Case Note & Summary
The present appeal arose from a suit filed by the respondent, M/s. Mold Tek Packaging Ltd., against the appellant, S.D. Containers Indore, seeking a declaration and permanent injunction to restrain the appellant from copying or using the respondent's registered designs for a Container and Lid (Design Application Nos. 299039 and 299041). The appellant filed a written statement with a counter-claim before the Commercial Court at Indore, seeking cancellation of the registered designs on the ground that they were not new or original under Section 4(a) of the Designs Act, 2000. The appellant also filed an application under Section 22(4) read with Section 19(2) of the Designs Act, 2000, to transfer the suit to the Calcutta High Court. The Commercial Court allowed the transfer application on 23.03.2020. The respondent challenged this order before the Madhya Pradesh High Court, which set aside the transfer order on 01.09.2020, holding that the Commercial Court at Indore was competent to decide the suit under the Commercial Courts Act, 2015, which has overriding effect. The appellant appealed to the Supreme Court. The Supreme Court examined the interplay between Section 22(4) of the Designs Act, 2000, and the Commercial Courts Act, 2015. It noted that the Commercial Courts Act, 2015, is a special enactment with overriding effect under Section 21. Section 7 of the 2015 Act provides that suits transferred under Section 22(4) of the Designs Act shall be heard by the Commercial Division of the High Court, but this applies only to High Courts having ordinary original civil jurisdiction. The Madhya Pradesh High Court does not have such jurisdiction. Therefore, the Commercial Court at the District level, constituted under Section 3 of the 2015 Act, is competent to decide the suit, including the defence of cancellation of design. The Supreme Court held that the High Court's order was correct and dismissed the appeal, affirming that the Commercial Court at Indore could proceed with the suit.
Headnote
A) Intellectual Property Law - Design Infringement - Transfer of Suit - Section 22(4) of the Designs Act, 2000 read with Section 7 of the Commercial Courts Act, 2015 - The issue was whether a suit where the defendant raised a defence of cancellation of design under Section 19 of the Designs Act, 2000, must be transferred to the High Court under Section 22(4) of that Act, or whether the Commercial Court at the District level could decide it. The Supreme Court held that the mandatory transfer under Section 22(4) applies only to High Courts having ordinary original civil jurisdiction. In States where the High Court lacks such jurisdiction, the Commercial Court at the District level is competent to decide the suit, including the defence of cancellation, as the Commercial Courts Act, 2015 is a special enactment with overriding effect under Section 21. (Paras 8-12) B) Commercial Courts Act, 2015 - Overriding Effect - Section 21 - The Commercial Courts Act, 2015, being a special enactment, overrides inconsistent provisions in other laws, including the Designs Act, 2000, except as otherwise provided. The second proviso to Section 7 of the 2015 Act, which mandates transfer of suits under Section 22(4) of the Designs Act to the Commercial Division of the High Court, applies only to High Courts having ordinary original civil jurisdiction. In other areas, the Commercial Court at the District level has jurisdiction. (Paras 9-12) C) Designs Act, 2000 - Cancellation of Design - Section 19 and Section 22(4) - The defence of cancellation of a registered design under Section 19 can be raised in a suit for infringement. Section 22(4) provides for transfer of such suit to the High Court. However, after the enactment of the Commercial Courts Act, 2015, the transfer is mandatory only where the High Court has ordinary original civil jurisdiction. In other cases, the Commercial Court at the District level can decide the suit, including the cancellation defence. (Paras 3-5, 10-12)
Issue of Consideration
Whether a suit involving a defence of cancellation of design under Section 22(4) of the Designs Act, 2000, pending before a Commercial Court at the District level in a State where the High Court does not have ordinary original civil jurisdiction, must be transferred to the High Court, or whether the Commercial Court itself is competent to decide the suit.
Final Decision
The Supreme Court dismissed the appeal, affirming the Madhya Pradesh High Court's order that the Commercial Court at Indore is competent to decide the suit, including the defence of cancellation of design, and no transfer to the High Court is required.
Law Points
- Designs Act
- 2000
- Section 22(4) transfer mandatory only where High Court has ordinary original civil jurisdiction
- Commercial Courts Act
- 2015
- Section 21 overriding effect
- Section 7 second proviso limited to High Courts with ordinary original civil jurisdiction
