# R.N. Gupta & Co. Ltd. Jasola New Delhi v. M/S Action Construction Equipments Ltd. Dudhola & Ors

- **Citation:** (2016) 5 ILRA 1304
- **Court:** High Court of Judicature at Allahabad
- **Decided:** 2016-05-27
- **Bench:** Vivek Kumar Birla
- **Source:** https://unisonlegal.in/judgment/allahabad-high-court/r-n-gupta-co-ltd-jasola-new-delhi-v-m-s-action-construction-equipments-ltd-43735
- **Pages:** 24

## Headnote

Designs Act, 2000 - Sections 19 & 22(3), (4) - Interim injunction - Defence of cancellation of
design - Stage of raising defence - Transfer of suit to High Court - Jurisdiction of District
Judge - Mandatory transfer - Effect.

Section 22(4) of the Designs Act
Mandatory Transfer - Where, in a suit for infringement of a registered design under Section 22(2) of the
Designs Act, 2000, the defendant avails any ground for cancellation of design as enumerated under Section
19 of the Act as a ground of defence, the District Court ceases to have jurisdiction and the suit or proceeding
shall stand transferred to the High Court for decision.

Defence Raised in Reply to Interim Injunction - Sufficiency
A defence under Section 19 of the Act raised even in a reply to an application for interim injunction under
Order XXXIX Rules 1 and 2 CPC constitutes availing of a statutory defence under Section 22(3) of the Act and
attracts the mandatory consequence of transfer under Section 22(4).

No Prima Facie Enquiry by District Court Permissible
Once a statutory defence under Section 19 of the Act is taken, the District Court cannot examine the merits or
sufficiency of such defence nor record prima facie satisfaction; its only jurisdiction thereafter is to effect
transfer of the suit to the High Court.

District Court Becoming Functus Officio
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1305
Upon availing of a defence under Section 19 of the Act, the District Judge becomes functus officio and is
divested of authority to decide the suit or even interlocutory applications, including applications for interim
injunction.

Interim Orders Passed After Loss of Jurisdiction - Invalid
Any order granting or refusing interim injunction passed by the District Court after the statutory defence
under Section 19 has been raised is without jurisdiction and liable to be set aside.

"Suit or Other Proceeding"
Wide Interpretation - The expression "any suit or other proceeding" under Section 22(3) of the Act includes
interlocutory proceedings such as applications for temporary injunction.

Public Domain and Prior Publication
Defence Under Section 19 - Pleas that the registered design is not new or original, is previously published, or
is a copy of existing designs available in public domain squarely fall within Section 19 and are valid statutory
defences under Section 22(3).

Reliance on Pari Materia Provisions
Principles governing transfer under Section 22(4) of the Designs Act are pari materia with Section 104 of the
Patents Act, 1970, and judicial precedents under the Patents Act are applicable.

Result
Order dated 21.01.2016 granting interim injunction passed by the District Court after statutory defence under
Section 19 was raised is without jurisdiction and unsustainable

Appeal allowed - Impugned order set aside - Suit and connected proceedings directed to be
transferred to the High Court in terms of Section 22(4) of the Designs Act, 2000.

Case listed

State of Uttar Pradesh & others vs. Dr. Anupam Gupta, etc., AIR 1992 SC 932
Foreshore Co-operative Housing Society Limited vs. Praveen D. Desai (Dead) thr. Lrs. and others,
AIR 2015 SC 2006.
Metco Polymers Pvt. Ltd. vs. Madhu Inflatables Pvt. Ltd., (2005) 4 MLJ 294
M/s Premier Elmech Systems (P) Ltd. vs. M/s V-Guard Industries Pvt. Ltd., ILR 2013 (4) Kerala
620
M/s. Escorts Construction Equipment Ltd. vs. M/s. Gautem Engineering Co. & Anr., AIR 2010 J&K
13
M/s. Lambda Eastern Telecommunication & Ors. vs. M/s. Acme Tele-Power Private Ltd. and Ors.,
AIR 2008 Utr 38
Standard Glass Beads Factory and another vs. Dhar, AIR 1961 All. 101
M/s Andslite Pvt. Ltd vs. Rupa Sujit Talwar
Novartis AG and Anr. vs. Cipla Ltd.
Kadambukattil Exports vs. Nilkamal Ltd., ILR 2013 (2) Kerala 545.
Booz Allen and Hamilton Inc. vs. SBI Home Finance, AIR 2011 SC 2507
Rashtriya Ispat Nigam vs. Verma Transport, AIR 2006 SC 2800
1306

## Text

_Characters 0–39,805 of 72,903. This is a partial read: ask again with offset=39805 for what follows._

1304 INDIAN LAW REPORTS ALLAHABAD SERIES
order dated 25.11.2005 is set aside. The matter is remanded to the trial court with a direction to
decide the application 9-Kha moved by the informant, at the appropriate stage of the trial, after
affording opportunity of hearing to the parties in accordance with law.

