The Supreme Court in, S.D. CONTAINERS INDORE v. M/S. MOLD TEK PACKAGING LTD. delved into the interplay between Section 22(4) of the Designs Act, 2000 and the Commercial Courts Act and stated that HC with no commercial division can cancel design under Section 22(4) of Designs Act.
Facts
MP HC set aside an order transferring suit under Section 22(4) of the Design Act, 2000 to Calcutta HC. It is the said order which was set aside by the High Court on 1.9.2020 directing that the Commercial Court, Indore is itself competent to decide the suit in terms of the Commercial Courts Act, 2015. The respondent wanted the appellant to restrain from using a design and the appellant countered the claim and the suit were transferred to Calcutta HC. Respondents challenged it in MP HC and decision went in their favour. Appellants approached SC.
Appellant’s Contention
Counsel contended that the HC erred in law while giving the decision and made reliance on catena of judgements. Counsel argued that the High Court erred in holding that since an appeal against the order of cancellation by the Controller lies to the High Court, the transfer would not be sustainable for the reason that the appellate jurisdiction is distinct from the original jurisdiction in a plea for cancellation of the design in a suit in terms of the provisions of 2000 Act.
Respondent’s Contention
Counsel relied on Godrej Sara Lee as well as Whirlpool of India v. Videocon Industries Ltd. to support the order passed by the High Court.
Court’s Observation
It was observed by the bench that disputes related to design are required to be instituted before a Commercial Court constituted under Section 3 of the said Act. It was stated that the Section 7 of the CC Act dealt with the situation where the High Courts have ordinary original civil jurisdiction. Further, There was no provision in the 2015 Act either prohibiting or permitting the transfer of the proceedings under the 2000 Act to the High Courts which do not have ordinary original civil jurisdiction. The court thus concluded, “In terms of Section 22(4) of the 2000 Act, the defendant has a right to seek cancellation of the design which necessarily mandates the Courts to transfer the suit. The transfer of suit is a ministerial act if there is a prayer for cancellation of the registration. In fact, transfer of proceedings from one Bench to the Commercial Division supports the argument raised by learned counsel for the Appellant that if a suit is to be transferred to Commercial Division of the High Court having ordinary original civil jurisdiction, then the Civil Suit in which there is plea to revoke the registered design has to be transferred to the High Court where there is no ordinary original civil jurisdiction.”
The court also stressed upon the fact that the decision of Commercial Court to transfer the case to Calcutta HC was not sustainable as no cause of action arose in Calcutta. Thus, the case shall be transferred to MP HC and since it does not have ordinary original civil jurisdiction the HC has the power to adjudicate upon the issue.
Case Details
CIVIL APPEAL NO.3695 OF 2020 (@ SLP (C) NO. 11488 OF 2020)
Counsel for appellant- Mr. Jai Sai Deepak
Counsel for respondent- Mr. Assudani
Coram- Honble Justice L. NAGESWARA RAO, Honble Justice HEMANT GUPTA, Honble Justice AJAY RASTOGI
Read Judgment @Latestlaws.com
Share this Document :Picture Source :
