Rajasthan High Court - Jaipur
Paresh Ajitkumar Kapoor vs Tomar Enterprises on 28 July, 2022
Author: Inderjeet Singh
Bench: Inderjeet Singh
HIGH COURT OF JUDICATURE FOR RAJASTHAN
BENCH AT JAIPUR
S.B. Other Original Suit No. 1/2021
1. Paresh Ajitkumar Kapoor, Aged About 48 Years, Male,
Having Present Address At A-11, Savita Apartment Nr.
Judgees Bungalow, Bodakdev, Ahmedabad,
2. Kapsun Resources Corporation, A Proprietorship Concern
Through Its Proprietor Meeta Ashok Kapoor, Through Her
Power Of Attorney Holder Shri Paresh Ajitkumar Kapoor
(Plaintiff No. 1) Having Address At Shed No. 5, Raj Estate,
B/h. Vallabh Dining Hall, Sarkhej Sanand Cross Road,
Sarkhej, Ahmedabad-382210
----Petitioners
Versus
1. Tomar Enterprises, (Dealer/seller Of Product Of Defendant
No. 2 And 3) Having Address At 9, Jayanti Market, M.i.
Road, Jaipur-3276256.
2. Raj Cooling System Private Limited, Cin -
U31904Gj2017Ptc097755 A Company Registered Under
Companies Act, 1956 Through Its Director Defendant No.
3, Having Its Address At Plot No. 58, Survey No. 31, B/h
Show Room Vavdi, Rajkot.
3. Raj Cooling World Private Limited, Cin -
U25203Gj2011Ptc067549 A Company Registered Under
Companies Act, 1956 Through Its Director Defendant No.
3 Having Its Address At Plot No. 58, Survey No. 31, Opp.
Jivraj Estate, Gondal Road, Vavdi, Rajkot.
4. Kamleshkumar Manubhai Ramoliya, Din No. 07751960
Male, Aged Adult, Having Address At Plot No. 58, Survey
No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
5. Bhavnaben Kamleshbhai Ramoliya, Din No. 03639885
Female Aged Adult. Having Address At Plot No. 58,
Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi,
Rajkot.
----Respondents
Connected With S.B. Civil Miscellaneous Appeal No. 549/2021 Kamlesh Kumar Manubhai Ramoliya, Having Address At Plot No. 58, Survey No. 31, Opp. Juvraj Estate Estate, Gondal Road, (Downloaded on 25/12/2022 at 03:44:44 AM) (2 of 23) [OOS-1/2021] Vavdi, Rajkot (Name Wrongly Mentioned In Suit As Kamlesh Instead Of Kalpesh)
----Petitioner Versus
1. Paresh Ajitkumar Kapoor, R/o A-11, Savita Apartment, Nr.
Judges Bungalow, Bodakdev Ahmedabad.
2. Kapsun Resources Corporation A Proprietorship Concern, Through Its Proprietor Meeta Ashok Kapoor, Through Her Power Of Attorney Holder Shri Paresh Ajitkumar Kapoor (Plaintiff No. 1) Having Address At Shed No. 5 Raj Estate, B/h. Vallabh Dining Hall, Sarkhej-Sanand Cross Road, Sarkhej, Ahmedabad-382210
3. Tomar Enterprises, (Dealer/seller Of Article Of Defendant No. 2 And 3) Having Address At 9, Jayanti Market, M.i. Road, Jaipur-2376256.
4. Raj Cooling System Private Limited, (Cin U31904Gj2017Ptc097755) A Company Registered Under Companies Act, 1956, Through Its Director Defendant No. 3, Having Its Address At Plot No. 58, Survey No. 31, B/h Show Room, Vavdi, Rajkot.
