S. D. CONTAINERS INDORE versus M/S. MOLD TEK PACKAGING LTD. on 1 December 2020

SUPREME COURT REPORTS

[2020] 12 S.C.R.

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S. D. CONTAINERS INDORE

v.

M/S. MOLD TEK PACKAGING LTD.

(Civil Appeal No. 3695 of 2020)

BDECEMBER 01, 2020

[L. NAGESWARA RAO, HEMANT GUPTA ANDAJAY RASTOGI, JJ.]

Design Act, 2000 – ss. 19 and 22 – Commercial Courts Act,2015 – s. 3 – Plaintiff/respondent filed suit for declaration andCpermanent injunction to restrain the appellants from either directlyor indirectly copying, using or enabling others to use the plaintiff’sdesign of container and lid registered – The defendant/appellantfiled written statement along with the counter-claim before theCommercial Court, inter-alia sought cancellation of the registeredDdesigns as same could not be registered in terms of s. 4(a) of the2000 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 MadhyaPradesh High Court, Indore Bench – The District Judge allowedthe said application and transferred the suit to the Calcutta HighCourt – The said order was challenged before the Madhya PradeshEHigh Court – The High Court relied upon Godrej Sara Lee Ltd caseand held that an application for cancellation of registration of designwould lie to the Controller exclusively without the High Court havinga parallel jurisdiction to entertain such matter because the appealsfrom the order of the Controller lie before the High Court – OnFappeal, held: In the Godrej Sara Lee Ltd., it was held that anyapplication for cancellation of registration u/s. 19 could be filedonly before the Controller and not to the High Court – Therefore, inthese circumstances, it was held that the High Court would be entitledto assume jurisdiction only in appeal – It was not a case of suit forinfringement in which the defendant has raised a plea of revocationGof registration which is required to be transferred to the High Courtin terms of s. 22(4) of the 2000 Act – Such judgment was wronglyrelied upon by the High Court – The order of the Commercial Courtof the District Level is in accordance with law – However, the viewof the Commercial Court to transfer such suit to Calcutta High CourtHis not correct – The High Court where the cause of action arises1104

has the jurisdiction to entertain the suit – Since, no part of cause ofaction has arisen within the jurisdiction of Kolkata, the suit is liableto be transferred to Madhya Pradesh High Court, Indore Bench –The order of the High Court is not sustainable – The matter remittedto the High Court of Madhya Pradesh, Indore Bench to decide thesuit in accordance with law.

Remitting the matter to High Court, the Court HELD: 1. The judgment in Godrej Sara Lee arises out ofan order passed by the Controller of Patent & Designs, Kolkataunder Section 19(1) of the Design Act, 2000, cancelling theregistered designs belonging to the respondent therein. Thequestion examined was as to whether the Delhi High Court hasjurisdiction to entertain the appeals against the order of theController. The respondent had also filed a civil suit before theDelhi High Court alleging infringement of registered designs andthus seeking cancellation of the designs. Later, the Controller ofDesign cancelled three designs belonging to the respondent. Thisorder of cancellation was challenged by the respondent beforethe High Court. In these circumstances, the question examinedwas regarding interpretation of the expression High Court usedin Section 19(2) and 22(4) of the 2000 Act and Section 51A of theIndian Patents and Designs Act, 1911. [Para 12][1113-H; 1114-A-C]

2. It was held that any application for cancellation ofregistration under Section 19 could be filed only before theController and not to the High Court. Therefore, in thesecircumstances, it was held that the High Court would be entitledto assume jurisdiction only in appeal. It was not a case of suit forinfringement in which the defendant has raised a plea of revocationof registration which is required to be transferred to the HighCourt in terms of Section 22(4) of the 2000 Act. Therefore, suchjudgment has been wrongly relied upon by the High Courtassuming that the proceedings are before the Controller and thatthe plaintiff/respondent had filed a suit for infringement whereina plea of revocation of registration was raised which was requiredto be transferred to the High Court in terms of Section 22(4) ofthe 2000 Act. [Para 13][1114-C-E]

