M/S
Godrej Sara Lee Limited Vs. Reckitt Benckiser Australia Pty.Ld.& ANR [2010]
INSC 73 (29 January 2010)
Judgment
IN THE
SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION CIVIL APPEAL NOS.
996-997/2010 (Arising out of SLP(C)Nos.21955-21956 of 2008) M/S. GODREJ SARA
LEE LIMITED .. Appellant RECKITT BENCKISER AUSTRALIA PTY.LTD.& ANR. ..
Respondents
ALTAMAS
KABIR, J.
1.
Leave granted.
2.
Two First Appeals were filed in the Delhi High Court, being FAO
No.131 and 132 of 2008, against two orders, both dated 28th March, 2008, passed
by the Controller of Patents and Designs, Kolkata, under Section 19(1) of
the Designs
Act, 2000, cancelling two registered designs for
"Insecticide Coil" in Class 12 belonging to the Respondent No.1
herein. The question for determination before the High Court in the two appeals
was whether the Delhi High Court had jurisdiction to entertain the same against
the order passed by the Controller of Patents and Designs, Kolkata. Inasmuch
as, in the said two appeals, it was held by the Delhi High Court that it had
jurisdiction to entertain the appeals, these two appeals have been preferred by
M/s. Godrej Sara Lee Ltd. against the said decision.
3.
On 27th January, 2005, the Respondent No.1 herein, M/s. Reckitt
Benckiser Australia Pty. Ltd., filed a suit, being C.S.(O.S.)No.121 of 2005,
against the appellant, in the Delhi High Court alleging infringement of its
Registered Designs bearing Nos.184136 and 184137. The said suit is yet to be
decided. On 4th February, 2005, the appellant herein filed his written
statement in the suit, inter alia, contending that the aforesaid Designs of the
Respondent No.1 were liable to be cancelled under Section 22(3) of the Designs Act, 2000, on the ground that registration of the same had been
obtained by concealment of facts and infringement of the Designs Registration
Nos.197811 and 197426, before the Controller of Designs at Kolkata. Similarly,
the appellant herein also filed a Designs Cancellation Petition for
cancellation of the Registered Design Nos.184135, 184136 and 184137 standing in
the name of the Respondent No.1 on the same ground as alleged by the respondent
in its petition for cancellation of the appellant's Designs. After certain
interlocutory proceedings relating to the prayer made for transfer of the
cancellation proceedings from the Controller of Designs to the Delhi High
Court, the Controller of Designs heard the parties on 5th March, 2008 and
reserved his order.
Meanwhile,
the respondents filed FAO (OS) No.101/08 against the orders dated 13.2.2008 and
5.3.2008 passed by the Controller of Designs, Kolkata and the same was
converted into a Petition under Article 227 of the Constitution. Initially the
learned Single Judge was doubtful about the maintainability of the appeals.
Thereafter, on 28th March, 2008, by three separate orders the Controller of
Designs, Kolkata, cancelled the Registered Design Nos.184135, 184136 and 184137
belonging to Respondent No.1. As indicated hereinabove, three First Appeals
were preferred before the Delhi High Court, where a question arose with regard
to the High Court's jurisdiction to entertain the appeals and by the orders impugned
in these appeals the Delhi High Court held that the appeals were maintainable
and it had jurisdiction to entertain the same.
4.
Appearing in support of the appeals, Mr.Dushyant Dave, learned
Senior Advocate, questioned the decision of the Delhi High Court based on the
interpretation of Section 19(2) read with Section 2(e) of the Designs Act, 2000. He submitted that the expression "High Court" as
used in Section 19(2) and Section 2(e), would have to be read in relation to
the cause of action and not otherwise.
In the
instant case, since the cause of action for the appeal has arisen on account of
the cancellation of Designs by the Controller of Designs at Kolkata, it is only
the Calcutta High Court, which would have jurisdiction to entertain the appeals
under Section 19. Any other interpretation would be contrary to the principles
relating to the filing of suits where the cause of action arises as
contemplated under Section 20 of the Code of Civil Procedure.
5.
Mr. Dave urged that the High Court appears to have gone wrong in
making a comparison between the provisions relating to cancellation of designs
under Section 51A of the Designs Act, 1911 and
Section 19 of the Designs Act, 2000. Mr.
Dave urged that while Section 51A of the 1911 Act allowed a person to move for
cancellation directly before the High Court in its original jurisdiction, under
Section 19 of the 2000 Act an application for cancellation could only be made
to the Controller of Designs, Kolkata. Mr. Dave urged that the conclusions
arrived at by the High Court on an analysis of the two provisions were
erroneous as was the reliance placed by the High Court on the decision in the
case of Girdharilal Gupta vs. M/s.K. Gian Chand Jain & Co. [(1978) 14
D.L.T. 132].