5. Raj Cooling World Private Limited, (Cin U25203Gj2011Ptc067549) A Company Registered Under Companies Act, 1956, Through Its Director Defendant No. 3, Having Its Address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
6. Bhavnaben Kamleshbhai Ramoliya, (Din No. 03639885) Aged Adult, Having Address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot
----Respondents S.B. Civil Miscellaneous Appeal No. 612/2021 Kamlesh Kumar Manubhai Ramoliya, Aged Adult, Having Address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot (Name Wrongly Mentioned In Suit As Kamlesh Instead Of Kalpesh)
----Petitioner Versus
1. Paresh Ajitkumar Kapoor, Aged About 48 Years, R/o A-11, Savita Apartment, Nr. Judges Bungalow, Bodakdev, Ahmedabad.
(Downloaded on 25/12/2022 at 03:44:44 AM)(3 of 23) [OOS-1/2021]
2. Kapsun Resources Corporation, A Proprietorship Concern Through A Proprietorship Concern Through Its Proprietor Meeta Ashok Kapoor, Through Her Power Of Attorney Holder Shri Paresh Ajitkumar Kapoor (Plaintiff No. 1) Having Address At Shed No.5 Raj Estate, B/h. Vallabh Dining Hall, Sarkhej Sanand Cross Road, Sarkhej, Ahmedabad 382210.
3. Tomar Enterprises, (Dealer/seller Of Article Of Defendant No.2 And 3) Having Address At 9, Jayanti Market, M.i. Road, Jaipur-2376256.
4. Raj Cooling System Private Limited, (Cin U31904Gj2017Ptc097755) A Company Registered Under Companies Act, 1956, Through Its Director Defendant No.3, Having Its Address At Plot No. 58, Survey No. 31, B/h Show Room, Vavdi, Rajkot.
5. Raj Cooling World Private Limited, (Cin U25203Gj2011Ptc067549) A Company Registered Under Companies Act, 1956, Through Its Director Defendant No.3, Having Its Address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
6. Bhavnaben Kamleshbhai Ramoliya, (Din No. 03639885) Aged Adult, Having Address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
----Respondents For Petitioner(s) : Mr. Rajendra Prasad, Sr. Counsel with Mr. Rahul Khandelwal(in OOS 1/2021) Mr. Anuroop Singhi (in OOS 1/2021) Mr. Rahul Lodha (in C.M.A-549/2021) & (C.M.A.-612/2021) Mr. Harshit (in OOS-1/2021) Mr. S.S. Hora (in CMA-549/2021, CMA-612/2021) For Respondent(s) : Mr. Rahul Lodha (in OOS 1/2021) Mr. S.S. Hora ( in OOS 1/2021) Mr. Harshit Tholia (in CMA-549/2021) Mr. Rahul Khandelwal (in CMA-
549/2021) Mr. Anuroop Singhi (in CMA-
612/2021) HON'BLE MR. JUSTICE INDERJEET SINGH Order (Downloaded on 25/12/2022 at 03:44:44 AM) (4 of 23) [OOS-1/2021] 28/07/2022
1. As evident from the order of the Court dated 12.05.2022, the application under Order 7 Rule 10 CPC was dismissed as withdrawn and thereafter the matter is being listed for consideration on the application under Order 39 Rule 1 & 2 as well as application under Order 7 Rule 11 read with section 151 CPC.
As prayed by both the counsel for the parties, the application filed under Order 7 Rule 11 CPC read with Section 151 CPC has been heard and is being decided by the present order.
2. Before adjudicating upon the aforesaid application under Order 7 Rule 11 CPC, this Court considers it appropriate to take stock of certain background facts which are thus. The plaintiffs have filed a suit for infringement and perpetual injunction under Section 22 of the Designs Act, 2000 (hereinafter to be referred as the Act, 2000) against the defendants in the court of District and Sessions Court, Jaipur Metro-II, Jaipur along with temporary injunction application & came to be registered as Civil Suit No.106/2021, however the same was transferred to the Court No.8 of Additional District Judge, Jaipur Metropolitan-II, Jaipur.
The said Court after hearing counsel for the plaintiffs, vide order dated 26.02.2021, restrained the defendants from manufacturing and selling the design number 233559 (for the products of Air Cooler in class 23-04) and posted the matter for 18.03.2021.
