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REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO. 3695 OF 2020

(@ SLP ( C) NO. 11488 OF 2020)

S.D. CONTAINERS INDORE

.....APPELLANT(S)

VERSUS

M/S. MOLD TEK PACKAGING LTD. .....RESPONDENT(S)

J U D G M E N T

HEMANT GUPTA, J.

1. The present appeal has been filed to challenge an order passed by

the Madhya Pradesh High Court, setting aside an order dated

23.03.2020 transferring the suit under Section 2 2(4) of the Design

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Act, 2000

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to the Calcutta High Court. 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

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.

2. The plaintiff/respondent herein filed a suit for declaration and

permanent injunction to restrain the appellants from either directly

or indirectly copying, using or enabling others to use the plaintiff’s

design of C ontainer and Lid registered under Design Application Nos.

299039 and 299041 respectively.

3. In the said suit, the defendant/appellant had filed a written statement

along with the counter-claim before the Commercial Court, inter alia

seeking cancellation of the abovementioned registered design s for

the reason that the said designs were not new or original and hence

could not be registered in terms of Section 4(a) of the 2000 Act. The

appellant also filed an application under Section 22(4) read with

Section 19(2) of the 2000 Act to transfer the suit to the Madhya

Pradesh High Court, Indore Bench. It is the said application which

was allowed by the learned District Judge and the suit was thus

transferred to the Calcutta High Court.

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for short the ‘2000 Act’

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for short the ‘2015 Act’

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4. The said order passed by Commercial Court was challenged by the

plaintiff/r espondent before the Madhya Pradesh High Court . The High

Court examined the question as to whether the proceedings of the

said suit was liable to be transferred to the High Court or if the

Commercial Court at Indore was competent to decide the matter. The

High Court relied upon Godrej Sara Lee Ltd. vs Reckitt Benckiser

Australia Pty. Ltd. and another

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to hold that the legislature

intended that an application for cancellation of registration of design

would lie to the Controller exclusively without the High Court having

a parallel jurisdiction to entertain such matter because the appeals

from the order of the Controller lie before the High Court. It was

further held that the 2015 Act is a special enactment having an

overriding effect, save as otherwise provided the provisions, by virtue

of Section 21 of the said Act.

5. The relevant provisions of the statutes, i.e. the 2000 Act and the

2015 Act are reproduced below:

“The Design Act, 2000

4. Prohibition of registration of certain designs. --A

design which--

(a) is not new or original; or

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(2010) 2 SCC 535

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(b) xx xx xx

(c) xx xx xx

(d) xx xx xx

shall not be registered.”

Xx xx xx

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 registrable 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.

Xx xx xx

22. Piracy of registered design. —

(1) xx xxx xxx

(2) xx xxx xxx

(3) In any suit or any other proceeding for relief under sub-

section (2), ever ground on which the registration of a design

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may be cancelled under section 19 shall be available as a

ground of defence.

(4) Notwithstanding anything contained in the second proviso

to sub- section (2), where any ground or which the registration

of a design may be cancelled under section 19 has been

availed of as a ground of defence under sub-section (3) in any

suit or other proceeding for relief under sub-section (2), the

suit or such other proceedings shall be transferred by the

Court, in which the suit or such other proceeding is pending,

to the High Court for decision.

(5) When the court makes a decree in a suit under sub-

section (2), it shall send a copy of the decree to the Controller,

who shall cause an entry thereof to be made in the register of

designs.

THE COMMERCIAL COURTS ACT, 2015

3. Constitution of Commercial Courts. -- (1) The State

Government, may after consultation with the concerned High

Court, by notification, constitute such number of Commercial

Courts at District level, as it may deem necessary for the

purpose of exercising the jurisdiction and powers conferred on

those Courts under this Act:

Provided that with respect to the High Courts having ordinary

original civil jurisdiction, the State Government may, after

consultation with the concerned High Court, by notification,

constitute Commercial Courts at the District Judge level:

Provided further that with respect to a territory over which the

High Courts have ordinary original civil jurisdiction, the State

Government may, by notification, specify such pecuniary value

which shall not be less than three lakh rupees and not more

than the pecuniary jurisdiction exercisable by the District

Courts, as it may consider necessary.

[(1A) Notwithstanding anything contained in this Act, the

State Government may, after consultation with the concerned

High Court, by notification, specify such pecuniary value which

shall not be less than three lakh rupees or such higher value,

for whole or part of the State, as it may consider necessary.]

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(2) The State Government shall, after consultation with the

concerned High Court specify, by notification, the local limits

of the area to which the jurisdiction of a Commercial Court

shall extend and may, from time to time, increase, reduce or

alter such limits.

