1. First defendant in a suit for injunction is the appellant. Suit was filed by the first respondent to restrain the appellant and another (second respondent) from fraudulently or obviously imitating the registered design of the plaintiff's stabilizers with design registration No.187578. Both defendants appellant and second defendant resisted the suit. After trial negativing their objections a decree of injunction was passed in favour of the plaintiff (first respondent) as prayed for. Aggrieved by that decree, appellant (first defendant) has preferred this appeal.

2. I heard the counsel for the appellant and also first respondent.

3. After hearing the counsel on both sides at length and looking into the pleadings and evidence of the case, I find meticulous scrutiny of the case canvassed by rival side is not to be proceeded more so, to avoid prejudice being caused to one or other parties. On the facts and circumstances presented with reference to the pleadings and evidence of the case, and hearing the submissions of the counsel as well, I find the court below has proceeded with trial of the suit overlooking the mandatory prescription under sub section (4) of section 22 of the Designs Act, 2000, hereinafter referred to as the Act. Plaintiff has filed the suit seeking injunction against the defendants alleging that there is fraudulent or obvious imitation of design obtained over its product viz stabilizer by the defendants, to injunct them from doing so by a decree of the court. Whatever be the claim or entitlement of plaintiff to get such decree on the allegations raised in the plaint, admittedly, it was resisted by both defendants filing written statement raising various contentions that the plaintiff cannot be granted the decree applied for. Among other contentions appellant (first defendant) has contended that there is no novelty in the design registered by the plaintiff asserting that it is not a new or original design, and the same is not registerable under the Act. In paragraph 3 of the written statement that defendant refuting the claim of plaintiff has stated thus:-

“xx xx xx there is no peculiarity for design registered by the plaintiff and there is no novelty in the design. The design purportedly registered is not a new or original design and the same is not registerable under the Act. It is relevant to note that rectangular, round, oval shaped stablizers were available in the market for the last several years and therefore, no person can claim monopoly in respect of round or oval shaped designs. Therefore, it is submitted that there is no novelty in the oval shaped design of the plaintiff.”

4. The question then for consideration is, when a defence was taken that the design got registered by the plaintiff is not a new or original design and it should not have been registered in its favour,to resist the suit claim, whether the court below could have proceeded with the suit, adjudicated the disputes involved and passed a decree in such suit.

5. Chapter V of the Act deals with legal proceedings. Where there is any fraudulent or obvious imitation of any registered design obtained over an article by a party except with his licence or written consent, he is entitled to seek damages for such contravention and also for an injunction. A suit proceeding for the above relief cannot be instituted before any court below the court of District Judge. In such a suit or proceeding it is open to the person proceeded against to set forth any ground for cancelling the registration of the design covered by section 19 of the Act. If any ground on which the registration of design may be cancelled under section 19 of the Act is taken as defence in the suit or proceeding, then such suit or proceeding has to be transferred by the court to the High Court for decision, is the mandatory prescription under sub section (4) of Section 22 of the Act.

6. Sub section (3) and (4) of Section 22 of the Act reads thus:-

(3) In any suit or any oth