From the order-sheet of the court below dated 18.03.2021, it reveals that an application under Section 22 (4) of the Act, 2000 was filed by the defendant no.4 and the counsel appearing on his behalf prayed before the court below that in view of the provisions of Section 22(4) of the Act, 2000 the suit along with temporary injunction application be transferred to the High Court for (Downloaded on 25/12/2022 at 03:44:44 AM) (5 of 23) [OOS-1/2021] consideration. The said request was not seriously opposed by the counsel for the plaintiffs, however submitted that at least the interim order granted in favour of the plaintiffs be extended till the first date of hearing before the High Court. The court below taking into consideration the provisions contained under Section 22(4) of the Act, 2000, referred the matter to this Court, which in turn was assigned to this Court under the directions of Hon'ble the Chief Justice along with two other connected appeals. When the matter came up before this Court on 12.05.2022 it was prayed by the counsel appearing on behalf of the defendants no.2 & 4 that the application so far it relates to under Order 7 Rule 10 CPC may be permitted to be withdrawn and considering the request and not opposed by the opposite side, the application to the extent of Order 7 Rule 10 CPC was dismissed as withdrawn, keeping open the matter for consideration on the application so far it relates to Order 7 Rule 11 CPC as well, as stated here-in-above. Therefore, the present order shall govern the disposal of the application filed by the defendants no.2 & 4 to the extent it relates to under Order 7 Rule 11 read with Section 151 CPC.
3. Counsel appearing on behalf of the defendants No.2 & 4 submitted that the present application under Order 7 Rule 11 CPC is basically filed on three counts i.e. the suit being under valued, cause of action being artificial & fake and two parallel proceedings being availed by the plaintiffs simultaneously and based on the first count of under valuation, counsel appearing on behalf of the defendants No.2 & 4 submitted that the suit of the plaintiff has been under valued just to avoid the matter getting adjudicated by the Commercial Court and this action of the plaintiffs amounts to forum shopping and such practice has been strictly deprecated by (Downloaded on 25/12/2022 at 03:44:44 AM) (6 of 23) [OOS-1/2021] the Hon'ble Supreme Court in a number of judgments delivered in this regard. Counsel next submitted that cause of action as disclosed in the suit is artificial & fake as on a single bill showing purchase of Air Cooler by the plaintiff on 25.02.2021 from defendant no.1, who has been wrongly alleged to be the distributor of defendants no.2 & 4, the present suit has been filed which is not sustainable on this count also. Counsel then submitted that during pendency of the present suit, the plaintiffs have also approached the Controller, Trademark & Designs, Kolkata and thus the subject matter before both the two forums being the same, the plaintiffs cannot be allowed to sail in two boats simultaneously availing two parallel proceedings at a single point of time. Counsel further submitted that in fact no cause of action arises for filing of this suit before the court at Jaipur which has no jurisdiction in the matter and it is the Commercial Court which has jurisdiction to try & decide the suit filed by the petitioners-plaintiffs as the same relates to the dispute to be adjudicated upon under the Act, 2000. Counsel lastly submitted that the application of the applicants-defendants under Order 7 Rule 11 CPC read with Section 151 CPC be allowed and the suit filed by the plaintiffs under the Act, 2000 be dismissed.
4. In support of the contentions, counsel relied upon certain judgments which are as follows. The Hon'ble Supreme Court in the matter of T. Arivandandam Vs. T.V. Satyapal & Anr. reported in (1977) 4 SCC 467 in para No.5, it has held as under:-
"5. We have not the slightest hesitation in condemning the petitioner for the gross abuse of the process of the court repeatedly and unrepentantly resorted to. From the statement of the facts found in the judgment of the High Court, it is perfectly (Downloaded on 25/12/2022 at 03:44:44 AM) (7 of 23) [OOS-1/2021] plain that the suit now pending before the First Munsif's Court Bangalore, is a flagrant misuse of the mercies of the law in receiving plaints. The learned Munsif must remember that if on a meaningful -- not formal -- reading of the plaint it is manifestly vexatious, and meritless, in the sense of not disclosing a clear right to sue, he should exercise his power under Order VII Rule 11, C.P.C. taking care to see that the ground mentioned therein is fulfilled. And, if clear drafting has created the illusion of a cause of action, nip it in the bud at the first hearing by examining the party searchingly under Order X, C.P.C. An activist Judge is the answer to irresponsible law suits.
The trial Courts would insist imperatively on examining the party at the first hearing so that bogus litigation cam be shot down at the earliest stage.