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A3. Furthermore, in the 2000 Act, there are two optionsavailable to seek revocation of registration. One of them is beforethe Controller, appeal against which would lie before the HighCourt. Second, in a suit for infringement in a proceeding beforethe civil court on the basis of registration certificate, the defendanthas been given the right to seek revocation of registration. InBthat eventuality, the suit is to be transferred to the High Court interms of sub-section (4) of Section 22 of the 2000 Act. Both areindependent provisions giving rise to different and distinct causesof action. [Para 14][1114-F-G]

4. In view of the above, the order of the Commercial CourtCat the District Level is in accordance with law. However, thisCourt does not agree with the Commercial Court to transfer suchsuit to Calcutta High Court. The High Court, where the cause ofaction arises has the Jurisdiction to entertain the Suit in terms ofGodrej Sara Lee. Since no part of cause of action has arisen withinDthe jurisdiction of Kolkata, the suit is liable to be transferred toMadhya Pradesh High Court, Indore Bench. In fact, the Plaintiffhas filed suit at Indore, Madhya Pradesh only. [Para 20][1117-E-F]

Godrej Sara Lee Ltd. v. Reckitt Benckiser Australia Pty.ELtd. and another (2010) 2 SCC 535 : [2010]2 SCR 147; R. N. Gupta and Co. Ltd. Jasola New Delhiv. M/s Action Construction Equipments Ltd. Dudhohlaand 3 others (2016) SCC OnLine All 975 – referredto.

FM/s Astral Polytechnic Limited v. M/s Ashirwad PipesPrivate Ltd. ILR 2008 Kar 2533; M/s. EscortsConstruction Equipment Ltd. v. M/s GautamEngineering Company and another AIR 2010 J&K 13;Salutri Remedies v. Unim Pharma Lab Pvt. Ltd. (2009)SCC OnLine Guj 9488; Standard Glass Beads FactoryGand 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 147H

referred to

Para 4

M/S. MOLD TEK PACKAGING LTD.

CIVIL APPELLATE JURISDICTION: Civil Appeal No. 3695of 2020.

From the Judgment and Order dated 01.09.2020 of the High Courtof Madhya Pradesh, Indore Bench in the Miscellaneous Petition No.2156 of 2020.

Jai Sai Deepak, Ms. Renuka Sahu, Abhijeet Deshmukh, TarunKhurana, 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.

1. The present appeal has been filed to challenge an order passedby the Madhya Pradesh High Court, setting aside an order dated23.03.2020 transferring the suit under Section 22(4) of the Design Act,2000[1] to the Calcutta High Court. It is the said order which was setaside by the High Court on 1.9.2020 directing that the Commercial Court,Indore is itself competent to decide the suit in terms of the CommercialCourts Act, 2015[2].

2. The plaintiff/respondent herein filed a suit for declaration andpermanent injunction to restrain the appellants from either directly orindirectly copying, using or enabling others to use the plaintiff’s designof Container and Lid registered under Design Application Nos. 299039and 299041 respectively.

3. In the said suit, the defendant/appellant had filed a writtenstatement along with the counter-claim before the Commercial Court,inter alia seeking cancellation of the abovementioned registered designsfor the reason that the said designs were not new or original and hencecould not be registered in terms of Section 4(a) of the 2000 Act. Theappellant also filed an application under Section 22(4) read with Section19(2) of the 2000 Act to transfer the suit to the Madhya Pradesh HighCourt, Indore Bench. It is the said application which was allowed by thelearned District Judge and the suit was thus transferred to the CalcuttaHigh Court.

4. The said order passed by Commercial Court was challengedby the plaintiff/respondent before the Madhya Pradesh High Court. The 1 for short the ‘2000 Act’

2 for short the ‘2015 Act’

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AHigh Court examined the question as to whether the proceedings of thesaid suit was liable to be transferred to the High Court or if the CommercialCourt at Indore was competent to decide the matter. The High Courtrelied upon Godrej Sara Lee Ltd. vs Reckitt Benckiser Australia Pty.Ltd. and another[3]to hold that the legislature intended that an applicationfor cancellation of registration of design would lie to the ControllerBexclusively without the High Court having a parallel jurisdiction to entertainsuch matter because the appeals from the order of the Controller liebefore the High Court. It was further held that the 2015 Act is a specialenactment having an overriding effect, save as otherwise provided theprovisions, by virtue of Section 21 of the said Act.

