Godrej Sara Lee Ltd. vs Reckitt Benckiser Australia Pty. Ltd.

the Controller of Patents and Designs, Kolkata, 2

under Section 19(1) of the Designs Act, 2000,

cancelling two registered designs for "Insecticide

Coil" in Class 12 belonging to the Respondent No.1

herein. The question for determination before the

High Court in the two appeals was whether the Delhi

High Court had jurisdiction to entertain the same

against the order passed by the Controller of

Patents and Designs, Kolkata. Inasmuch as, in the

said two appeals, it was held by the Delhi High

Court that it had jurisdiction to entertain the

appeals, these two appeals have been preferred by

M/s. Godrej Sara Lee Ltd. against the said

decision.

3. On 27th January, 2005, the Respondent No.1

herein, M/s. Reckitt Benckiser Australia Pty. Ltd.,

filed a suit, being C.S.(O.S.)No.121 of 2005,

against the appellant, in the Delhi High Court

alleging infringement of its Registered Designs

bearing Nos.184136 and 184137. The said suit is 3

yet to be decided. On 4th February, 2005, the

appellant herein filed his written statement in the

suit, inter alia, contending that the aforesaid

Designs of the Respondent No.1 were liable to be

cancelled under Section 22(3) of the Designs Act,

2000, on the ground that registration of the same

had been obtained by concealment of facts and

infringement of the Designs Registration Nos.

197811 and 197426, before the Controller of Designs

at Kolkata. Similarly, the appellant herein also

filed a Designs Cancellation Petition for

cancellation of the Registered Design Nos.184135,

184136 and 184137 standing in the name of the

Respondent No.1 on the same ground as alleged by

the respondent in its petition for cancellation of

the appellant's Designs. After certain

interlocutory proceedings relating to the prayer

made for transfer of the cancellation proceedings

from the Controller of Designs to the Delhi High

Court, the Controller of Designs heard the parties 4

on 5th March, 2008 and reserved his order.

Meanwhile, the respondents filed FAO (OS) No.101/08

against the orders dated 13.2.2008 and 5.3.2008

passed by the Controller of Designs, Kolkata and

the same was converted into a Petition under

Article 227 of the Constitution. Initially the

learned Single Judge was doubtful about the

maintainability of the appeals. Thereafter, on 28th

March, 2008, by three separate orders the

Controller of Designs, Kolkata, cancelled the

Registered Design Nos.184135, 184136 and 184137

belonging to Respondent No.1. As indicated

hereinabove, three First Appeals were preferred

before the Delhi High Court, where a question arose

with regard to the High Court's jurisdiction to

entertain the appeals and by the orders impugned in

these appeals the Delhi High Court held that the

appeals were maintainable and it had jurisdiction

to entertain the same.

5

4. Appearing in support of the appeals, Mr.

Dushyant Dave, learned Senior Advocate, questioned

the decision of the Delhi High Court based on the

interpretation of Section 19(2) read with Section

2(e) of the Designs Act, 2000. He submitted that

the expression "High Court" as used in Section

19(2) and Section 2(e), would have to be read in

relation to the cause of action and not otherwise.

In the instant case, since the cause of action for

the appeal has arisen on account of the

cancellation of Designs by the Controller of

Designs at Kolkata, it is only the Calcutta High

Court, which would have jurisdiction to entertain

the appeals under Section 19. Any other

interpretation would be contrary to the principles

relating to the filing of suits where the cause of

action arises as contemplated under Section 20 of

the Code of Civil Procedure.

6

5. Mr. Dave urged that the High Court appears to

have gone wrong in making a comparison between the

provisions relating to cancellation of designs

under Section 51A of the Designs Act, 1911 and

Section 19 of the Designs Act, 2000. Mr. Dave

urged that while Section 51A of the 1911 Act

allowed a person to move for cancellation directly

before the High Court in its original jurisdiction,

under Section 19 of the 2000 Act an application for

cancellation could only be made to the Controller

of Designs, Kolkata. Mr. Dave urged that the

conclusions arrived at by the High Court on an

analysis of the two provisions were erroneous as

was the reliance placed by the High Court on the

decision in the case of Girdharilal Gupta vs. M/s.

K. Gian Chand Jain & Co. [(1978) 14 D.L.T. 132].

6. Mr. Dave submitted that the decision in the

said case was clearly distinguishable on facts, as

also the finding that the cancellation of a design 7

under Section 51A of the 1911 Act could be filed

either in the High Court having jurisdiction over

the place at which the design is registered or in

the High Court, the local jurisdiction of which has

a nexus with the subject matter of the cause of

action of the application. Mr. Dave urged that in

the said case, the High Court made it clear that an

application for cancellation cannot be made in any

High Court merely because the applicant chose to do

so. In fact, the applicant would have to establish

the jurisdiction of the High Court to which the

application is made by establishing a live link

between the territory in which the cause of action

and the subject matter of the application. Mr.