The Penal Code is also resourceful enough to meet such men, (Ch. XI) and must be triggered against them. In this case, the learned Judge to his cost realised what George Bernard Shaw remarked on the assassination of Mahatma Gandhi:
It is dangerous to be too good."
5. The Hon'ble Supreme Court in the matter of K. Akbar Ali Vs. K. Umar Khan & Ors. reported in 2021 SCC OnLine SC 238 in para No.7, has held as under:-
7. In any case, an application under Order VII Rule 11 of the CPC for rejection of the plaint requires a meaningful reading of the plaint as a whole. As held by this Court in ITC v. Debts Recovery Appellate Tribunal reported in (1998) 2 SCC 70:AIR 1998 SC 634, clever drafting creating illusions of cause of action are not permitted in law and a clear right to sue should be shown in the plaint. Similarly the Court must see that the bar in law of the suit is not camouflaged by devious and clever drafting of the plaint. Moreover, the provisions of Order VII Rue 11 are not exhaustive and the Court has the inherent power to see that frivolous or vexatious litigations are not allowed to consume the time of the Court."(Downloaded on 25/12/2022 at 03:44:44 AM)
(8 of 23) [OOS-1/2021] 6. The Hon'ble Supreme Court in the matter of
Meenakshisundaram Chettiar Vs. Venkatachalam Chettiar reported in (1980) 1 SCC 616 in para No.11, has held as under:-
"11. The plaint shall be rejected in the following cases:-
(b) where the relief claimed is undervalued, and the plaintiff on being required by the Court to correct the valuation within a time to be fixed by the Court, fails to do so;
This section casts a duty on the court to reject the plaint when the relief claimed is undervalued. If on the materials available before it the Court is satisfied that the value of relief as estimated by the plaintiff in a suit for accounts is undervalued the plaint is liable to be rejected. It is therefore necessary that the plaintiff should take care that the valuation is adequate and reasonable taking into account the circumstances of the case. In coming to the conclusion that the suit is undervalued the court will have to take into account that in a suit for accounts the plaintiff is not obliged to state the exact amount which would result after the taking of the accounts. If he cannot estimate the exact amount he can put a tentative valuation upon the suit for accounts which is adequate and reasonable. The plaintiff cannot arbitrarily and deliberately undervalue the relief. A full Bench of the Andhra Pradesh High Court in a decision in Chillakuru Chanchuram Reddy v. Kanupuru Chenchurami Reddy, after elaborate consideration of the case law on the subject has rightly observed that there must be a genuine effort on the part of the plaintiff to estimate his relief and that the estimate should not be a deliberate underestimation.
7. The Hon'ble Supreme Court in the matter of Abdul Hamid Shamsi Vs. Abdul Majid and Ors. reported in (1988) 2 SCC 575 in para No.7, has held as under:- "7. It is true that in a suit for accounts the correct amount payable by one party to the other can be ascertained only when the accounts are examined and it is not possible to give an accurate valuation of the (Downloaded on 25/12/2022 at 03:44:44 AM) (9 of 23) [OOS-1/2021] claim at the inception of the suit. The plaintiff is, therefore, allowed to give his own tentative valuation. Ordinarily the Court shall not examine the correctness of the valuation chosen, but the plaintiff cannot act arbitrarily in this matter. If a plaintiff chooses whimsically a ridiculous figure it is tantamount to not exercising his right in this regard. In such a case it is not only open to the Court but its duty to reject such a valuation. The cases of some of the High Courts which have taken a different view must be held to be incorrectly decided."
8. The Hon'ble Supreme Court in the matter of Godrej Sara Lee Limited vs. Reckitt Benckiser Australia Pty. Ltd. and Anr. reported in 2010 2 SCC 535 in para Nos.16,24,25 & 26, has held as under:-
16. 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.
24. 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 (Downloaded on 25/12/2022 at 03:44:44 AM) (10 of 23) [OOS-1/2021]
(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 Court, and the High Court shall decide any petition so referred."
25. In contrast to the provisions of Section 51-A(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.
26. 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 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 51-A(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 (Downloaded on 25/12/2022 at 03:44:44 AM) (11 of 23) [OOS-1/2021] 51A of the 1911 Act the High Court could itself directly cancel the registration."