C5. The relevant provisions of the statutes, i.e. the 2000 Act andthe 2015 Act are reproduced below:

“The Design Act, 2000

4. Prohibition of registration of certain designs.—A designwhich—D

(a) is not new or original; or

19. Cancellation of registration.—(1) Any person interestedFmay present a petition for the cancellation of the registration of adesign at any time after the registration of the design, to theController 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 priorGto 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 thissection to the High Court, and the Controller may at any timerefer any such petition to the High Court, and the High Court shalldecide any petition so referred.

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22. Piracy of registered design. —

(3) In any suit or any other proceeding for relief under sub-section (2), ever ground on which the registration of a design maybe cancelled under section 19 shall be available as a ground ofdefence.

(4) Notwithstanding anything contained in the second proviso tosub-section (2), where any ground or which the registration of adesign may be cancelled under section 19 has been availed of asa ground of defence under sub-section (3) in any suit or otherproceeding for relief under sub-section (2), the suit or such otherproceedings shall be transferred by the Court, in which the suit orsuch other proceeding is pending, to the High Court for decision.

(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 shallcause an entry thereof to be made in the register of designs.

THE COMMERCIAL COURTS ACT, 2015

3. Constitution of Commercial Courts.— (1) The StateGovernment, may after consultation with the concerned High Court,by notification, constitute such number of Commercial Courts atDistrict level, as it may deem necessary for the purpose ofexercising the jurisdiction and powers conferred on those Courtsunder this Act:

Provided that with respect to the High Courts having ordinaryoriginal civil jurisdiction, the State Government may, afterconsultation with the concerned High Court, by notification,constitute Commercial Courts at the District Judge level:

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AProvided further that with respect to a territory over which theHigh Courts have ordinary original civil jurisdiction, the StateGovernment may, by notification, specify such pecuniary valuewhich shall not be less than three lakh rupees and not more thanthe pecuniary jurisdiction exercisable by the District Courts, as itmay consider necessary.B

[(1A) Notwithstanding anything contained in this Act, the StateGovernment may, after consultation with the concerned High Court,by notification, specify such pecuniary value which shall not beless than three lakh rupees or such higher value, for whole or partof the State, as it may consider necessary.]C

(2) The State Government shall, after consultation with theconcerned High Court specify, by notification, the local limits ofthe area to which the jurisdiction of a Commercial Court shallextend and may, from time to time, increase, reduce or alter suchlimits.

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(3) The [State Government may], with the concurrence of theChief Justice of the High Court appoint one or more persons havingexperience in dealing with commercial disputes to be the Judge orJudges, of a [Commercial Court either at the level of District Judgeor a court below the level of a District Judge].

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3A. Designation of Commercial Appellate Courts.— Exceptthe territories over which the High Courts have ordinary originalcivil jurisdiction, the State Government may, after consultation withthe concerned High Court, by notification, designate such numberof Commercial Appellate Courts at District Judge level, as it mayFdeem necessary, for the purposes of exercising the jurisdictionand 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, constituteGCommercial Division having one or more Benches consisting of asingle Judge for the purpose of exercising the jurisdiction andpowers conferred on it under this Act.

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7. Jurisdiction of Commercial Divisions of High Courts.—All suits and applications relating to commercial disputes of aSpecified Value filed in a High Court having ordinary original civiljurisdiction shall be heard and disposed of by the CommercialDivision of that High Court:

Provided that all suits and applications relating to commercialdisputes, stipulated by an Act to lie in a court not inferior to aDistrict Court, and filed or pending on the original side of the HighCourt, shall be heard and disposed of by the Commercial Divisionof the High Court:

Provided further that all suits and applications transferred to theHigh Court by virtue of sub-section (4) of section 22 of the DesignsAct, 2000 (16 of 2000) or section 104 of the Patents Act, 1970(39 of 1970) shall be heard and disposed of by the CommercialDivision of the High Court in all the areas over which the HighCourt exercises ordinary original civil jurisdiction.

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21. Act to have overriding effect.— Save as otherwise provided,the provisions of this Act shall have effect, notwithstandinganything inconsistent therewith contained in any other law for thetime being in force or in any instrument having effect by virtue ofany law for the time being in force other than this Act.”

