The main legal point established in the judgment is that for a matter to fall within the purview of Section 19 of the Designs Act, 2000, the conditions of submission of a representation/petition before the Controller, on any ground under Clause (a) to (e) of Sub Section (1) to Section 19, and an order passed by the Controller must be satisfied.

Aggrieved by the order passed by Additional District Court, Ernakulam in I.A.No.916 of 2014 in O.S. No.5 of 2013 dated 11.07.2014, the defendant came up with this petition under Article 227 of the Constitution of India. The dispute involved in the suit is with respect to a registered design given to the product of the plaintiff. The suit was instituted on the allegation that the defendant is imitating the very same design to their product causing loss of reputation. An application in I.A.No.916/2014 was filed disputing the jurisdiction of the District Court in dealing with the matter. It was submitted that the plaintiff is seeking only permanent prohibitory injunction and compensation, as such it would come under the purview of Section 22(2) IInd proviso to the Designs Act, 2000. The dispute involved is whether the present matter would come under the purview of Section 24(2) IInd Proviso or Section 22(4) of the said Act. It was inter alia contended by the plaintiff that what is sought in the plaint is only a permanent prohibitory injunction and compensation, as such it would come under the purview of Section 24(2) IInd proviso and the District Court has ample jurisdiction to entertain this suit. After hearing both the parties, the learned District Judge dismissed the application ordering that the District Court has jurisdiction over the matter.

2. Heard the learned counsel for the petitioner and the learned counsel appearing for the respondent.

3. The matter in dispute is with respect to the jurisdiction of the District court to deal with a suit of this nature being a one for permanent prohibitory injunction and compensation. The main contention raised by the defendant is that the matter in dispute would come under the purview of Section 19 of the Designs Act, 2000.

4. It was contended that a defence was raised in the written statement submitted by the defendant disputing the exclusive right over the design of the product issued by the controlling authority. Based on the above said defence raised in the written statement, the learned counsel would argue that the matter would squarely come under the purview of Section 19 and took support from the decision in Premier Elmech Systems (P) Ltd v. V. Guard Industries (P) Ltd. reported in 2013 (4) KLT 395 rendered by a learned Single Judge of this court. Section 19 of the Designs Act is extracted below for reference.

"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 registerable 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."

'emphasis supplied'

5. Going by Section 19 of the Act, it is clear that it would come into play only when an application is presented by a person interested in the matter before the Controller on any of the ground made mentioned therein as (a) to (e) to Sub Section (1). Sub section (2) deals with the question of appeal and appellate right of party and it states that an appeal shall lie from any order of the Controller under this section to the High Court. In order to bring the matter within the purview of Section 19 of the said Act, the parties should satisfy at least three conditions. That is (1) submission of a representation/petition by a person before the Controller (2) on any of the ground under Clause (a) to (e) of Sub Section (1) to Section 19 and (3)