9. The Hon'ble Supreme Court in the matter of Rajendra (Dead) Vs. Chandadevi & Sons(P) Ltd. Co. & Ors. reported in (2005) 12 SCC 335, in para No.5, has held as under:-
"5. In our opinion, it is not necessary to permit two parallel proceedings being pursued at the instance of the same person. Hence, we direct this appeal to be treated as disposed of and the interim orders dated 24-12-2003 and 16-1-2004 passed by this court to remain in operation till the High Court has heard and decided the application dated 18-12-2003 filed by the appellant herein who is Respondent 6 in the High Court."
10. The Hon'ble Supreme Court in the matter of State of Himachal Pradesh & Ors. v. Surinder Singh Banolta reported in (2006) 12 SCC 484, in para No.18, has held as under:-
"18. If a candidate or a voter had the knowledge that the elected candidate was disqualified in terms of Section 122 of the Act, he may file an application. The order of eviction may come to the notice of some other person after the election process is over. A situation, thus, may arise where two different proceedings may lie before two different authorities at the instance of two different persons. Two parallel proceedings, it is well settled, cannot be allowed to continue at the same time. A construction of a statute which may lead to such a situation, therefore, must be avoided. It will also lead to an absurdity if two different Tribunals are allowed to come to contradictory decisions."
11. The High Court of Delhi in the matter of Heinz India Pvt.
Ltd. vs. Shrejee Remedies (C.S. (OS) No. 2367/2012) decided on 29.04.2013, in para No.14, has held as under:-
"14. In the present case, the plaintiff has submitted that the cause of action arose when they learnt that the defendant was selling its products under the name NEHACIL within the territorial limits of (Downloaded on 25/12/2022 at 03:44:44 AM) (12 of 23) [OOS-1/2021] Delhi. In furtherance of this contention, the plaintiff has also claimed that this Court has the jurisdiction to try the present suit. The relevant parts of the plaint reads as follows:
20. The cause of action for the present suit accrued to the Plaintiff for the first time in July 2008 when it learnt of the Defendant's offending activities. The cause of action has thereafter accrued on every day that the defendant has used the trademark "NEHACIL" as its trademark in relation to its goods.
21. That this Hon'ble Court has jurisdiction to entertain and try the present suit in as much as the Plaintiff carries on its business within the territorial jurisdiction of the Hon'ble Court. The Plaintiff has its branch office within the jurisdiction of the Hon'ble Court.
Further the Defendant is supplying and selling the infringing goods in Delhi within the territorial jurisdiction of this Hon'ble Court.
Further the Defendant has filed an application for registration of the trademark NEHACIL LAVENDER, which further proves that the Defendant has the intention of carrying on business under the impugned mark all over the country including Delhi.
The plaintiff has produced on record a bill provided by one Batra Medical Hall which allegedly sold the products of the defendant under the trademark NEHACIL."
12. Learned Senior Counsel appearing on behalf of the plaintiffs opposed the application under Order 7 Rule 11 CPC read with section 151 CPC and submitted that the suit has been properly valued by the plaintiffs and while deciding the application under Order 7 Rule 11 read with Section 151 CPC, this court has to see the pleadings of the plaint only. Learned Senior Counsel further submitted that the suit has rightly been filed at Jaipur as the (Downloaded on 25/12/2022 at 03:44:44 AM) (13 of 23) [OOS-1/2021] cause of action has arisen only within the jurisdiction of Jaipur as it came to the notice of the petitioners-plaintiffs that the defendants No.2 & 4 are making copy of the design of the Cooler which design is registered one with the petitioners-plaintiffs only and it is a clear case of infringement under the Act, 2000. Learned Senior Counsel further submitted that the objection regarding jurisdiction of the suit also does not survive now as the respondents-defendants No.2 & 4 themselves have withdrawn their application to the extent of being filed under Order 7 Rule 10 of CPC as evident from the order dated 12.05.2022. Learned Senior Counsel further submitted that when the transfer petition came up for consideration before the Hon'ble Supreme Court, the respondents-defendants No.2 & 4 themselves submitted that they have no objection and also agreed to participate & contest the proceedings, if the suit is tried at Rajasthan and thus they are now estopped to raise such an objection. Learned Senior Counsel further submitted that the proceedings initiated before the Controller under the Act, 2000 are separate proceedings and the remedy which they are presently purusing in this suit civil is separately provided under the Act, 2000 itself. Learned Senior Counsel further submitted that there is no bar in filing the suit before the Civil Court under the Act, 2000 therefore, the suit has rightly been filed. Learned Senior Counsel further submitted that the objection raised by the applicants-defendants regarding transfer of the matter to the Commercial Court does not survive as only after proper valuation the suit has rightly been filed before the Civil Court and has been transferred for consideration to this Court on the application submitted by the defendants No.2 & 4 themselves before the Civil Court under Section 22(4) of the Act, (Downloaded on 25/12/2022 at 03:44:44 AM) (14 of 23) [OOS-1/2021] 2000 and as such the objection raised by defendants No.2 & 4 in this regard is also irrelevant.
