Back
2013 Supreme(Online)(KER) 13659
HIGH COURT OF KERALA
S.S.SATHEESACHANDRAN, J
Y/S.PREMIER ELMECH SYSTEMS (P) LTD – Appellant
Versus
M/S.V GUARD INDUSTRIES (P) LTD – Respondent
RFA 408 2007
SRI.E.K.NANDAKUMAR, SRI.A.K.JAYASANKAR, SRI.R.HARIKRISHNAN, SRI.ISSAC M.PERUMPILLIL, SRI.LIJO GEORGE, SRI.JIJO PAUL KALLOOKKARAN
Claims regarding the cancellation of a design's registration must result in the suit being transferred to the High Court for adjudication under the Designs Act, 2000.
Headnote:
Design - Injunction - Designs Act 2000, Sections 19, 22 - The court emphasized that if a defendant claims cancellation of design registration as a defense, the matter must be transferred to the High Court for proper consideration as mandated by the Act.
Fact of the Case:
The plaintiff filed for an injunction against the defendants for allegedly imitating its registered design of stabilizers. The defendants contested the suit, stating that the design was neither new nor original, thereby challenging its registration under the Designs Act, 2000.
Finding of the Court:
The court found that the trial court overlooked the mandatory requirement of transferring the suit to the High Court for resolution, given that the defendants raised a valid defense against the design's registration under Section 19 of the Designs Act, 2000.
Issues: Whether the trial court was justified in proceeding with the suit and issuing a decree without transferring the matter to the High Court after a defense was raised regarding the design's registration.
Ratio Decidendi: The trial court failed to comply with the mandatory provision under Section 22(4) of the Designs Act, 2000, requiring transfer to the High Court when grounds for cancellation of the design registration are raised.
Final Decision: The appeal is allowed; the decree is set aside and the case is remitted for compliance with statutory transfer to the High Court.
JUDGMENT
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 R.F.A.408/2007 2 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 R.F.A.408/2007 3 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 R.F.A.408/2007 4 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 R.F.A.408/2007 5 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.