15. Let a copy of this order be sent to the trial court immediately for ensuring compliance.
---------
APPELLATE JURISDICTION
CIVIL SIDE
DATED: ALLAHABAD 27.05.2016

BEFORE

THE HON'BLE VIVEK KUMAR BIRLA, J.

First Appeal From Order No.- 636 Of 2016

R.N. Gupta & Co. Ltd. Jasola New Delhi
 ...Appellant
Versus
M/S Action Construction Equipments Ltd. Dudhola & Ors. ...Respondents

Counsel for the Appellant:
Manu Kahre

Counsel for the Respondents:
Samit Gopal

Designs Act, 2000 - Sections 19 & 22(3), (4) - Interim injunction - Defence of cancellation of
design - Stage of raising defence - Transfer of suit to High Court - Jurisdiction of District
Judge - Mandatory transfer - Effect.

Section 22(4) of the Designs Act
Mandatory Transfer - Where, in a suit for infringement of a registered design under Section 22(2) of the
Designs Act, 2000, the defendant avails any ground for cancellation of design as enumerated under Section
19 of the Act as a ground of defence, the District Court ceases to have jurisdiction and the suit or proceeding
shall stand transferred to the High Court for decision.

Defence Raised in Reply to Interim Injunction - Sufficiency
A defence under Section 19 of the Act raised even in a reply to an application for interim injunction under
Order XXXIX Rules 1 and 2 CPC constitutes availing of a statutory defence under Section 22(3) of the Act and
attracts the mandatory consequence of transfer under Section 22(4).

No Prima Facie Enquiry by District Court Permissible
Once a statutory defence under Section 19 of the Act is taken, the District Court cannot examine the merits or
sufficiency of such defence nor record prima facie satisfaction; its only jurisdiction thereafter is to effect
transfer of the suit to the High Court.

District Court Becoming Functus Officio
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1305
Upon availing of a defence under Section 19 of the Act, the District Judge becomes functus officio and is
divested of authority to decide the suit or even interlocutory applications, including applications for interim
injunction.

Interim Orders Passed After Loss of Jurisdiction - Invalid
Any order granting or refusing interim injunction passed by the District Court after the statutory defence
under Section 19 has been raised is without jurisdiction and liable to be set aside.

"Suit or Other Proceeding"
Wide Interpretation - The expression "any suit or other proceeding" under Section 22(3) of the Act includes
interlocutory proceedings such as applications for temporary injunction.

Public Domain and Prior Publication
Defence Under Section 19 - Pleas that the registered design is not new or original, is previously published, or
is a copy of existing designs available in public domain squarely fall within Section 19 and are valid statutory
defences under Section 22(3).

Reliance on Pari Materia Provisions
Principles governing transfer under Section 22(4) of the Designs Act are pari materia with Section 104 of the
Patents Act, 1970, and judicial precedents under the Patents Act are applicable.

Result
Order dated 21.01.2016 granting interim injunction passed by the District Court after statutory defence under
Section 19 was raised is without jurisdiction and unsustainable

Appeal allowed - Impugned order set aside - Suit and connected proceedings directed to be
transferred to the High Court in terms of Section 22(4) of the Designs Act, 2000.

Case listed

State of Uttar Pradesh & others vs. Dr. Anupam Gupta, etc., AIR 1992 SC 932
Foreshore Co-operative Housing Society Limited vs. Praveen D. Desai (Dead) thr. Lrs. and others,
AIR 2015 SC 2006.
Metco Polymers Pvt. Ltd. vs. Madhu Inflatables Pvt. Ltd., (2005) 4 MLJ 294
M/s Premier Elmech Systems (P) Ltd. vs. M/s V-Guard Industries Pvt. Ltd., ILR 2013 (4) Kerala
620
M/s. Escorts Construction Equipment Ltd. vs. M/s. Gautem Engineering Co. & Anr., AIR 2010 J&K
13
M/s. Lambda Eastern Telecommunication & Ors. vs. M/s. Acme Tele-Power Private Ltd. and Ors.,
AIR 2008 Utr 38
Standard Glass Beads Factory and another vs. Dhar, AIR 1961 All. 101
M/s Andslite Pvt. Ltd vs. Rupa Sujit Talwar
Novartis AG and Anr. vs. Cipla Ltd.
Kadambukattil Exports vs. Nilkamal Ltd., ILR 2013 (2) Kerala 545.
Booz Allen and Hamilton Inc. vs. SBI Home Finance, AIR 2011 SC 2507
Rashtriya Ispat Nigam vs. Verma Transport, AIR 2006 SC 2800
1306 INDIAN LAW REPORTS ALLAHABAD SERIES
(Delivered by Hon'ble Vivek Kumar Birla, J.)