6. Mr. Jai Sai Deepak, learned counsel for the appellant referredto the judgments reported as M/s Astral Polytechnic Limited v.M/s Ashirwad Pipes Private Ltd.[4], R. N. Gupta and Co. Ltd. JasolaNew Delhi v. M/s Action Construction Equipments Ltd. Dudhohlaand 3 others.[5], M/s. Escorts Construction Equipment Ltd. v.M/s Gautam Engineering Company and another[6], Salutri Remediesv. Unim Pharma Lab Pvt. Ltd[7] and Standard Glass Beads Factoryand another v. Shri Dhar and Ors[8 ]to contendthat the High Courterred 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

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ALevel) while setting aside the order passed by the Commercial Court totransfer the said suit to the High Court. It was also argued that the HighCourt erred in holding that since an appeal against the order of cancellationby the Controller lies to the High Court, the transfer would not besustainable for the reason that the appellate jurisdiction is distinct fromthe original jurisdiction in a plea for cancellation of the design in a suit inBterms of the provisions of 2000 Act.

7. On the other hand, Mr. Assudani, learned counsel for therespondent relied upon the order of this- Court in Godrej Sara Lee aswell as Whirlpool of India v. Videocon Industries Ltd.[9]to support theorder passed by the High Court.C

8. We have heard learned counsel for the parties. The 2015 Actdeals with two situations i.e. the High Courts which have ordinary originalcivil jurisdiction and the High Courts which do not have such jurisdiction.The High Court of Madhya Pradesh does not have the ordinary originalcivil jurisdiction. In areas where the High Courts do not have ordinaryDoriginal civil jurisdiction, the Commercial Courts at the District Level areto be constituted under Section 3 of the 2015 Act. The State Governmentis also empowered to fix the pecuniary limit of the Commercial Courtsat the District Level in consultation with the concerned High Court. Interms of Section 3(2) of the 2015 Act, the Court of District Judge atEIndore is notified to be a Commercial Court. “Commercial Dispute”within the meaning of Section 2(c)(xvii) of the Act, 2015 includes thedispute pertaining to “intellectual property rights relating to registeredand unregistered trademarks, copyright, patent, design, domain names,geographical indications and semiconductor integrated circuits.”Therefore, disputes related to design are required to be instituted beforeFa Commercial Court constituted under Section 3 of the said Act.

9. On the other hand, Section 4 of the 2015 Act provides thatwhere the High Courts have ordinary original civil jurisdiction, aCommercial Division is required to be constituted. Further, in terms ofSection 5 of the Act, a Commercial Appellate Division is required to beGconstituted. Section 7 of the Act deals with the suits and applicationsrelating to the commercial disputes of a specified value filed in the HighCourt having ordinary original jurisdiction, whereas, the second provisocontemplates that all suits and the applications transferred to the High H9 2014 SCC OnLine Bom 565

Court by virtue of sub-section (4) of Section 22 of 2000 Act shall beheard and disposed of by the Commercial Division of the High Court inall the areas over which the High Court exercises ordinary original civiljurisdiction.

10. It is thus contended that in the High Courts having ordinaryoriginal civil jurisdiction, the suits which have been transferred to theHigh Court by virtue of sub-section (4) of Section 22 of the Act arerequired to be dealt with by the Commercial Division of the High Courtinstead of a Bench of the High Court, in terms of the Rules appliable toeach High Court. Thus, the suit pertaining to design under the 2000 Actwould be transferred to the Commercial Division from the ordinary originalcivil jurisdiction, i.e., from one Bench to the other exclusive Court dealingwith Commercial Disputes.

11. It is pertinent to mention that Section 7 of the 2015 Act onlydeals with the situation where the High Courts have ordinary originalcivil jurisdiction. There is no provision in the 2015 Act either prohibitingor permitting the transfer of the proceedings under the 2000 Act to theHigh Courts which do not have ordinary original civil jurisdiction. Further,Section 21 of the 2015 Act gives an overriding effect, only if the provisionsof the Act have anything inconsistent with any other law for the timebeing in force or any instrument having effect by virtue of law otherthan this Act. Since the 2015 Act has no provision either prohibiting orpermitting the transfer of proceedings under the 2000 Act, Section 21 ofthe 2015 Act cannot be said to be inconsistent with the provisions of the2000 Act. It is only the inconsistent provisions of any other law whichwill 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 thedesign which necessarily mandates the Courts to transfer the suit. Thetransfer of suit is a ministerial act if there is a prayer for cancellation ofthe registration. In fact, transfer of proceedings from one Bench to theCommercial Division supports the argument raised by learned counselfor the Appellant that if a suit is to be transferred to Commercial Divisionof the High Court having ordinary original civil jurisdiction, then the CivilSuit in which there is plea to revoke the registered design has to betransferred to the High Court where there is no ordinary original civiljurisdiction.

