2024 (10) TMI 317 - HC - Indian Laws

Design registration cancellation petitions must be filed before Controller under Section 19, not directly before High Court

Mr. R. Arun, Mr. M. Dinesh and M/s. Espoirs Solutions Versus M/s. Integray Health Care Private Limited, Mr. Vijayakumar Irusappan, Mr. Sabrinathan Irusappan and Deputy Controller of Patents and Designs, Chennai

The HC held that an original petition seeking cancellation of design registration was not maintainable. Under the Designs Act, 2000, Section 19 mandates ... Maintainability of the Original Petition seeking cancellation of Design Registration - Interpretation of the Designs Act, 2000 in relation to jurisdiction of the High Court - HELD THAT:- It is found that there is a departure from the earlier provision viz., Section 51A of the Act, 1911 which enabled an interested person seeking cancellation to approach the High Court at any time after the registration of the Design. However Section 19 of the Act, 2000, now expressly mandates such person seeking cancellation of Registration of a Designs to approach “the Controller” alone and Section 19 (2) provides an Appeal to this Court from any order of the Controller including any matter to be referred to the Controller for decision of this Court. The provisions themselves permit an Application to be filed before the High Court. However, insofar as the Designs Act, even though the earlier Designs Act, 1911 enabled such Application to be filed before the Court, it has been taken away by the Designs Act, 2000 and by incorporation of Section 19, an Application for cancellation of Registration can be made only to the Controller and an Appeal against the the order of the Controller is also made available by approaching this Court. When an appeal is also made available to the aggrieved party by approaching this Court, it cannot be said that this Court can exercise concurrent jurisdiction alongwith the Controller. There are no merit in the arguments advanced by the learned counsel for the petitioner that the ouster has to be express and in the absence of an express ouster, it has to be implied that the jurisdiction of this Court is available to be exercised by this Court, including entertaining an Application under Section 19 for Cancellation of the Designs. The Original Petition filed before this Court is not maintainable and the petitioner has to necessarily approach the Controller having jurisdiction and canvass all its objections there - the Original Petition is dismissed. Issues:1. Maintainability of the Original Petition seeking cancellation of Design Registration.2. Interpretation of the Designs Act, 2000 in relation to jurisdiction of the High Court.Analysis:Issue 1: Maintainability of the Original PetitionThe Original Petition was filed seeking cancellation of the first respondent's Design Registration granted by the 4th respondent. The petitioner argued that the Designs Act, 2000 is not a complete code by itself and does not explicitly oust the jurisdiction of the Court. The petitioner contended that it would be unfair to direct them to go to Kolkata for seeking cancellation when both parties are in Chennai. On the contrary, the Central Government Standing Counsel argued that this Court cannot act as a Controller under Section 19 of the Designs Act, 2000. The judge considered the arguments from both sides.Issue 2: Interpretation of the Designs Act, 2000The judge analyzed the provisions of the Designs Act, 2000 in comparison to the earlier Indian Patent and Designs Act, 1911. Under the previous Act, interested persons could approach the High Court for cancellation of Design Registration. However, Section 19 of the Designs Act, 2000 mandates approaching the Controller for such cancellations, with an appeal available to the High Court. The judge noted the change in provisions and emphasized that the jurisdiction for cancellation now lies with the Controller, not the High Court. The judge also highlighted that other intellectual property enactments like the Trademarks Act, Patents Act, Copyright Act, and Geographical Indication Act provide for applications to be filed before the High Court, unlike the Designs Act.The judge concluded that the specific provision in Section 19 of the Designs Act directs petitions for cancellation of Design Registration to be made before the Controller, making it clear that the High Court does not have jurisdiction in such matters. The judge dismissed the Original Petition, granting liberty to the petitioner to approach the Controller within 60 days. The Controller was instructed not to consider delay or limitation against the petitioner and to decide the application on merits after hearing all concerned parties.