1. Heard Sri Ajay Sahani, learned counsel assisted by Sri Manu Khare and Sri Rahul Rajput,
learned counsel for the appellant and Sri Shashi Nandan, learned Senior Counsel assisted by Ms.
Sangeeta Sondhi and Sri Samit Gopal, learned counsel appearing for the respondent no. 1 and
perused the record.

2. This appeal under Order 43 Rule 2 of the Civil Procedure Code (herein after referred to as
'CPC') has been filed by the defendant-appellant challenging the order dated 21.1.2016 passed by
the Additional District Judge/Special Judge (SC/ST Act), Gautam Budh Nagar in C.S.(O.S.) No. 2
of 2015 (M/s Action Construction Equipments Limited vs. R.N. Gupta & Company Limited &
others). It has further been prayed that the aforesaid suit be ordered to be transferred to this Court.
By the order dated 21.1.2016, learned Court below has allowed the interim injunction application
6-C under Order 31 Rules 1 and 2 CPC in favour of the plaintiff-respondent and has restrained the
defendant-appellant and their legal representatives and employees from manufacturing, trading and
selling the registered design nos. 254816, 254817, 254819, 254823, 254825, 254826, 254818 and
254827 all dated 26.6.2013.

3. The facts of the present case in brief are that the plaintiff-respondent filed a suit for
permanent injunction against the defendant-appellant and one M/s Navrang Constructions Private
Limited-proforma respondent no. 2 herein with the allegation that the plaintiff-respondent is an
innovator and legal proprietor of several designs in regard to tower cranes and its parts and which
designs, according to the plaintiff-respondent, were new and original and were not previously
published on the date of their application of registration i.e. 26.6.2013, which was granted by the
Controller of Design, Kolkata in its favour for a period of ten years from the aforesaid date. The
suit for injunction was filed primarily in the light of provisions of Section 22 of the Designs Act,
2000 (hereinafter referred to as the 'Act, 2000') being C.S.(O.S.) No. 2 of 2015 in the Court of
Additional District Judge, Gautam Budh Nagar on 6.11.2015 against the appellant for an alleged
infringement of the aforesaid 8 registered designs and also for reliefs from unfair competition,
rendition of accounts, delivery etc. on the allegation that the tower cranes and their parts
manufactured and are marketed by the defendant-appellant were an obvious and fraudulent
imitation of the plaintiff-respondent's above noted registered designs. Along with the said suit, an
application for interim injunction being paper no. 6-C was also filed under the provisions of the
Order 39 Rules 1 and 2 read with Section 151 CPC.

4. the plaint case, it was stated that plaintiff being company was incorporated in the year 1995
and Research & Development Team was constituted and started developing and designing cranes.
It was claimed that in the year 1993 based on its indigenous "Know-how" launched its tower
cranes, commercial production of the said tower cranes was commenced and ever since the
plaintiff-company are manufacturing and marketing the said tower cranes and is the market leader
in the entire country. Large number of big companies including nationalized as well as foreign
companies have been mentioned to which such tower cranes and their parts are being sold. It was
also stated that for the last 20 years since 1997 the company is operating on independent basis and
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1307
manufacturing models of Mobile Tower Cranes and Tower Cranes since 2010. It was further stated
that the plaintiff has developed the noval design and apply that design to its industrial products and
also get them registered under the Act, 2000. The suit was filed with the allegation against the
defendant no. 1 (appellant herein) that it has made complete copies or substantial and colourable
imitation of the tower cranes and its parts and that the defendant is infringing the design
registration of the plaintiff in regard to tower cranes. It was further alleged that the defendant is
infringing tower cranes, there is similarity in design of the cranes parts, which are being
manufactured by defendant in infringement of design registered with the plaintiff. Detailed
narration was given in the plaint and suit was filed with the following prayers:

"A. Pass a decree of permanent injunction restraining the Defendant No. 1 & 2, its
directors, principles, proprietor, partners, assigns, officers, employees, agents, servants,
distributors, dealers, franchisees, representatives by passing a decree of permanent injunction from
manufacturing, assembling, offering for sale, advertising, supplying, leasing, selling or in any
manner dearling with Tower cranes and/or Tower cranes parts that are a slavish and obvious
imitation of the Plaintiffs registered design (bearing design no. 254816, 254817, 254819, 254823,
254825, 254826, 254818 and 254827) so as to result in infringement of the registered design of the
plaintiff.

