S. D. CONTAINERS INDOREversusM/S. MOLD TEK PACKAGING LTD.

1104                     [2020] REPORTS
                SUPREME COURT   12 S.C.R. 1104              [2020] 12 S.C.R.


 A                        S. D. CONTAINERS INDORE
                                         v.
                      M/S. MOLD TEK PACKAGING LTD.
                          (Civil Appeal No. 3695 of 2020)
 B                            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
 C
       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
 D     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
 E
       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
 F     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
 G
       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
 H     is not correct – The High Court where the cause of action arises
                                        1104
                 S. D. CONTAINERS INDORE v.                                1105
               M/S. MOLD TEK PACKAGING LTD.

has the jurisdiction to entertain the suit – Since, no part of cause of    A
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.
                                                                           B
      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                C
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           D
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-              E
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           F
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           G
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]
                                                                           H
1106            SUPREME COURT REPORTS                       [2020] 12 S.C.R.


 A            3. 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 basis of registration certificate, the defendant
       has been given the right to seek revocation of registration. In
 B
       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 causes
       of action. [Para 14][1114-F-G]
              4. In view of the above, the order of the Commercial Court
 C     at the District Level is in accordance with law. However, this
       Court does not 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
 D     the jurisdiction of Kolkata, the suit is liable to be transferred to
       Madhya Pradesh High Court, Indore Bench. In fact, the Plaintiff
       has filed suit at Indore, Madhya Pradesh only. [Para 20][1117-E-
       F]
             Godrej Sara Lee Ltd. v. Reckitt Benckiser Australia Pty.
 E           Ltd. and another (2010) 2 SCC 535 : [2010]
             2 SCR 147; R. N. Gupta and Co. Ltd. Jasola New Delhi
             v. M/s Action Construction Equipments Ltd. Dudhohla
             and 3 others (2016) SCC OnLine All 975 – referred
             to.

 F           M/s Astral Polytechnic Limited v. M/s Ashirwad Pipes
             Private Ltd. ILR 2008 Kar 2533; M/s. Escorts
             Construction Equipment Ltd. v. M/s Gautam
             Engineering Company and another AIR 2010 J&K 13;
             Salutri Remedies v. Unim Pharma Lab Pvt. Ltd. (2009)
             SCC OnLine Guj 9488; Standard Glass Beads Factory
 G           and another v. Shri Dhar and Ors. AIR 1961 All 101;
             Whirlpool of India v. Videocon Industries Ltd. (2014)
             SCC OnLine Bom 565 – referred to.
                              Case Law Reference
       [2010] 2 SCR 147                referred to              Para 4
 H
                       S. D. CONTAINERS INDORE v.                            1107
                     M/S. MOLD TEK PACKAGING LTD.

      CIVIL APPELLATE JURISDICTION: Civil Appeal No. 3695                    A
of 2020.
      From the Judgment and Order dated 01.09.2020 of the High Court
of Madhya Pradesh, Indore Bench in the Miscellaneous Petition No.
2156 of 2020.
      Jai Sai Deepak, Ms. Renuka Sahu, Abhijeet Deshmukh, Tarun              B
Khurana, Ms. Meenakshi Ogra, Ms. Suvangana Agarwal, Rahul Gupta,
Vijay Assudani, Ms. Pragati Neekhra, Advs. for the appearing parties.
          The Judgment of the Court was delivered by
          HEMANT GUPTA, J.                                                   C
       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 22(4) of the Design Act,
20001 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,     D
Indore is itself competent to decide the suit in terms of the Commercial
Courts Act, 20152.
      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
                                                                             E
of Container 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 designs
                                                                             F
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     G
High Court.
       4. The said order passed by Commercial Court was challenged
by the plaintiff/respondent before the Madhya Pradesh High Court. The
1
    for short the ‘2000 Act’
2
    for short the ‘2015 Act’                                                 H
1108                 SUPREME COURT REPORTS                        [2020] 12 S.C.R.


 A     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 another3 to hold that the legislature intended that an application
       for cancellation of registration of design would lie to the Controller
 B
       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.
 C           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
 D              which—
                (a) is not new or original; or
                (b) xx             xx               xx
                (c) xx             xx               xx
 E              (d) xx             xx               xx
                shall not be registered.”
                Xx                 xx               xx
                19. Cancellation of registration.—(1) Any person interested
 F              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
 G              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

       3
           (2010) 2 SCC 535
 H
           S. D. CONTAINERS INDORE v.                                     1109
M/S. MOLD TEK PACKAGING LTD. [HEMANT GUPTA, J.]

