THE HIGH COURT OF MADHYA PRADESH, INDORE BENCH Single Bench : Hon'ble Shri Justice Subodh Abhyankar M/s Mold Tek Packaging Limited ………. Plaintiff Vs.

S.D. Containers.............. Defendant

1 Case No. C.S. No.01 of 2021

2 Parties Name M/s Mold Tek Packaging Limited vs.

S.D. Containers

3 Date of Order 01^st of September, 2021

4 Bench constituted of Single Bench Hon'ble Justice Hon'ble Shri Justice Subodh Abhyankar

5 Order passed by Hon'ble Shri Justice Subodh Abhyankar

6 Whether approved for Yes reporting

7 Name of counsel for the Shri Vijay Kumar Assudani, learned parties counsel for the plaintiff.

Shri Neeraj Grover and Shri Prakar Karpe Mohan, learned counsel for the counsel for the defendant.

8 Law laid down High court has the jurisdiction to try the counter claim filed by the defendant for cancellation of registration of design under the Design Act, 2000 in a suit filed by the plaintiff for declaration and injunction in respect of the disputed designs.

Interpretation of Sections 10, 19 and

22 of the Design Act.

19. So far as the application filed under order 7 rule 11 is concerned, this court finds that this civil suit itself has travelled from the district court to this court on an application filed by the defendant under s.22(4) of the Design Act for transfer of civil suit from district court to High court. The district court passed the order on 23.03.2020, allowing the application but the suit was directed to be filed in the High court of Calcutta. The aforesaid order was challenged by the defendant before this court, and this court, in MP no.2156/2020 vide its order dated 01.09.2020 set aside the order of the district court and held that only the district court has the jurisdiction to try the suit. The aforesaid order dated 23.03.2021 was again assailed by the defendant in the Supreme Court in Civil Appeal No.3695/2020 and vide its order dated 01.12.2020 set aside the order passed by this court and held as under:-

“20. In view of the above, the order of the Commercial Court at the District Level is in accordance with law. However, we are unable to agree with the Commercial Court to transfer such suit to Calcutta High Court. The High Court, where the cuase of action arises has the jurisdiction to entertain the suit in terms of Godrej Sara Lee. Since no part of cause of action has arisen within the jurisdiction of Kolkata, the suit is liable to be transferred to Madhya Pradesh High Court, Indore Bench. In fact, the plaintiff has filed suit at Indore, Madhya Pradesh only.

21. Thus, we find that the order of the High Court is not sustainable. The same is set aside and the matter is remitted to the High Court of Madhya Pradesh, Indore Bench, who shall decide the suit in accordance with law. The appeal is disposed of in the above terms.”

20. Suffice it to say that the supreme court has already taken note of the defence raised by the defendant and has thought it fit to transfer the Civil suit to this court under the provisions of s.22(4) of the Design Act. At this juncture, it would be apt to refer to s.22 of the Design Act which reads as under:-

“

22. Piracy of registered design.

(1) During the existence of copyright in any design it shall not be lawful for any person—

(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof;

or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the regist