B. Pass a decree of permanent injunction restraining the Defendant No. 1 & 2, its
directors, principles, proprietor, partners, assigns, officers, employees, agents, servants,
distributors, dealers, franchisees, representatives restraining them from contacting the plaintiff's
employees with an intent to unfairly complete with the Plaintiff;

C. Pass a decree of rendition of accounts against the defendants calling upon the
defendants to render true and correct accounts of the profits earned by the defendants on the sale
of the products in question. The plaintiff is tentatively paying the court fees on an amount of Rs.
200.00 and undertake to file additional court fee if on appropriate rendition of accounts by the
Defendants, a higher amount is found to be due and is directed by this Hon'ble Court.

D. Pass a Decree of delivery up of all the infringing tower cranes, Tower Crane
Parts, marketing, promotional and advertising materials that bear or incorporate the infringing
designs or any other design similar thereto;

E. Deliver to the plaintiff's attorney's or representatives, a list containing the names,
addresses, phone numbers, e-mail addresses and any other identifying information for all persons
and their companies to whom the Defendants have distributed, sold, supplied or circulated
products or product parts or marketing, promotional or advertising materials that bear the
plaintiff's registered designs (bearing design no. 254816, 254817, 254819, 254823, 254825,
254826, 254818 and 254827) or any other design similar thereto

F. Award Costs of the suit to the plaintiff;
1308 INDIAN LAW REPORTS ALLAHABAD SERIES

G. Pass any further order(s) in favour of the plaintiff as this Hon'ble Court may
deem fit and proper in the interest of justice."

5. Interim injunction application was filed broadly on the allegation made in the plaint. Large
number of documents were also filed on behalf of the plaintiff, which, as and when required, shall
be referred to subsequently.

6. Notice was issued to the defendant on the interim injunction application and a reply was
filed by the defendant (appellant herein). In the reply, the defendant-appellant has stated that the
contents of paragraph 1 of the application are wrong and specifically denied. It is denied that the
defendant has infringed the plaintiff's copyrights in designs pertaining to Tower Cranes and Tower
Crane parts. It was further stated that the contents of paragraph 2, 4 and 5 of the application are
wrong and are specifically denied. It is denied that the plaintiff acquired knowledge of the
marketing and sale of the defendants machinery only in September 2015. The defendant is a
company that was established in 1948, and has been a dominant figure in the market for
construction equipment ever since. The plaintiff have been aware of the use of the designs in
question by the defendants since it was first installed in NCR in October 2014, in the same builder
site as that of the plaintiff. Since no action was taken during this time, the Plaintiffs have lost the
right to claim interim relief against the defendant.

7. Denying the allegations made in the application for interim injunction application in
paragraphs 4, 5 and 6, it was categorically stated that the plaintiff's design are not significantly
distinguishable from earlier known designs and therefore, are spurious and invalid in the eye of
law. It was also categorically claimed that the design registration numbers mentioned by the
plaintiff are not new and original designs and as such, are not registerable under the Designs Act
and are liable to be cancelled as per the provisions of the Section 19 of the Designs Act, 2000. It
was also stated that at least since the year 2007 the plaintiff has copied the design of tower cranes
and parts thereof from a Chinese Company 'Zoomlion' as it is clear from the pamphlets, brochures
and catalogs of the plaintiff and Zoomlion, which are publically available with the customers and
distributors and copies of some of them were filed in the present proceedings. It was submitted that
since the design numbers of the plaintiff were also already in the public domain prior to the date of
registration of the said design by the plaintiff, the plaintiff cannot claim any exclusive right on the
same and thus they are not new and original designs, therefore, the question of piracy by the
defendant does not arise

8. A prayer, therefore, was made that the application for interim injunction be dismissed with
heavy cost and it was categorically prayed that the design registration numbers which have been
mentioned in the plaint be cancelled and declared null and void.