  (e) that it is not a design as defined under clause (d) of section 2.   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.
                     Xx               xx                xx                B

  22. Piracy of registered design. —
  (1)       xx                        xxx               xxx
  (2)       xx                        xxx               xxx
                                                                          C
  (3) In any suit or any other proceeding for relief under sub-
  section (2), ever ground on which the registration of a design may
  be cancelled under section 19 shall be available as a ground of
  defence.
  (4) Notwithstanding anything contained in the second proviso to
                                                                          D
  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.       E
  (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
                                                                          F
  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:                                                         G

  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:
                                                                          H
1110      SUPREME COURT REPORTS                           [2020] 12 S.C.R.


 A     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.
 B
       [(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.]
 C
       (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.
 D
       (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].
 E
       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
 F     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 2[ordinary original civil jurisdiction],
       the Chief Justice of the High Court may, by order, constitute
 G     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

 H
               S. D. CONTAINERS INDORE v.                                     1111
    M/S. MOLD TEK PACKAGING LTD. [HEMANT GUPTA, J.]

      7. Jurisdiction of Commercial Divisions of High Courts.—                A
      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:
                                                                              B
      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:                                                      C
      Provided further that all suits and applications transferred to the
      High Court by virtue of sub-section (4) of section 22 of the 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         D
      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      E
      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 counsel for the appellant referred
to the judgments reported as M/s Astral Polytechnic Limited v.
M/s Ashirwad Pipes Private Ltd.4, R. N. Gupta and Co. Ltd. Jasola             F
New Delhi v. M/s Action Construction Equipments Ltd. Dudhohla
and 3 others. 5, M/s. Escorts Construction Equipment Ltd. v.
M/s Gautam Engineering Company and another6, Salutri Remedies
v. Unim Pharma Lab Pvt. Ltd7 and Standard Glass Beads Factory
and another v. Shri Dhar and Ors8 to contendthat the High Court
                                                                              G
erred in law in transferring the suit to the Commercial Court (District
4
  ILR 2008 Kar 2533
5
  2016 SCC OnLine All 975
6
  AIR 2010 J&K 13
7
  2009 SCC OnLine Guj 9488
8
  AIR 1961 All 101                                                            H
1112               SUPREME COURT REPORTS                          [2020] 12 S.C.R.


 A     Level) while setting aside the order passed by the Commercial Court to
       transfer the said suit to the 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
 B
       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.9 to support the
       order passed by the High Court.
 C
               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
 D     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 Act, the Court of District Judge at
 E     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
 F     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
 G     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

       9
 H         2014 SCC OnLine Bom 565
             S. D. CONTAINERS INDORE v.                                          1113
  M/S. MOLD TEK PACKAGING LTD. [HEMANT GUPTA, J.]

Court by virtue of sub-section (4) of Section 22 of 2000 Act shall be            A
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.
        10. It is thus contended that in the High Courts having ordinary
original civil jurisdiction, the suits which have been transferred to the        B
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 the 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 dealing    C
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          D
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         E
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 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           F
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 learned counsel
for the Appellant that if a suit is to be transferred to Commercial Division
of the High Court having ordinary original civil jurisdiction, then the Civil    G
Suit in which there is plea to revoke the registered design has to be
transferred to the High Court where there is no ordinary original civil
jurisdiction.
      12. The judgment in Godrej Sara Lee arises out of an order
passed by the Controller of Patent & Designs, Kolkata under Section              H
1114                 SUPREME COURT REPORTS                       [2020] 12 S.C.R.


 A     19(1) of the 2000 Act, 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
 B
       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 10.
 C            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
 D     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
 E     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 basis of
 F     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
       causes of action.
 G            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:
 H     10
            for short the ‘1911 Act’
             S. D. CONTAINERS INDORE v.                                        1115
  M/S. MOLD TEK PACKAGING LTD. [HEMANT GUPTA, J.]

      “10. The expression “shall be transferred” in our judgment means         A
      “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
                                                                               B
      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:                            C

      “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 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        D
      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      E
      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            F
      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          G
      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:                                                           H
1116             SUPREME COURT REPORTS                          [2020] 12 S.C.R.


 A           “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…..”
 B
               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
 C     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 court committed a legal error in not transferring the case to the
       High Court.
              19. The Bombay High Court in Whirlpool of India was dealing
 D     with a suit against the Defendant for infringement of the registered
       designs; passing off; and the damages. The 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:
 E           “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
 F           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
 G           of damages, injunction, etc. against the infringer. Such relief can
             be sought 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
 H           grounds available under Section 19 of the Act for cancellation of
             S. D. CONTAINERS INDORE v.                                           1117
  M/S. MOLD TEK PACKAGING LTD. [HEMANT GUPTA, J.]

      a registration. Again, Section 19 entitles a party to move the              A
      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
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      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             C
      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.
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      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, we are unable to           E
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
suit is liable to be transferred to Madhya Pradesh High Court, Indore             F
Bench. In fact, the Plaintiff has filed suit at Indore, Madhya Pradesh
only.
       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             G
with law.


Ankit Gyan                                       Matter remitted to High Court.


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