S. D. CONTAINERS INDORE versus M/S. MOLD TEK PACKAGING LTD.

Citation: [2020] 12 S.C.R. 1104 · Decided: 01-12-2020 · Supreme Court of India · Bench: L. NAGESWARA RAO

cites 1 · see the full citation network in Lexace

Judgment (excerpt)

A
B
C
D
E
F
G
H
1104
SUPREME COURT REPORTS
[2020] 12 S.C.R.
S. D. CONTAINERS INDORE
v.
M/S. MOLD TEK PACKAGING LTD.
(Civil Appeal No. 3695 of 2020)
DECEMBER 01, 2020
[L. NAGESWARA RAO, HEMANT GUPTA AND
AJAY RASTOGI, JJ.]
Design Act, 2000 – ss. 19 and 22 – Commercial Courts Act,
2015 – s. 3 – Plaintiff/respondent filed 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 container and lid registered – The defendant/appellant
filed written statement along with the counter-claim before the
Commercial Court, inter-alia sought cancellation of the registered
designs as same could not be registered in terms of s. 4(a) of the
2000 Act – The appellant also filed an application u/s. 22(4) r/w. s.
19(2) of the Design Act, 2000 to transfer the suit to the Madhya
Pradesh High Court, Indore Bench – The District Judge allowed
the said application and transferred the suit to the Calcutta High
Court – The said order was challenged before the Madhya Pradesh
High Court – The High Court relied upon Godrej Sara Lee Ltd case
and held 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 – On
appeal, held: In the Godrej Sara Lee Ltd., it was held that any
application for cancellation of registration u/s. 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 s. 22(4) of the 2000 Act – Such judgment was wrongly
relied upon by the High Court – The order of the Commercial Court
of the District Level is in accordance with law – However, the view
of the Commercial Court to transfer such suit to Calcutta High Court
is not correct – The High Court where the cause of action arises
[2020] 12 S.C.R. 1104
1104
A
B
C
D
E
F
G
H
1105
has the jurisdiction to entertain the suit – 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 –
The order of the High Court is not sustainable – The matter remitted
to the High Court of Madhya Pradesh, Indore Bench to decide the
suit in accordance with law.
Remitting the matter to High Court, the Court
HELD: 1. The judgment in Godrej Sara Lee arises out of
an order passed by the Controller of Patent & Designs, Kolkata
under Section 19(1) of the Design Act, 2000, cancelling the
registered designs belonging to the respondent therein. The
question examined was as to whether 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 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. [Para 12][1113-H; 1114-
A-C]
2. 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. [Para 13][1114-C-E]
S.

Excerpt shown. Read the full judgment & AI analysis in Lexace.