13. In support of the contentions, learned Senior Counsel relied upon certain judgments which are as follows.
14 The Hon'ble Supreme Court in the matter of S.D. Containers Indore Vs. M/s. Mold Tek Packaging Ltd.
reported in (2021) 3 SCC 289, in para Nos.4,5,12,14 & 19, has held as under:-
"4. The said order passed by Commercial Court was challenged by the plaintiff/respondent before the Madhya Pradesh High Court. The High Court examined the question as to whether the proceedings of the said suit was liable to be transferred to the High Court or if the Commercial Court at Indore was competent to decide the matter. The High Court relied upon Godrej Sara Lee Ltd. vs Reckitt Benckiser Australia Pty. Ltd. and another3 to hold that the legislature intended that an application for cancellation of registration of design would lie to the Controller exclusively without the High Court having a parallel jurisdiction to entertain such matter because the appeals from the order of the Controller lie before the High Court. It was further held that the 2015 Act is a special enactment having an overriding effect, save as otherwise provided the provisions, by virtue of Section 21 of the said Act.
5. The relevant provisions of the statutes, i.e. the 2000 Act and the 2015 Act are reproduced below: "The Design Act, 2000
4. Prohibition of registration of certain designs.--A design which--
(a) is not new or original; or
(b) - (d) xx xx xx shall not be registered."
22. Piracy of registered design. -- (1)- (2) xx xxx xxx (3) In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be (Downloaded on 25/12/2022 at 03:44:44 AM) (15 of 23) [OOS-1/2021] 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 or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence under sub-section (3) in any suit or other proceeding for relief under sub- section (2), the suit or such other proceedings shall be transferred by the Court, in which the suit or such other proceeding is pending, to the High Court for decision.
(5) When the court makes a decree in a suit under subsection (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.
12. The judgment in Godrej Sara Lee arises out of an order passed by the Controller of Patent & Designs, Kolkata under Section 19(1) of the 2000 Act, cancelling the registered designs belonging to the respondent therein. The question examined was as to whether the Delhi High Court has jurisdiction to entertain the appeals against the order of the Controller. The respondent had also filed a civil suit before the Delhi High Court alleging infringement of registered designs and thus seeking cancellation of the designs. Later, the Controller of Design cancelled three designs belonging to the respondent. This order of cancellation was challenged by the respondent before the High Court. In these circumstances, the question examined was regarding interpretation of the expression High Court used in Section 19(2) and 22(4) of the 2000 Act and Section 51A of the Indian Patents and Designs Act, 1911.
14. Furthermore, in the 2000 Act, there are two options available to seek revocation of registration. One of them is before the Controller, appeal against which would lie before the High Court. Second, in a suit for infringement in a proceeding before the civil court on the basis of registration certificate, the defendant has been given the right to seek revocation of registration. In that eventuality, the suit is to be transferred to the High Court in terms of sub-section (4) of Section 22 of the 2000 Act. Both are (Downloaded on 25/12/2022 at 03:44:44 AM) (16 of 23) [OOS-1/2021] independent provisions giving rise to different and distinct causes of action.
