Summary
The Court held that a design-infringement suit must be transferred to the High Court when the defendant invokes a cancellation ground available under Section 19 of the Designs Act. The Commercial Courts Act did not displace that requirement for a High Court without ordinary original civil jurisdiction. The proper transferee was the Madhya Pradesh High Court, Indore Bench, where the cause of action arose, rather than Calcutta.
Issues
- Whether the Commercial Courts Act displaced mandatory transfer of a design suit when cancellation was raised as a defence.
- Which High Court should receive the transferred suit.
Provisions considered
- Sections 19 and 22(3)–(4), Designs Act, 2000Distinguished direct cancellation proceedings before the Controller from a cancellation defence in an infringement suit, the latter requiring transfer to the High Court. (¶¶ 5, 11, 12, 13, 14, 15, 16, 17, 18, 19)
- Section 7, including second proviso, Commercial Courts Act, 2015Held that this provision addresses Commercial Divisions in High Courts possessing ordinary original civil jurisdiction and does not prevent transfer to other High Courts under the Designs Act. (¶¶ 5, 8, 9, 10, 11)
- Section 21, Commercial Courts Act, 2015Applied the overriding clause only to an inconsistency; the absence of a contrary transfer provision created no inconsistency with Section 22(4) of the Designs Act. (¶¶ 5, 11)
Held
- A cancellation petition before the Controller and a cancellation defence in a design-infringement suit are independent routes operating in different circumstances. The Controller’s original cancellation jurisdiction does not exclude the High Court’s statutory role in a transferred infringement suit. (¶¶ 12, 13, 14, 19)
- Once the defendant avails itself of a Section 19 cancellation ground as a defence, Section 22(4) mandates transfer. The district court verifies that such a ground has been invoked and does not adjudicate its merits before transfer. (¶¶ 11, 15, 16, 17, 18)
- The Commercial Courts Act contains no provision prohibiting such transfer to a High Court lacking ordinary original civil jurisdiction. Section 21 therefore does not override the Designs Act’s transfer requirement; Section 7’s provision for Commercial Divisions concerns High Courts exercising ordinary original jurisdiction. (¶¶ 8, 9, 10, 11)
- The suit belonged before the High Court within whose jurisdiction the cause of action arose. As the suit had been filed at Indore and no part of the cause of action arose at Kolkata, the proper transferee was the Madhya Pradesh High Court, Indore Bench. (¶¶ 20, 21)
Result
High Court order set aside; matter remitted to the Madhya Pradesh High Court, Indore Bench, to decide the suit according to law. Proposed transfer to Calcutta disapproved.