6.
Mr. Dave submitted that the decision in the said case was clearly
distinguishable on facts, as also the finding that the cancellation of a design
7 under Section 51A of the 1911 Act could be filed either in the High Court
having jurisdiction over the place at which the design is registered or in the
High Court, the local jurisdiction of which has a nexus with the subject matter
of the cause of action of the application. Mr. Dave urged that in the said
case, the High Court made it clear that an application for cancellation cannot
be made in any High Court merely because the applicant chose to do so. In fact,
the applicant would have to establish the jurisdiction of the High Court to
which the application is made by establishing a live link between the territory
in which the cause of action and the subject matter of the application. Mr.Dave
submitted that the sum total of the decision in Girdharilal Gupta's case is
that in the normal course both the Calcutta High Court and the High Court
within whose territorial jurisdiction the cause of action arises, would have
jurisdiction to entertain an appeal under Section 8 19 of the Designs Act, 2000, but in some cases such jurisdiction would also extend to
any other High Court within the local limits of which a part of the cause of
action and/or subject matter of the application may arise or be situate. Mr.
Dave urged that the latter part of the findings was not in consonance with
Section 19(2) of the 2000 Act.
7.
Mr. Dave submitted that a different view had been expressed by a learned
Single Judge of the Delhi High Court in M/s. Scooters India Ltd. vs.M/s. Jaya
Hind Industries Ltd. & Anr. [AIR 1988 Delhi 82], wherein it was held that
rejection of an application for grant of patent under the provisions of the Patents Act, 1970, and the Patents Rules, 1972, by the Deputy Controller of
Patents and Designs, Bombay, gave rise to a cause of action whereby appeal
against such order of refusal could be filed only in the Bombay High Court and
not in any other High Court.
8.
Reference was then made by Mr. Dave to the decision of this Court
in Ambika Industries vs.Commissioner of Central Excise [(2007) 6 SCC 769],
wherein the question as to which High Court would have the jurisdiction to
entertain an appeal from an order of the Appellate Tribunal exercising
jurisdiction over several States, was in question and this Court held that it
had to be determined on the basis of the statutory provisions and nothing else
such as dominus litus or the situs of the Appellate Tribunal or the cause of
action.
Accordingly,
where the first forum was located in the State other than the State where the
Appellate Tribunal was located, the appropriate High Court to entertain the
appeal was the High Court situated in the former State and not the High Court
situated in the latter State.
9.
Mr. Dave also referred to the decision of this Court in Canon
Steels (P) Ltd. vs. Commissioner of 10 Customs [(2007) 14 SCC 464] where the
original order had been passed under the Customs Act at Mumbai whereas the
appellate order was passed by the Customs Excise and Service Tax Appellate
Tribunal (CESTAT) at Delhi. Appeal under Section 130 of the Customs Act, 1962, filed in the High Court at Delhi was withdrawn with
liberty to file the appeal in the appropriate place. An appeal was subsequently
filed in the Punjab and Haryana High Court at Chandigarh on the ground that a
part of the cause of action had arisen at Chandigarh. The Punjab and Haryana
High Court, however, held that it had no jurisdiction to entertain the appeal.
Affirming
the said view, this Court held that since neither the original nor the
appellate orders were passed within the territorial jurisdiction of the Punjab
and Haryana High Court, it was the Delhi High Court which had jurisdiction to
entertain the appeal.
10.
Mr. Dave submitted that similarly since the order impugned in the
appeal had been passed in Kolkata, it was the Calcutta High Court and not the
Delhi High Court which had jurisdiction to entertain the statutory appeal under
Section 19 of the Designs
Act, 2000.
11.
Several other decisions were also cited by Mr.Dave on similar
lines which need not detain us at present.
12.
Mr. Dave submitted that the Delhi High Court was apparently
persuaded to make a comparison between the provisions of Section 51A of
the Designs
Act, 1911 and Section 19(2) of the Designs Act,
2000, which led to erroneous reliance being placed on the decision of the Delhi
High Court in Girdharilal Gupta's case (supra) the facts whereof were
completely different and distinguishable from the facts of this case. Mr. Dave
submitted that having regard to the above, the impugned judgment of the High
Court was liable to be set aside.
13.