19. The Bombay High Court in Whirlpool of India was dealing with a suit against the Defendant for infringement of the registered designs; passing off; and the damages. The defendant never sought the cancellation of the registration granted to the plaintiff but relied upon the registration granted to it. In these circumstances, the High Court held as under:
"19. In support of its contention that the Defendant's registered design can only be challenged by proceedings under Section 19 of the Act before the Controller, the Defendant would argue that the availability of a remedy under Section 19 of the Act for cancellation of a registered design amounts to a negation and exclusion of remedy under Section 22 of the Act. This is plainly incorrect. Section 19 and Section 22 of the Act operate independently in different circumstances. Section 19 of the Act is invoked to seek cancellation of a registration of a design. Section 22 of the Act is invoked where a registered design of a proprietor is infringed by any person and the registered proprietor seeks reliefs in the form of damages, injunction, etc. against the infringer. Such relief can be sought even against a registered proprietor of a design by questioning his registration. The Defendant too can submit that the Plaintiff is not entitled to any relief in terms of damages, injunction etc. by questioning the registration of the Plaintiff's on grounds available under Section 19 of the Act for cancellation of a registration. Again, Section 19 entitles a party to move the Controller for cancellation of a design even where the registered proprietor is not using the design. Section 19 therefore affords a cause of action where a mere registration is considered objectionable and a mere factum of registration affords a cause of action. In marked contrast, Section 22 of the Act affords a cause of action only where a registered design is being applied or caused to be applied to any article for the purposes of sale or in relation to or in connection with such sale. Consequently, if a registered proprietor does not apply his design to an article for sale or in connection (Downloaded on 25/12/2022 at 03:44:44 AM) (17 of 23) [OOS-1/2021] with such sale, another registered proprietor cannot have recourse to Section 22 of the Act. The remedy under Section 22 of the Act is only available where the impugned design is being used. A further distinction between Section 19 and 22 of the Act, as correctly pointed out on behalf of the Plaintiff is that while Section 19 is applicable to 'any person interested', Section 22 is available only to a small segment of such person viz. registered proprietors. The remedy under Section 19 and the remedy under Section 22 are therefore very different. They apply to different persons in different circumstances and for different reliefs."
15. The Hon'ble Supreme Court in the matter of Jaspal Kaur Cheema and Ors. vs. Industrial Trade Links and Ors., reported in (2017) 8 SCC 592, in para Nos.6 & 7, has held as under:-
"6. It is not in dispute that the Respondents were put in possession of the premises by the Appellants under the lease deed at Annexure P-1 dated 16.05.2006. The Appellants in paragraph (1) of the eviction petition averred that they are the owners and landlords of the premises and that the premises was let out to the Respondents through a lease deed dated
16.05.2006. In their written statement, the Respondents have not raised a specific plea denying or disputing the ownership of the Appellants. However, there is a general denial of the averments made in paragraph (1) of the eviction petition.
7. In terms of Order 8 Rule 3 of the Code of Civil Procedure, 1908 (for short 'the Code'), a Defendant is required to deny or dispute the statements made in the plaint categorically, as evasive denial would amount to an admission of the allegation made in the plaint in terms of Order 8 Rule 5 of the Code. In other words, the written statement must specifically deal with each of the allegations of fact made in the plaint. The failure to make specific denial amounts to an admission. This position is clear from the decisions of this Court in Badat and Co. v. East India Trading Co. , Sushil Kumar v. Rakesh Kumar , and M. (Downloaded on 25/12/2022 at 03:44:44 AM) (18 of 23) [OOS-1/2021] Venkataramana Hebbar v. M. Rajagopal Hebbar."
16. The Hon'ble Supreme Court in the matter of Balraj Taneja and Ors. vs. Sunil Madan and Ors. , reported in (1999) 8 SCC 396, in para Nos.6 & 7, has held as under:-
"9. The scheme of this Rule is largely dependent upon the filing or non-filing of the pleading by the defendant. Sub-rule (1) of Rule 5 provides that any fact stated in the plaint, if not denied specifically or by necessary implication or stated to be not admitted in the pleading of the defendant, shall be treated as admitted. Under Rule 3 of Order 8, it is provided that the denial by the defendant in his Written Statement must be specific with reference to each allegation of fact made in the plaint. A general denial or an evasive denial is not treated as sufficient denial and, therefore, the denial, if it is not definite, positive and unambiguous, the allegations of facts made in the plaint shall be treated as admitted under this Rule.