Dave submitted that the sum total of the decision

in Girdharilal Gupta's case is that in the normal

course both the Calcutta High Court and the High

Court within whose territorial jurisdiction

the cause of action arises, would have

jurisdiction to entertain an appeal under Section 8 19 of the Designs Act, 2000, but in some cases such

jurisdiction would also extend to any other High

Court within the local limits of which a part of

the cause of action and/or subject matter of the

application may arise or be situate. Mr. Dave

urged that the latter part of the findings was not

in consonance with Section 19(2) of the 2000 Act.

7. Mr. Dave submitted that a different view had

been expressed by a learned Single Judge of the

Delhi High Court in M/s. Scooters India Ltd. vs.

M/s. Jaya Hind Industries Ltd. & Anr. [AIR 1988

Delhi 82], wherein it was held that rejection of an

application for grant of patent under the

provisions of the Patents Act, 1970, and the

Patents Rules, 1972, by the Deputy Controller of

Patents and Designs, Bombay, gave rise to a cause

of action whereby appeal against such order of

refusal could be filed only in the Bombay High

Court and not in any other High Court. 9

8. Reference was then made by Mr. Dave to the

decision of this Court in Ambika Industries vs.

Commissioner of Central Excise [(2007) 6 SCC 769],

wherein the question as to which High Court would

have the jurisdiction to entertain an appeal from

an order of the Appellate Tribunal exercising

jurisdiction over several States, was in question

and this Court held that it had to be determined on

the basis of the statutory provisions and nothing

else such as dominus litus or the situs of the

Appellate Tribunal or the cause of action.

Accordingly, where the first forum was located in

the State other than the State where the Appellate

Tribunal was located, the appropriate High Court to

entertain the appeal was the High Court situated in

the former State and not the High Court situated in

the latter State.

9. Mr. Dave also referred to the decision of this

Court in Canon Steels (P) Ltd. vs. Commissioner of 10

Customs [(2007) 14 SCC 464] where the original

order had been passed under the Customs Act at

Mumbai whereas the appellate order was passed by

the Customs Excise and Service Tax Appellate

Tribunal (CESTAT) at Delhi. Appeal under Section

130 of the Customs Act, 1962, filed in the High

Court at Delhi was withdrawn with liberty to file

the appeal in the appropriate place. An appeal was

subsequently filed in the Punjab and Haryana High

Court at Chandigarh on the ground that a part of

the cause of action had arisen at Chandigarh. The

Punjab and Haryana High Court, however, held that

it had no jurisdiction to entertain the appeal.

Affirming the said view, this Court held that since

neither the original nor the appellate orders were

passed within the territorial jurisdiction of the

Punjab and Haryana High Court, it was the Delhi

High Court which had jurisdiction to entertain the

appeal.

11

10. Mr. Dave submitted that similarly since the

order impugned in the appeal had been passed in

Kolkata, it was the Calcutta High Court and not the

Delhi High Court which had jurisdiction to

entertain the statutory appeal under Section 19 of

the Designs Act, 2000.

11. Several other decisions were also cited by Mr.

Dave on similar lines which need not detain us at

present.

12. Mr. Dave submitted that the Delhi High Court

was apparently persuaded to make a comparison

between the provisions of Section 51A of the

Designs Act, 1911 and Section 19(2) of the Designs

Act, 2000, which led to erroneous reliance being

placed on the decision of the Delhi High Court in

Girdharilal Gupta's case (supra) the facts whereof

were completely different and distinguishable from

the facts of this case. Mr. Dave submitted that 12

having regard to the above, the impugned judgment

of the High Court was liable to be set aside.