(3) The [State Government may], with the concurrence of the

Chief Justice of the High Court appoint one or more persons

having experience in dealing with commercial disputes to be

the Judge or Judges, of a [Commercial Court either at the level

of District Judge or a court below the level of a District Judge].

3A. Designation of Commercial Appellate Courts. --

Except the territories over which the High Courts have

ordinary original civil jurisdiction, the State Government may,

after consultation with the concerned High Court, by

notification, designate such number of Commercial Appellate

Courts at District Judge level, as it may deem necessary, for

the purposes of exercising the jurisdiction and powers

conferred on those Courts under this Act.

4. Constitution of Commercial Division of High Court. --

(1) In all High Courts, having

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[ordinary original civil

jurisdiction], the Chief Justice of the High Court may, by order,

constitute Commercial Division having one or more Benches

consisting of a single Judge for the purpose of exercising the

jurisdiction and powers conferred on it under this Act.

Xxx xxx xxx

7. Jurisdiction of Commercial Divisions of High Courts. -

- All suits and applications relating to commercial disputes of

a Specified Value filed in a High Court having ordinary original

civil jurisdiction shall be heard and disposed of by the

Commercial Division of that High Court:

Provided that all suits and applications relating to commercial

disputes, stipulated by an Act to lie in a court not inferior to a

District Court, and filed or pending on the original side of the

High Court, shall be heard and disposed of by the Commercial

Division of the High Court:

Provided further that all suits and applications transferred to

the High Court by virtue of sub-section (4) of section 22 of the

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Designs Act, 2000 (16 of 2000) or section 104 of the Patents

Act, 1970 (39 of 1970) shall be heard and disposed of by the

Commercial Division of the High Court in all the areas over

which the High Court exercises ordinary original civil

jurisdiction.

Xxx xxx xxx

21. Act to have overriding effect.-- Save as otherwise

provided, the provisions of this Act shall have effect,

notwithstanding anything inconsistent therewith contained in

any other law for the time being in force or in any instrument

having effect by virtue of any law for the time being in force

other than this Act.”

6. Mr. Jai Sai Deepak, learned c ounsel for the appellant referred to the

judgments reported as M/s Astral Polytechnic Limited v. M/s

Ashirwad Pipes Private Ltd.

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, R. N. Gupta and Co. Ltd. Jasola

New Delhi v. M/s Action Construction Equipments Ltd.

Dudhohla and 3 others.

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, M/s. Escort s Construction

Equipment Ltd. v. M/s Gautam Engineering Company and

another

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, Salutri Remedies v. Unim Pharma Lab Pvt. Ltd

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and

Standard Glass Beads Factory and another v. Shri Dhar and

Ors

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to contend that the High Court erred in law in transferring the

suit to the Commercial Court (District Level) while setting aside the

order passed by the Commercial Court to transfer the said suit to the

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ILR 2008 Kar 2533

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2016 SCC OnLine All 975

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AIR 2010 J&K 13

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2009 SCC OnLine Guj 9488

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AIR 1961 All 101

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High Court. It was also 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.

7. On the other hand, Mr. Assudani, learned counsel for the respondent

relied upon the order of this Court in Godrej Sara Lee as well as

Whirlpool of India v. Videocon Industries Ltd.

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to support the

order passed by the High Court.

8. We have heard learned counsel for the parties. The 2015 Act deals

with two situations i.e. the High Courts which have ordinary original

civil jurisdiction and the High Courts which do not have such

jurisdiction. The High Court of Madhya Pradesh does not have the

ordinary original civil jurisdiction. In areas where the High Courts do

not have ordinary original civil jurisdiction, the Commercial Courts at

the District Level are to be constituted under Section 3 of the 2015

Act. The State Government is also empowered to fix the pecuniary

limit of the Commercial Courts at the District Level in consultation

with the concerned High Court. In terms of Section 3(2) of the 2015

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2014 SCC OnL ine Bom 565

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Act, the Court of District Judge at Indore is notified to be a

Commercial Court. “ Commercial Dispute” within the meaning of

Section 2(c)(xvii) of the Act, 2015 includes the dispute pertaining to

“intellectual property rights relating to registered and unregistered

trademarks, copyright, patent, design, domain names, geographical

indications and semiconductor integrated circuits .” Therefore,

disputes related to design are required to be instituted before a

Commercial Court constituted under Section 3 of the said Act.