12. The judgment in Godrej Sara Lee arises out of an orderpassed by the Controller of Patent & Designs, Kolkata under Section A

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A19(1) of the 2000 Act, cancelling the registered designs belonging to therespondent therein. The question examined was as to whether the DelhiHigh Court has jurisdiction to entertain the appeals against the order ofthe Controller. The respondent had also filed a civil suit before the DelhiHigh Court alleging infringement of registered designs and thus seekingcancellation of the designs. Later, the Controller of Design cancelledBthree designs belonging to the respondent. This order of cancellationwas challenged by the respondent before the High Court. In thesecircumstances, the question examined was regarding interpretation ofthe expression High Court used in Section 19(2) and 22(4) of the 2000Act and Section 51A of the Indian Patents and Designs Act, 1911[10].

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13. It was held that any application for cancellation of registrationunder Section 19 could be filed only before the Controller and not to theHigh Court. Therefore, in these circumstances, it was held that the HighCourt would be entitled to assume jurisdiction only in appeal. It was nota case of suit for infringement in which the defendant has raised a pleaDof revocation of registration which is required to be transferred to theHigh Court in terms of Section 22(4) of the 2000 Act. Therefore, suchjudgment has been wrongly relied upon by the High Court assuming thatthe proceedings are before the Controller and that the plaintiff/respondenthad filed a suit for infringement wherein a plea of revocation of registrationwas raised which was required to be transferred to the High Court inEterms of Section 22(4) of the 2000 Act.

14. Furthermore, in the 2000 Act, there are two options availableto seek revocation of registration. One of them is before the Controller,appeal against which would lie before the High Court. Second, in a suitfor infringement in a proceeding before the civil court on the basis ofFregistration certificate, the defendant has been given the right to seekrevocation of registration. In that eventuality, the suit is to be transferredto the High Court in terms of sub-section (4) of Section 22 of the 2000Act. Both are independent provisions giving rise to different and distinctcauses of action.G15. In Standard Glass Beads the 1911 Act was under examination

15. In Standard Glass Beads, the 1911 Act was under examinationbefore the Division Bench of the Allahabad High Court. Section 29thereof permits a suit to be filed by a patentee wherein the defendantcould raise a plea of revocation of patent in a counter-claim. ConsideringSection 29 of the Act, it was held as under:H10 for short the ‘1911 Act’

“10. The expression “shall be transferred” in our judgment means“shall stand transferred”; and the District Judge is left with nojurisdiction save to make such order as is necessary to secure thephysical transfer of the records of the case to the High Court. Ifthis meaning be not given to these words there will be an elementof uncertainty both with regard to the time when the record of thecase is to be sent to the High Court and to the powers of theDistrict Court during the period which is allowed to elapse beforethe record is in fact transferred.”

16. The said view was reiterated by another Single Bench ofAllahabad High Court in a judgment reported as R. N. Gupta after theenactment of the 2000 Act. The Court held as under:

“35. Apart from that, looking from another angle, in case it is leftopen to District Court to proceed further to record any satisfactionon the material filed on record in support of the ground taken bythe defendant as available under Section 19, it would mean thatthe District Court would be entering into the jurisdiction of theController of the Designs as provided to him under Section 19 orof the High Court, in case any such proceedings for cancellationof registration are proceeded further by the Controller of Designsor are sent to the High Court. To my mind, the District Court cango only to the extent of satisfying itself as to whether ground, onwhich the registration of design may be cancelled under Section19, has been availed as a ground of defence or not. It cannot gointo the merits of the defence so taken by the defendant as itwould amount to exceeding his jurisdiction, which can only begone into by the High Court on transfer of the case to the Highcourt as to whether there is any force or not in such defencetaken by the defendant under Section 19 of the Act.