Mr. Chander Lall, learned advocate, appearing for the Respondent
No.1, referred to Sections 19 and 22(2) (b) read with Section 22(3) of
the Designs
Act, 2000, and contended that the said provisions
contemplated cancellation of a Design by the Controller of Designs, and punishment
for piracy of a Design in any suit in any Court not below that of a District
Judge. Mr. Lall submitted that when such a suit was pending before the High
Court and a defence as provided for under Section 19 of the Act was taken, the
matter had to be decided by the High Court and the Controller ought not to be
left to decide the said issue, as an appeal from the Controller's order would
also lie to the High Court under Section 19 which could result in conflict of
decisions. In this regard reference was made to the Full Bench decision of 13
the Delhi High Court in M/s Metro Plastic Industries (Regd.) vs. M/s Galaxy
Footwear, New Delhi (AIR 2000 Delhi 117), in which the question for decision
was whether an injunction could be granted in favour of a registered owner of a
design when an application under Section 51-A of the Designs Act,
1911, was pending. After examining the provisions of
Section 51 A, the Full Bench on a reference to Sections 53 and 54 relating to
piracy of registered designs and the incorporation of the provisions of
the Patents Act, 1970, into the Designs Act,
held that the powers conferred under Section 53 were not absolute and did not
contemplate an absolute right in the owner to prevent all other persons from
infringing that design under all circumstances. It was held further that
Section 53 creates a right in a registered owner and in the absence of an
application for cancellation such a right can be enforced and no defence can be
taken based on a ground of cancellation. But once an application for
cancellation is filed, the Court trying a suit under Section 53 would not be
entitled to ignore the same.
14.
Mr. Lall then submitted that there were innumerable instances of
appeals having to be filed at the place where the cause of action had arisen or
the effect thereof was felt. By way of example, Mr. Lall submitted that appeals
against orders passed by the Company Law Board would lie only before the Delhi
High Court. The decision in Stridewell Leathers (P) Ltd. vs. Bhankerpur
Simbhaoli Beverages (P) Ltd. [(1994) 1 SCC 34] was also referred to in this
regard.
15.
Mr. Lall submitted that full disclosures had not been made
regarding the pendency of the suit filed by the respondent, which is still
pending decision, wherein the appellant had filed a counter affidavit and a
defence had been taken against cancellation. Mr. Lall submitted that for the
reasons aforesaid and also in view of the fact that under the Designs Act, 2000, only the Controller of Designs had the jurisdiction to
cancel a design, no interference was called for with the order of the Delhi
High Court ruling on its jurisdiction to entertain the Appeals under Section 19
of the 2000 Act.
16.
Countering the submissions made by Mr. Lall with regard to the
jurisdiction of the Delhi High Court, Mr. Dave concluded on the note that after
the enactment of the Design Act, 2000, it is only the Controller of Designs
before whom an application can be made under Section 19 for cancellation of a
Design in contrast to the provisions of Section 51 A of the 1911 Act under
which even the High Court could cancel the registration of a Design. Mr. Dave
urged that in view of the amendments in Section 51-A of the 1911 Act the
question of jurisdiction of the Delhi High Court to entertain the appeals has
become relevant.
17.
The answer to the question thrown up in these appeals involves the
interpretation of the expression "High Court" used in Sections 19(2)
and 22(4) of the 2000 Act and in Section 51A of 1911 Act.
18.
Section 51A of the 1911 Act which deals with "Cancellation of
Registration", provides as follows:
"51A.
Cancellation of registration. (1) Any person interested may present a petition
for the cancellation of the registration of a design- (a) at any time after the
registration of the design, to the High Court on any of the following grounds,
namely:- (i) that the design has been previously registered in India; or (ii)
that it has been published in India prior to the date of registration ; or
(iii) that the design is not a new or original design ; or 17 (b) within one
year from the date of the registration, to the Controller on either of the
grounds specified in sub-clauses (i) and (ii) of clause (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."
19.
Section 51A(1)(a) very clearly provides that at any time after
registration of the design, an application for cancellation of the registration
could be made to the High Court on the grounds indicated therein. Section
51A(1)(b) makes an exception and provides that within one year from the date of
registration of the design, an application could be made for cancellation of
the registration to the Controller on the grounds specified in Sub-clauses (i)
and (ii) of Clause (a). Section 51A(2) provides that an appeal from 18 the
order of the Controller would lie to the High Court.
20.
Section 19 of the 2000 Act, on the other hand, provides as follows
:
"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 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 this section to the
High Court, and the Controller may at any time refer any such petition to the
High 19 Court, and the High Court shall decide any petition so referred."
21.