9. On the other hand, Section 4 of the 2015 Act provides that where the

High Courts have ordinary original civil jurisdiction, a Commercial

Division is required to be constituted. Further, in terms of Section 5

of the Act, a Commercial Appellate Division is required to be

constituted. Section 7 of the Act deals with the suits and applications

relating to the commercial disputes of a specified value filed in the

High Court having ordinary original jurisdiction, whereas, the second

proviso contemplates that all suits and the applications transferred

to the High Court by virtue of sub-section (4) of Section 22 of 2000

Act shall be heard and disposed of by the Commercial Division of the

High Court in all the areas over which the High Court exercises

ordinary original civil jurisdiction.

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10. It is thus contended that in the High Courts having ordinary original

civil jurisdiction, the suits which have been transferred to the High

Court by virtue of sub- section (4) of Section 22 of the Act are

required to be dealt with by the Commercial Division of the High

Court instead of a Bench of t he High Court, in terms of the Rules

appliable to each High Court. Thus, the suit pertaining to design

under the 2000 Act would be transferred to the Commercial Division

from the ordinary original civil jurisdiction, i.e., from one Bench to

the other exclusive Court dea ling with Commercial Disputes.

11. It is pertinent to mention that Section 7 of the 2015 Act only deals

with the situation where the High Courts have ordinary original civil

jurisdiction. There is 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.

Further, Section 21 of the 2015 Act gives an overriding effect, only if

the provisions of the Act have anything inconsistent with any other

law for the time being in force or any instrument having effect by

virtue of law other than this Act. Since the 2015 Act has no provision

either prohibiting or permitting the transfer of proceedings under the

2000 Act, Section 21 of the 2015 Act cannot be said to be inconsistent

with the provisions of the 2000 Act. It is only the inconsistent

provisions of any other law which will give way to the provisions of

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the 2015 Act. 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 l earned

counsel for the Appellant that if a suit is to be transferred to

Commercial Division of the High Court having o rdinary 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 o rdinary original civil jurisdiction.

12. The judgment in Godrej Sara Lee arises out of an order passed by

the Controller of Patent & D esigns, Kolkata under Section 19(1) of

the 2000 Act, cancelling the registered designs belonging to the

respondent therein. The question examined was as to w hether the

Delhi High Court has jurisdiction to entertain the appeals against the

order of the Controller. The respondent had also filed a civil suit

before the Delhi High Court alleging infringement of registered

designs and thus seeking cancellation of the designs. Later, the

Controller of Design cancelled three designs belonging to the

respondent. This order of cancellation was challenged by the

respondent before the High Court. In these circumstances, the

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question examined was regarding interpretation of the expression

High Court used in Section 19(2) and 22(4) of the 2000 Act and

Section 51A of the Indian Patents and Designs Act, 1911

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.

13. It was held that any application for cancellation of registration under

Section 19 could be filed only before the Controller and not to the

High Court. Therefore, in these circumstances, it was held that the

High Court would be entitled to assume jurisdiction only in appeal. It

was not a case of suit for infringement in which the defendant has

raised a plea of revocation of registration which is required to be

transferred to the High Court in terms of Section 22(4) of the 2000

Act. Therefore, such judgment has been wrongly relied upon by the

High Court assuming that the proceedings are before the Controller

and that the plaintiff /respondent had filed a suit for infringement

wherein a plea of revocation of registration was raised which was

required to be transferred to the High Court in terms of Section 22(4)

of the 2000 Act.

14. Furthermore, in the 2000 Act, there are two options available to seek

revocation of registration. One of them is before the Controller,

appeal against which would lie before the High Court. Second, in a

suit for infringement in a proceeding before the civil court on the

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for short the ‘1911 Act’

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basis of registration certificate, the defendant has been given the

right to seek revocation of registration. In that eventuality, the suit

is to be transferred to the High Court in terms of sub- section (4) of

Section 22 of the 2000 Act. Both are independent provisions giving

rise to different and distinct c auses of action.

15. In Standard Glass Beads , the 1911 Act was under examination

before the Division Bench of the Allahabad High Court. Section 29

thereof permits a suit to be filed by a patentee wherein the defendant

could raise a plea of revocation of patent in a counter -claim.

Considering Section 29 of the Act, it was held as under:

“10. The expression “shall be transferred” in our judgment

means “shall stand transferred”; and the District Judge is left

with no jurisdiction save to make such order as is necessary

to secure the physical transfer of the records of the case to

the High Court. If this meaning be not given to these words

there will be an element of uncertainty both with regard to the

time when the record of the case is to be sent to the High

Court and to the powers of the District Court during the period

which is allowed to elapse before the record is in fact

transferred.”