9. For the purpose of dealing with the appeal in hand, it is necessary to make reference to
paragraphs 4, 5 and 6 of the reply filed by the appellant-defendant, which are quoted as under:-
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1309

"4. That the contents of paragraph 6 of the Application are wrong and specifically
denied. It is submitted that the Plaintiffs designs are not significantly distinguishable from earlier
known designs, or combinations of the earlier know designs, and are, therefore, spurious and
invalid in the eyes of law. The design of the tower crane is a common design structure for every
machine built, no individual person can claim a right over it. The defendants are therefore not
infringing their designs.

5. That the contents of paragraph 7 of the Application are wrong and specifically
denied. It is pertinent to note that the design registration numbers mentioned by the plaintiff in the
paragraph under the reply are not new and original designs and as such are not registerable under
the designs act and are liable to be cancelled as per the provisions of the Section 19 of the Designs
act 2000. It has come to the knowledge of the defendants that the plaintiff was selling tower cranes
and parts there of which are the subject matter of the said Design Registrations. At least as early
as since year 2007, on market enquiry the defendants has also gathered the information that the
plaintiff has copied the design of the tower crane and parts thereof, the subject matter of the
present proceeding from a Chinese company Zoomlion. The said fact is evident from the pamphlets,
brochures and catalogs of the Plaintiff and Zoomlion which are publically available with the
customers and distributors. Copies of some of the pamphlets, brochures and catalogs of the
Plaintiff and Zoomlion are filed in the present proceedings. It is further submitted that the
plaintiff has not only copied Zoomlion tower crane design but has also copied the photograph
appearing on the Zoomlion catalog.

6. That the contents of paragraph 8 of the Application are wrong and specifically
denied. As mentioned in the preceding paragraph that the subject matter of referred design
numbers of the plaintiff was already in the public domain prior to the date of registration of the
said design by the plaintiff. The plaintiff cannot claim any exclusive right on the same. As these
referred designs of the plaintiff were already in the public domain and are not new and original
designs. The question of designs being pirated by the defendants does not arise. It is further
submitted that the plaintiff has no case whatsoever and hence there can be no relief which could be
granted to the plaintiff. It is also denied that the balance of convenience lies in the favour of
plaintiff and against the defendant. It is further submitted that the designs of the defendant are not
infringing that of the Plaintiff, and the defendant is only providing fair competition to the Plaintiff
in the market."

 (Emphasis supplied)

10. Along with the reply, the appellant-defendant annexed the brochure of the plaintiffcompany for the years, 2007, 2009, 2010, 2011, 2012 and 2013 and also online Zoomlion brochure
to indicate that the same tower crane is being sold by the plaintiff-company since the year 2007 and
apart from that it is only a copy of the tower crane of Zoomlion Company using the designs as
registered by the plaintiff.
1310 INDIAN LAW REPORTS ALLAHABAD SERIES

11. Submissions of Sri Ajay Sahani, learned counsel for the defendant-appellant are two fold,
one, that since a defence under Section 19 of the Act, 2000 was categorically taken before the
Court below while filing the reply in response to the interim injunction application filed by the
respondent-plaintiff, in view of the provisions of Section 22 (4) of the Act, 2000, the Court of
District Judge become functus-officio and could not have proceeded with the case any further and
the case was liable to be transferred to the High Court. Thus, his submission in other words is that
as soon as a defence under Section 19 of the Act, 2000 is taken in reply, the Court below become
functus-officio and the order impugned herein dated 21.1.2016 is totally without jurisdiction. The
second argument is on merits of the case that interim injunction has wrongly been granted,
inasmuch as the documents filed in support of the reply to the interim injunction application clearly
indicated that the design is not new and the tower crane being TC-5040 is admittedly being sold
since the year 2007 by the plaintiff-company, and that broadly speaking, none of the ground for
grant of interim injunction i.e. prima facie case or balance of convenience or irreparable loss and
injury has been made out. Arguments on merits, if required, shall be referred to subsequently.