In contrast to the provisions of Section 51A(1)(a) of the 1911
Act, Section 19(1) of the 2000 Act, which also deals with cancellation of
registration, provides for a petition for cancellation of registration of a
design to be filed before the Controller and not to the High Court. On a
comparison of the two provisions of the two enactments, it will be obvious that
under the 2000 Act the intention of the Legislature was that an application for
cancellation of a design would lie to the Controller exclusively without the
High Court having a parallel jurisdiction to entertain such matters. It is also
very clear that all the appeals from any order of the Controller under Section
19 of the 2000 Act shall lie to the High Court. The basic difference,
therefore, as was pointed out to the High Court and noticed by it, is that
while under Section 19 of the 2000 Act 20 an application for cancellation would
have to be made to the Controller of Designs, under Section 51A of the 1911 Act
an application could be preferred either to the High Court or within one year
from the date of registration to the Controller on the grounds specified under
Sub- clauses (i) and (ii) of Clause (a) of Section 51A(1). Under Section 19 of
the 2000 Act the power of cancellation of the registration lies wholly with the
Controller. On the other hand, an application for cancellation of a design
could be made directly to the High Court under Section 51A of the 1911 Act.
Under the 2000 Act, the High Court would be entitled to assume jurisdiction
only at the appellate stage, whereas under Section 51A of the 1911 Act the High
Court could itself directly cancel the registration. Whereas in Girdharilal
Gupta's case (supra), the question of jurisdiction of the High Court was in
relation to an application made to the High Court directly, in 21 the instant
case, we are concerned with an order of the Controller against which an appeal
is required to be filed before the High Court. While in Girdharilal Gupta's
case the Court was considering the expression "High Court" in the
context of a fall-out in respect of the ground of registration and the cause of
action arising on account of such fall-out, in the present case, there is no
question of any consequential impact since the application for cancellation of
registration was on the basis of fake documents created in order to perpetrate
a fraud.
22.
The reliance placed by the High Court on the judgment in
Girdharilal Gupta's case (supra) appears to be misplaced, inasmuch as, while
under the 1911 Act the High Court acts as an Original forum, under the 2000 Act
the High Court acts as an Appellate forum, which are two separate jurisdictions
operating in two different fields.
22 In
the instant case, the doctrine of cause of action, as understood under Section
20 C.P.C., has been imported on the basis of the provisions of Section 51A of
the Designs
Act, 1911, whereas the case of the appellant would fall under Section 19 of
the Designs Act, 2000, where the High Court
functions as the Appellate forum. The cause of action for the instant
proceedings is most certainly the cancellation of the registered design of the
appellant which happened in the State of West Bengal which gave the Calcutta
High Court the jurisdiction to deal with the matter. The Delhi High Court, in
our view, erred in holding that the cause of action had arisen within its local
jurisdiction, whereas the jurisdiction of the High Court was on account of the
cancellation of registration of the design and not on account of the impact
thereof in any particular State. This is what distinguishes the decision in
Girdharilal Gupta's case from the facts of this case.
23.
Apart from the fact that the parties to the suit were in Kolkata,
it is clear that the cause of action for the suit arose in Kolkata by virtue of
the order passed by the Controller in relation to the appellant's design. As
the facts indicate, the cause of action for the suit arose in Kolkata, which,
in any event, had jurisdiction to entertain the suit. Having erroneously
applied the decision in Girdharilal Gupta's case (supra) to the facts of the
case, the High Court was led into error in holding that the consequence of the
cancellation gave jurisdiction to the Delhi High Court to entertain the suit,
without considering in its proper perspective the provisions of Section 51A of
the 1911 Act in contrast to the provisions of Section 19 of the 2000 Act.
24.
The various decisions cited by Mr. Dave to support his submissions
that the question as to which High Court would have jurisdiction to entertain
an appeal under Section 19, had to be determined on the basis of the statutory
provisions and not on the basis of dominus litus or the situs of the Appellate
Tribunal or the cause of action.
We are
inclined to accept Mr. Dave's submission that the Delhi High Court had erred in
making a comparison between the provisions of Section 51A of the 1911 Act and
Section 19(2) of the 2000 Act, which operate on different planes.
25.
Having regard to the above, we are of the view that the impugned
order of the Delhi High Court cannot be sustained and we, accordingly, set
aside the same and hold that in the instant case it is the Calcutta High Court
which will have jurisdiction to entertain the appeal under Section 19 of the
2000 Act. The proceedings before the Delhi High Court are, therefore, quashed.
The Appellant is granted leave to move the Calcutta High Court against the
order of cancellation of its 25 design on the grounds taken in these Appeals,
as well as such other grounds as may be relevant for the purpose of deciding
the question of cancellation of the Appellant's design by the Controller of
Designs, Kolkata, within 30 days from date. If the appeals are filed within the
said period, the delay in taking such proceedings shall be condoned.
26.
The appeals are, accordingly, allowed, but there will be no order
as to costs.
________________J.(ALTAMAS KABIR)
________________J.(CYRIAC JOSEPH)
New Delhi
Dated:29.01.2010
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