22(3)^{2[22. Piracy of registered design. -
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(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under Section 19 shall be available as a ground of defence.]} of the Designs Act, no doubt, permits other grounds on which cancellation of a registered designs may be sought under Section 19(1), as a ground of defence to a plea of piracy. That remedy, he submits, has already been availed by the defendant, as the plea of invalidity of the suit designs has specifically been taken in the written statement filed by it, and this Court would rule on the issue while considering the merits of the pleas taken in the written statement. Mr. Hemant Singh submi