12. Per contra, Sri Shashi Nandan, learned Senior Counsel appearing for the plaintiffrespondent has submitted that question of transfer of a case under Section 22(4) of the Act, 2000
was never pleaded or argued before the Court below so there was no necessity to transfer the case
and the Court below has rightly proceeded to decide the interim injunction application. He further
submitted that even otherwise, on question of transfer a case to the High Court under Section 22(4)
of the Act, 2000, there has to be a prima facie satisfaction before transferring the case to the High
Court by the trial Court and there cannot be any automatic transfer of the case. Elaborating the
same he further submitted that even if it is a case of inherent lack of jurisdiction unless a plea is
taken, the Court has jurisdiction to proceed further, and that for transfer a prima facie satisfaction
has to be recorded, which was prima facie found to be against the defendant-appellant. It was
further submitted that now the defendant-appellant has already invoked Section 22(4) of the Act,
2000 by filing an application under the aforesaid Section on which 28.5.2015 is the date fixed and
therefore, this Court should not entertain the prayer for transfer. It was further submitted that the
defence of Section 19 of the Act of 2000 may be raised in the writ petition and any reply to an
application under Order 39 Rules 1 and 2 CPC and the grounds raised therein did not constitute
defence and that supplement and incidental procedure are not part of the main proceeding and as
such any defence taken in reply to the interim injunction application do not constitute the defence
so as to transfer the suit to the High Court by the trial Court. It was further submitted that even the
defence taken in the reply of the interim injunction application, there was no sufficient material so
as to attract Section 22(4) of the Act, 2000. On merits it was submitted that the Court below has
recorded a finding on all the three points, which are necessary for grant of injunction in favour of
the plaintiff and the Court below has categorically found that there was a prima facie case in favour
of the plaintiff; the balance of convenience is also in favour of the plaintiff; and that in case no
injunction is granted, the plaintiff shall further suffer irreparable loss and injury as it is a case of
violation of intellectual property rights.

13. For deciding the controversy in hand, it is necessary to refer certain provisions of the
Designs Act, 2000, which are quoted as under:
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1311

"2. Definitions.- In this Act, unless there is anything repugnant in the subject or
context,-

(a) "article" means any article of manufacture and any substance, artificial, or
partly artificial and partly natural; and includes any part of an article capable of being made and
sold separately;

(b) .............

(c) ...............

(d) "design" means only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article whether in two dimensional or three
dimensional or in both forms, by any industrial process or means, whether manual, mechanical or
chemical, separate or combined, which in the finished article appeal to and are judged solely by
the eye; but does not include any mode or principle of construction or anything which is in
substance a mere mechanical device, and does not include any trade mark as defined in clause (v)
of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or
property mark as defined in section 479 of the Indian Penal Code (45 of 1860) of any artistic work
as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);

(e) ......................

4. Prohibition of registration of certain designs.- A design which-

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other country by
publication in tangible form or any use or in any other way prior to the filing date, or where
applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known
designs; or

(d) comprises or contains scandalous or obscene matter,

shall not be registered.

11.Copyright on registration.- (1) When a design is registered, the registered
proprietor of the design shall, subject to the provisions of this Act, have copyright in the design
during ten years from the date of registration.
1312 INDIAN LAW REPORTS ALLAHABAD SERIES

(2) If, before the expiration of the said ten years, application for the extension of the
period of copyright is made to the Controller in the prescribed manner, the Controller shall, on
payment of the prescribed fee, extend the period of copyright for a second period of five years from
the expiration of the original period of ten years.

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

22. Pirarcy of registered designs.- (1) During the existence of copyright in any
design it shall not be lawful for any person-

(a) for the purpose of sale to apply or cause to be applied to any article in any class
of articles in which the design is registered, the design or any fraudulent or obvious imitation
thereof, except with the license or written consent of the registered proprietor, or to do anything
with a view to enable the design to be so applied; or

(b) to import for the purposes of sale, without the consent of the registered
proprietor, any article belonging to the class in which the design has been registered, and having
applied to it the design or any fraudulent or obvious imitation thereof, or

(c) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in which the design is registered without the consent
of the registered proprietor, to publish or expose or cause to be published or exposed for sale that
article.

2. If any person acts in contravention of this section, he shall be liable for every
contravention-
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1313

(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five
thousand rupees recoverable as a contract debt, or

(b) if the proprietor elects to bring a suit for the recovery of damages for any such
contravention, and for an injunction against the repetition thereof, to pay such damages as may be
awarded and to be restrained by injunction accordingly:

Provided that the total sum recoverable in respect of any one design under clause
(a) shall not exceed fifty thousand rupees:

Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge.

(3) In any suit or any other proceeding for relief under sub-section(2), every 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 sub-section (2),
where any ground on which the registration of a design may be cancelled under section 19 has
been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief
under sub-section (2), the suit or such other proceeding shall be transferred by the Court, in which
the suit or such 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 shall cause an entry thereof to be made in the register of
designs.