36. In such view of the matter, once, on bare reading of the replyfiled to the interim injunction application, it is found that that adefence or ground under Section 19 is availed of, nothing furtheris to be seen by the District court and he has no option but totransfer the case to the High Court for decision including the interiminjunction application.”

17. Similar view was taken by Single Bench of Karnataka HighCourt in a judgment reported as M/s Astral Polytechnic, wherein theCourt held as under:

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1116SUPREME COURT REPORTS

A“15. In that view of the matter, the order passed by the trial judgerefusing to transfer the pending suit to this court when admittedlythe second defendant has taken a defence under sec. 19 of theAct contending that the design which is registered in favour ofthe plaintiff was not registerable at all, is erroneous and liable tobe quashed…..”B

18. To the same effect is a judgment of Jammu and Kashmir High Court reported as M/s. Escorts Construction Equipment, whereinit is held that once a defence is taken for revocation of registration, thenin terms of sub-section (4) of Section 22 of the 2000 Act, the Civil Courthas no power to decide the revocation of the design and it is only theCHigh Court which has to adjudicate upon the matter and decide as towhether the design is to be cancelled or not. It was held that the learnedtrial court committed a legal error in not transferring the case to theHigh Court.

19. The Bombay High Court in Whirlpool of India was dealingDwith a suit against the Defendant for infringement of the registereddesigns; passing off; and the damages. The defendant never sought thecancellation of the registration granted to the plaintiff but relied upon theregistration granted to it. In these circumstances, the High Court held asunder:E

“19. In support of its contention that the Defendant’s registereddesign can only be challenged by proceedings under Section 19 ofthe Act before the Controller, the Defendant would argue that theavailability of a remedy under Section 19 of the Act for cancellationof a registered design amounts to a negation and exclusion ofFremedy under Section 22 of the Act. This is plainly incorrect.Section 19 and Section 22 of the Act operate independently indifferent circumstances. Section 19 of the Act is invoked to seekcancellation of a registration of a design. Section 22 of the Act isinvoked where a registered design of a proprietor is infringed byany person and the registered proprietor seeks reliefs in the formGof damages, injunction, etc. against the infringer. Such relief canbe sought even against a registered proprietor of a design byquestioning his registration. The Defendant too can submit thatthe Plaintiff is not entitled to any relief in terms of damages,injunction etc. by questioning the registration of the Plaintiff’s onHgrounds available under Section 19 of the Act for cancellation of

a registration. Again, Section 19 entitles a party to move theController for cancellation of a design even where the registeredproprietor is not using the design. Section 19 therefore affords acause of action where a mere registration is consideredobjectionable and a mere factum of registration affords a causeof action. In marked contrast, Section 22 of the Act affords acause of action only where a registered design is being applied orcaused to be applied to any article for the purposes of sale or inrelation to or in connection with such sale. Consequently, if aregistered proprietor does not apply his design to an article forsale or in connection with such sale, another registered proprietorcannot have recourse to Section 22 of the Act. The remedy underSection 22 of the Act is only available where the impugned designis being used. A further distinction between Section 19 and 22 ofthe Act, as correctly pointed out on behalf of the Plaintiff is thatwhile Section 19 is applicable to ‘any person interested’, Section22 is available only to a small segment of such person viz.registered proprietors. The remedy under Section 19 and theremedy under Section 22 are therefore very different. They applyto different persons in different circumstances and for differentreliefs.”

20. In view of the above, the order of the Commercial Court atthe District Level is in accordance with law. However, we are unable toagree with the Commercial Court to transfer such suit to Calcutta HighCourt. The High Court, where the cause of action arises has theJurisdiction to entertain the Suit in terms of Godrej Sara Lee. Since nopart of cause of action has arisen within the jurisdiction of Kolkata, thesuit is liable to be transferred to Madhya Pradesh High Court, IndoreBench. In fact, the Plaintiff has filed suit at Indore, Madhya Pradeshonly.

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 ofMadhya Pradesh, Indore Bench, who shall decide the suit in accordancewith law.

Ankit Gyan

Matter remitted to High Court.

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