13. Mr. Chander Lall, learned advocate, appearing

for the Respondent No.1, referred to Sections 19

and 22(2) (b) read with Section 22(3) of the

Designs Act, 2000, and contended that the said

provisions contemplated cancellation of a Design by

the Controller of Designs, and punishment for

piracy of a Design in any suit in any Court not

below that of a District Judge. Mr. Lall submitted

that when such a suit was pending before the High

Court and a defence as provided for under Section

19 of the Act was taken, the matter had to be

decided by the High Court and the Controller ought

not to be left to decide the said issue, as an

appeal from the Controller's order would also lie

to the High Court under Section 19 which could

result in conflict of decisions. In this regard

reference was made to the Full Bench decision of 13

the Delhi High Court in M/s Metro Plastic

Industries (Regd.) vs. M/s Galaxy Footwear, New

Delhi (AIR 2000 Delhi 117), in which the question

for decision was whether an injunction could be

granted in favour of a registered owner of a design

when an application under Section 51-A of the

Designs Act, 1911, was pending. After examining the

provisions of Section 51 A, the Full Bench on a

reference to Sections 53 and 54 relating to piracy

of registered designs and the incorporation of the

provisions of the Patents Act, 1970, into the

Designs Act, held that the powers conferred under

Section 53 were not absolute and did not

contemplate an absolute right in the owner to

prevent all other persons from infringing that

design under all circumstances. It was held further

that Section 53 creates a right in a registered

owner and in the absence of an application for

cancellation such a right can be enforced and no

defence can be taken based on a ground of 14

cancellation. But once an application for

cancellation is filed, the Court trying a suit

under Section 53 would not be entitled to ignore

the same.

14. Mr. Lall then submitted that there were

innumerable instances of appeals having to be filed

at the place where the cause of action had arisen

or the effect thereof was felt. By way of example,

Mr. Lall submitted that appeals against orders

passed by the Company Law Board would lie only

before the Delhi High Court. The decision in

Stridewell Leathers (P) Ltd. vs. Bhankerpur

Simbhaoli Beverages (P) Ltd. [(1994) 1 SCC 34] was

also referred to in this regard.

15. Mr. Lall submitted that full disclosures had

not been made regarding the pendency of the suit

filed by the respondent, which is still pending

decision, wherein the appellant had filed a counter

affidavit and a defence had been taken against 15

cancellation. Mr. Lall submitted that for the

reasons aforesaid and also in view of the fact that

under the Designs Act, 2000, only the Controller of

Designs had the jurisdiction to cancel a design, no

interference was called for with the order of the

Delhi High Court ruling on its jurisdiction to

entertain the Appeals under Section 19 of the 2000

Act.

16. Countering the submissions made by Mr. Lall

with regard to the jurisdiction of the Delhi High

Court, Mr. Dave concluded on the note that after

the enactment of the Design Act, 2000, it is only

the Controller of Designs before whom an

application can be made under Section 19 for

cancellation of a Design in contrast to the

provisions of Section 51 A of the 1911 Act under

which even the High Court could cancel the

registration of a Design. Mr. Dave urged that in

view of the amendments in Section 51-A of the 1911 16

Act the question of jurisdiction of the Delhi High

Court to entertain the appeals has become relevant.

17. The answer to the question thrown up in these

appeals involves the interpretation of the

expression "High Court" used in Sections 19(2) and

22(4) of the 2000 Act and in Section 51A of 1911

Act.

18. Section 51A of the 1911 Act which deals with

"Cancellation of Registration", provides as

follows:

"51A. Cancellation of registration. (1) Any person interested may present a petition for the cancellation of the registration of a design-

(a) at any time after the registration of the design, to the High Court on any of the following grounds, namely:-

(i) that the design has been previously registered in India; or

(ii) that it has been published in India prior to the date of registration ; or

(iii) that the design is not a new or original design ; or 17

(b) within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause

(a).

(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."

19. Section 51A(1)(a) very clearly provides that at

any time after registration of the design, an

application for cancellation of the registration

could be made to the High Court on the grounds

indicated therein. Section 51A(1)(b) makes an

exception and provides that within one year from

the date of registration of the design, an

application could be made for cancellation of the

registration to the Controller on the grounds

specified in Sub-clauses (i) and (ii) of Clause

(a). Section 51A(2) provides that an appeal from 18

the order of the Controller would lie to the High

Court.

20. Section 19 of the 2000 Act, on the other hand,

provides as follows :

"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 19

Court, and the High Court shall decide any petition so referred."