 (Emphasis supplied)

14. Learned counsel for the defendant-appellant has relied on various decisions, which are
quoted as under:

15. State of Uttar Pradesh & others vs. Dr. Anupam Gupta, etc., AIR 1992 SC 932.
Relevant extract of paragraph 10 is quoted as under
:

"10. Dr. Rajiv Dhavan and Sri Satish Chandra, learned senior counsel for the
Doctors, in fairness, also did not dispute that prescription of 50% minimum marks as eligibility
criteria to seek admission into the postgraduate courses to be in any way arbitrary. However, Dr.
Dhawan contended that the initial press note inviting applications for the entrance examination did
not say that 50% minimum marks in the entrance examination as a condition for admission into the
post-graduation. G.O. 4215 only mentions 50% of qualifying M.B.B.S. marks and 50% in entrance
as eligibility. Therefore, denial of admission for non-securing 50% cut off in entrance examination
is illegal. The doctrine of promissory estoppel was also passed into service. It is further contended
1314 INDIAN LAW REPORTS ALLAHABAD SERIES
that the Doctors satisfied the criteria laid on G.O. 4215. The High Court's order was justified on
this base. Shri Yogeshwar Prasad, learned senior counsel for the State contended that this
contention was not raised in the High Court and for the first time it cannot be raised. We find no
force in the contention of the State. Though it was never raised, nor argued, since it is a pure
question of law arises from record, it can be gone into. But on careful consideration of the
record............"

 (Emphasis supplied)

16. Foreshore Co-operative Housing Society Limited vs. Praveen D. Desai (Dead) thr.
Lrs. and others, AIR 2015 SC 2006. Relevant paragraph 43 is quoted as under:

"43. It is well settled that essentially the jurisdiction is an authority to decide a
given case one way or the other, Further, even though no party has raised objection with regard to
jurisdiction of the court, the court has power to determine its own jurisdiction. In other words, in a
case where the Court has no jurisdiction; it cannot confer upon it by consent or waiver of the
parties.

 (Emphasis supplied)

17. Metco Polymers Pvt. Ltd. vs. Madhu Inflatables Pvt. Ltd., (2005) 4 MLJ 294. Relevant
paragraph 14 is quoted as under:

"14. The expression "any other proceeding" as contained in Section 22(3) is to be
understood in a wider sense and the application for interim injunction can be considered as a
proceeding within the meaning of Section 22 (3) of the Act. The restricted meaning given to the
term "proceeding" in some matter, particularly, in the context of Section 115 of the Code of Civil
Procedure may not be applicable. Any other interpretation of Section 22(3) may create an anomaly
inasmuch as even though the defendants would be able to resist the suit by raising defences
envisaged under Section 22(3) read with Section 19, they would not be able to resist an interim
application for injunction."

 (Emphasis supplied)

18. M/s Premier Elmech Systems (P) Ltd. vs. M/s V-Guard Industries Pvt. Ltd., ILR 2013
(4) Kerala 620. Relevant paragraph 5 is quoted as under:

"5. Sub section (3) and (4) of Section 22 of the Act reads thus:

(3) In any suit or any other proceeding for relief under sub-section (2), every ground
on which the registration of a design may be cancelled under section 19 shall be available as a
ground of defence.
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1315

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

Though learned counsel for the first respondent plaintiff urged before me that no
defence capable of being considered as a ground on which the registration of a design obtained by
plaintiff over his stabilizer for its cancellation had been set forth by the appellant (first defendant),
I cannot subscribe to that view. Contentions raised in the written statement, paragraph 2
reproduced earlier, would demonstrate that the first defendant had taken a specific ground under
section 19 of the Act for cancellation of the registration to resist the suit claim. Section 19 of the
Act dealing with the cancellation of the registration states the grounds on which a person may
present a petition before the Controller for cancellation of a registration of a design after it has
been so registered. One among the grounds provided for such cancellation of the design registered
is that the design is not a new or original design as provided under clause (c) of Section 19 of the
Act. The defence taken by the appellant (first defendant) resisting the suit clearly makes out a case
that he has impeached the design in favour of the plaintiff contending that it is not new or an
original design. That is sufficient to enable him to seek cancellation of the design under section 19
of the Act. When such a defence has been taken in the suit filed under sub-section (2) of Section 22
of the Act, the mandatory prescription under sub-section (4) of that Section has to follow and the
court before which the suit or other proceeding is pending has to transfer it to the High Court for
decision. The court before which the suit or other proceeding is pending cannot determine the
merits of the defence nor even conduct an inquiry over such defence and it has to comply with the
statutory prescription, learned District Judge after taking evidence has adjudicated the disputes
and granted a decree in favour of the plaintiff. The decree so passed has to be interfered with and
the case has to be remitted to the court below to follow the statutory prescription under sub section
(4) of Section 22 of the Act."