16. The said view was reiterated by another Single Bench of Allahabad

High Court in a judgment reported as R. N. Gupta after the

enactment of the 2000 Act. The Court held as under:

“35. Apart from that, looking from another angle, in case it is

left open to District Court to proceed further to record any

satisfaction on the material filed on record in support of the

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ground taken by the defendant as available under Section 19,

it would mean that the District Court would be entering into

the jurisdiction of the Controller of the Designs as provided to

him under Section 19 or of the High Court, in case any such

proceedings for cancellation of registration are proceeded

further by the Controller of Designs or are sent to the High

Court. To my mind, the District Court can go only to the extent

of satisfying itself as to whether ground, on which the

registration of design may be cancelled under Section 19, has

been availed as a ground of defence or not. It cannot go into

the merits of the defence so taken by the defendant as it would

amount to exceeding his jurisdiction, which can only be gone

into by the High Court on transfer of the case to the High court

as to whether there is any force or not in such defence taken

by the defendant under Section 19 of the Act.

36. In such view of the matter, once, on bare reading of the

reply filed to the interim injunction application, it is found that

that a defence or ground under Section 19 is availed of,

nothing further is to be seen by the District court and he has

no option but to transfer the case to the High Court for

decision including the interim injunction application.”

17. Similar view was taken by Single Bench of Karnataka High Court in a

judgment reported as M/s Astral Polytechnic, wherein the Court

held as under:

“15. In that view of the matter, the order passed by the

trial judge refusing to transfer the pending suit to this court

when admittedly the second defendant has taken a defence

under sec. 19 of the Act contending that the design which

is registered in favour of the plaintiff was not registerable

at all, is erroneous and liable to be quashed…..”

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18. To the same effect is a judgment of Jammu and Kashmir High Court

reported as M/s. Escorts Construction Equipment , wherein it is

held that once a defence is taken for revocation of registration, then

in terms of sub-section (4) of Section 22 of the 2000 Act, the Civil

Court has no power to decide the revocation of the design and it is

only the High Court which has to adjudicate upon the matter and

decide as to whether the design is to be cancelled or not. It was held

that the learned trial c ourt committed a legal error in not transferring

the case to the High Court.

19. The Bombay High Court in Whirlpool of India was dealing with a

suit against the Defendant for infringement of the registered designs;

passing off; and the damages. T he defendant never sought the

cancellation of the registration granted to the plaintiff but relied upon

the registration granted to it. In these circumstances, the High Court

held as under:

“19. In support of its contention that the Defendant's

registered design can only be challenged by proceedings under

Section 19 of the Act before the Controller, the Defendant

would argue that the availability of a remedy under Section 19

of the Act for cancellation of a registered design amounts to a

negation and exclusion of remedy under Section 22 of the Act.

This is plainly incorrect. Section 19 and Section 22 of the Act

operate independently in different circumstances. Section 19

of the Act is invoked to seek cancellation of a registration of a

design. Section 22 of the Act is invoked where a registered

design of a proprietor is infringed by any person and the

registered proprietor seeks reliefs in the form of damages,

injunction, etc. against the infringer. Such relief can be sought

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even against a registered proprietor of a design by questioning

his registration. The Defendant too can submit that the

Plaintiff is not entitled to any relief in terms of damages,

injunction etc. by questioning the registration of the Plaintiff's

on grounds available under Section 19 of the Act for

cancellation of a registration. Again, Section 19 entitles a party

to move the Controller for cancellation of a design even where

the registered proprietor is not using the design. Section 19

therefore affords a cause of action where a mere registration

is considered objectionable and a mere factum of registration

affords a cause of action. In marked contrast, Section 22 of

the Act affords a cause of action only where a registered

design is being applied or caused to be applied to any article

for the purposes of sale or in relation to or in connection with

such sale. Consequently, if a registered proprietor does not

apply his design to an article for sale or in connection with

such sale, another registered proprietor cannot have recourse

to Section 22 of the Act. The remedy under Section 22 of the

Act is only available where the impugned design is being used.

A further distinction between Section 19 and 22 of the Act, as

correctly pointed out on behalf of the Plaintiff is that while

Section 19 is applicable to ‘any person interested’, Section 22

is available only to a small segment of such person viz.

registered proprietors. The remedy under Section 19 and the

remedy under Section 22 are therefore very different. They

apply to different persons in different circumstances and for

different reliefs.”

20. In view of the above, the order of the Commercial Court at the District

Level is in accordance with law. However, w e are unable to agree with

the Commercial Court to transfer such suit to Calcutta High Court.

The High Court, where the cause 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 s uit

is liable to be transferred to Madhya Pradesh High Court, Indore

Bench. In fact, the Plaintiff has filed suit at Indore, Madhya Pradesh

only.

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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.

.............................J.

(L. NAGESWARA RAO)

.............................J.

(HEMANT GUPTA)

.............................J.

(AJAY RASTOGI)

New Delhi,

December 1, 2020.