21. In contrast to the provisions of Section

51A(1)(a) of the 1911 Act, Section 19(1) of the

2000 Act, which also deals with cancellation of

registration, provides for a petition for

cancellation of registration of a design to be

filed before the Controller and not to the High

Court. On a comparison of the two provisions of

the two enactments, it will be obvious that under

the 2000 Act the intention of the Legislature was

that an application for cancellation of a design

would lie to the Controller exclusively without the

High Court having a parallel jurisdiction to

entertain such matters. It is also very clear that

all the appeals from any order of the Controller

under Section 19 of the 2000 Act shall lie to the

High Court. The basic difference, therefore, as

was pointed out to the High Court and noticed by

it, is that while under Section 19 of the 2000 Act 20

an application for cancellation would have to be

made to the Controller of Designs, under Section

51A of the 1911 Act an application could be

preferred either to the High Court or within one

year from the date of registration to the

Controller on the grounds specified under Sub-

clauses (i) and (ii) of Clause (a) of Section

51A(1). Under Section 19 of the 2000 Act the power

of cancellation of the registration lies wholly

with the Controller. On the other hand, an

application for cancellation of a design could be

made directly to the High Court under Section 51A

of the 1911 Act. Under the 2000 Act, the High

Court would be entitled to assume jurisdiction only

at the appellate stage, whereas under Section 51A

of the 1911 Act the High Court could itself

directly cancel the registration. Whereas in

Girdharilal Gupta's case (supra), the question of

jurisdiction of the High Court was in relation to

an application made to the High Court directly, in 21

the instant case, we are concerned with an order of

the Controller against which an appeal is required

to be filed before the High Court. While in

Girdharilal Gupta's case the Court was considering

the expression "High Court" in the context of a

fall-out in respect of the ground of registration

and the cause of action arising on account of such

fall-out, in the present case, there is no question

of any consequential impact since the application

for cancellation of registration was on the basis

of fake documents created in order to perpetrate a

fraud.

22. The reliance placed by the High Court on the

judgment in Girdharilal Gupta's case (supra)

appears to be misplaced, inasmuch as, while under

the 1911 Act the High Court acts as an Original

forum, under the 2000 Act the High Court acts as an

Appellate forum, which are two separate

jurisdictions operating in two different fields. 22

In the instant case, the doctrine of cause of

action, as understood under Section 20 C.P.C., has

been imported on the basis of the provisions of

Section 51A of the Designs Act, 1911, whereas the

case of the appellant would fall under Section 19

of the Designs Act, 2000, where the High Court

functions as the Appellate forum. The cause of

action for the instant proceedings is most

certainly the cancellation of the registered design

of the appellant which happened in the State of

West Bengal which gave the Calcutta High Court the

jurisdiction to deal with the matter. The Delhi

High Court, in our view, erred in holding that the

cause of action had arisen within its local

jurisdiction, whereas the jurisdiction of the High

Court was on account of the cancellation of

registration of the design and not on account of

the impact thereof in any particular State. This

is what distinguishes the decision in Girdharilal

Gupta's case from the facts of this case. 23

23. Apart from the fact that the parties to the

suit were in Kolkata, it is clear that the cause of

action for the suit arose in Kolkata by virtue of

the order passed by the Controller in relation to

the appellant's design. As the facts indicate, the

cause of action for the suit arose in Kolkata,

which, in any event, had jurisdiction to entertain

the suit. Having erroneously applied the decision

in Girdharilal Gupta's case (supra) to the facts of

the case, the High Court was led into error in

holding that the consequence of the cancellation

gave jurisdiction to the Delhi High Court to

entertain the suit, without considering in its

proper perspective the provisions of Section 51A of

the 1911 Act in contrast to the provisions of

Section 19 of the 2000 Act.

24. The various decisions cited by Mr. Dave to

support his submissions that the question as to

which High Court would have jurisdiction to 24

entertain an appeal under Section 19, had to be

determined on the basis of the statutory provisions

and not on the basis of dominus litus or the situs

of the Appellate Tribunal or the cause of action.

We are inclined to accept Mr. Dave's submission

that the Delhi High Court had erred in making a

comparison between the provisions of Section 51A of

the 1911 Act and Section 19(2) of the 2000 Act,

which operate on different planes.

25. Having regard to the above, we are of the view

that the impugned order of the Delhi High Court

cannot be sustained and we, accordingly, set aside

the same and hold that in the instant case it is

the Calcutta High Court which will have

jurisdiction to entertain the appeal under Section

19 of the 2000 Act. The proceedings before the

Delhi High Court are, therefore, quashed. The

Appellant is granted leave to move the Calcutta

High Court against the order of cancellation of its 25

design on the grounds taken in these Appeals, as

well as such other grounds as may be relevant for

the purpose of deciding the question of

cancellation of the Appellant's design by the

Controller of Designs, Kolkata, within 30 days from

date. If the appeals are filed within the said

period, the delay in taking such proceedings shall

be condoned.

26. The appeals are, accordingly, allowed, but

there will be no order as to costs.

________________J.

(ALTAMAS KABIR)

________________J.

(CYRIAC JOSEPH) New Delhi Dated:29.01.2010.