 (Emphasis supplied)

19. M/s. Escorts Construction Equipment Ltd. vs. M/s. Gautem Engineering Co. & Anr.,
AIR 2010 J&K 13. Relevant paragraphs 8, 13, 14, 15, 16, 17 and 18 are quoted as under:

"8. It was further submitted that under sub-clause (3) of Section 22 of the Act of
2000, in any suit or any other proceeding for relief under sub-section (2) every ground on which
the registration of a design may be cancelled under Section 19 is available as a ground of defence.
It was stated that when the respondents have filed the written statement and taken the defence as
mentioned in Section 19 of the Act of 2000, then, the Court below has not power to try the suit and
the same has to be transferred to this Court.

13. A perusal of the above shows that respondents in their written statement has
taken the defence as referred to in Section 19 of the Act of 2000. Therefore, once such a defence is
1316 INDIAN LAW REPORTS ALLAHABAD SERIES
taken, then in terms of sub-section (4) of Section 22 of the Act of 2000, the Court below has no
power to decide the revocation of the design and it is only this Court which has to adjudicate upon
the matter and decide as to whether the design is to be cancelled or not. The Court below, thus, has
committed a legal error in not transferring the case to this Court for adjudication after the
application in this regard was filed by the petitioner.

14. In 2001 PTC 775 (Ker): (2000 CLC 1517), Low Heat Driers (P) Ltd. v. Biju
George, the Kerala High Court under similar circumstances while dealing with a matter under
Patents Act, 1970, and interpreting Section 104 of the above Act, which section is pari materia to
Section 22(4) of the Act of 2000, observed as under:-

"4. Section 104 of the Patent Act reads as follows:

"No suit for a declaration under Section 105 or for any relief under Section 106 or
for infringement of a patent shall be instituted in any Court inferior to a District Court having
jurisdiction to try the suit; provided that where a counter claim for revocation of the patent is made
by the defendant, the suit, along with the counter claim, shall be transferred to the High Court for
decision."

What can be gathered from the section is that once challenge is made with the
regard to the patent claim by the plaintiff and its revocation is sought for by the defendant, or
further things should be done only by the High Court. If interlocutory applications filed in case are
dealt with before considering the question of existence of the patent itself that will affect the right of
the defendant. According to me, what is obvious from the section is that once a counter claim
seeking revocation of patent is filed by the defendants the District Court will loose jurisdiction to
proceed with the matter further. That deprivation of power will necessarily include the power to
deal with all interlocutory applications pending as on that day........."

15. In A.O. No. 49 of 2008 titled M/s. Lambda Eastern Telecommunication and
others vs. M/s. Acme Tele Power Private Ltd., decided on 19th of March 2008, the High Court of
Uttarakhand, observed as under:-

"Actually, keeping in view the proviso to Section 104 (supra), this Court at the same
time would like to observe that the District Judge at the very moment the counter claim stood filed
in this Court, ceased to have any jurisdiction to deal with the suit or any application arising out of
the same or relating thereto. The proviso to Section 104 clearly and unmistakably suggests that the
moment the counter claim for revocation of the patent is filed, the suit along with the counter claim,
etc. shall be transferred to the High Court for decision. In other words, what the proviso
unmistakably suggests is that the moment counter claim for revocation of patent is filed, the
jurisdiction for deciding the suit along with the counter claim vest with the High Court. The
legislative intent is more discernibly clear by a reference to Section 64 of the Act, which also states
that revocation of a patent upon a counter claim can be done by a High Court only and not by any
counter inferior to the High Court. It is based on such clear legislative intent as well as legislative
5 All. R.N. Gupta & Co. Ltd. Jasola New Delhi Vs M/S Action Construction Equipments Ltd.
 Dudhola & Ors.

1317
mandate that I have no hesitation coming to the conclusion that the moment the counter claim for
revocation is filed, the District Court ceases to have the jurisdiction to deal with the suit and matter
immediately is required to the transferred to the High Court for hearing and decision. In other
words, it is the High Court which shall now hear and decide the Temporary Injunction
Application.........."

16. As indicated above, Section 22(4) of the Act of 2000 is pari materia to Section
104 of the Patents Act, 1970. Therefore, once the suit was instituted by the petitioner and the
respondents took the defence in their written statement as referred to in Section 19 of the Act of
2000, and thereafter petitioners having filed the application under Section 22(4) of the Act of 2000,
then, as observed above, the power to decide with regard to the revocation of the design lies only
with this Court.

17. So far as the plea of Mr. Sethi, learned Sr.