10. The proviso appended to this Rule is important in the sense that though a fact stated in the plaint may be treated as admitted, the Court may, in its discretion, still require such "admitted fact" to be proved otherwise than by such admission. This is an exception to the general rule of evidence that a fact which is admitted need not be proved.
11. Sub-rule (2) provides that if the defendant has not filed his Written Statement, it would be lawful for the Court to pronounce judgment on the basis of the facts contained in the plaint. The rule further proceeds to say that notwithstanding that the facts stated in the plaint are treated as admitted, the Court, though it can lawfully pass the judgment, may before passing the judgment require such fact to be proved. The rule is thus in consonance with the Proviso which also requires the fact, even though treated as admitted, to be proved. Thus, the Proviso and Sub-rule (2) read together indicate that where (Downloaded on 25/12/2022 at 03:44:44 AM) (19 of 23) [OOS-1/2021]
(i) an allegation of fact made in the plaint is not denied specifically, or
(ii) by necessary implication, or
(iii) stated to be "not admitted" in the pleading of the defendant, or
(iv) the defendant has not filed the written statement.
such allegations of facts shall be treated as admitted. The Court in this situation can either proceed to pronounce judgment on such admitted facts or may require the plaintiff, in spite of such admission, to prove such facts."
17. The High Court of Delhi in the matter of E.N. Project and Engineering Industries (P) Ltd. and Ors. vs. KVT Electrical Project and Engineering and Ors., (CS (COMM) 262/2020) decided on 12.10.2021, in para No.18, has held as under:-
"11. Whilst the onus to establish that a design put up for registration under Section 6 of the Act is new, original or novel is on the applicant seeking its registration, once the registration is granted, the onus shifts on to the challenger, who challenges the grant of registration on any of the grounds available under Section 19 of the Act. If the challenge to claimed newness of a design is on the ground of "prior publication", the onus rests on the challenger to demonstrate prior existence of the design by way of prior publication. In Bharat Glass Tube Limited v. Gopal Glass Works Limited reported as MANU/SC/2096/2008 : (2008) 10 SCC 657, it has been observed that the onus to prove objections against the registrability of a design on the ground of Section 19(1)(b) of the Act rests with the challenger.
12. In the light of this dictum, it is to be seen if the Defendants have discharged the onus sufficiently at this interim stage of examination to cast a doubt on the Plaintiff's registered design.
30. Moreover, the jurisdiction of this Court to interfere with an interlocutory or temporary injunction is purely equitable. The Supreme Court has also opined thus in Gujarat Bottling Co. Ltd. and Others v. Coca Cola Co. and Others reported as (Downloaded on 25/12/2022 at 03:44:44 AM) (20 of 23) [OOS-1/2021] MANU/SC/0472/1995 : (1995) 5 SCC 545. Relevant excerpt from the case is reproduced hereunder:-
"47. In this context, it would be relevant to mention that in the instant case GBC had approached the High Court for the injunction order, granted earlier, to be vacated. Under Order 39 of the Code of Civil Procedure, jurisdiction of the Court to interfere with an order of interlocutory or temporary injunction is purely equitable and, therefore, the Court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the Court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the court has to show that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the person who seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the Code of Civil Procedure, but also in respect of the party approaching the Court for vacating the ad interim or temporary injunction order already granted in the pending suit or proceedings."
18. The Hon'ble Supreme Court in the matter of Neelkanth Healthcare Pvt. Ltd., Jodhpur and Ors. vs. Neelkanth Minechem Partnership Firm, Jodhpur reported in 2018 AIR (Raj) 67, in para Nos.7 & 8, has held as under:-
"7. Indisputably, the plaintiff has filed the suit for injunction under Sections 134 and 135 of the Act of 1999 alleging infringement of registered trade mark and for passing off, which as per the provisions of Section 134 read with Section 135 of the Act of 1999 cannot be instituted in any Court inferior to District Court having jurisdiction. It is true that the dispute raised falls within the definition of 'commercial dispute', but there is nothing on record suggesting that the (Downloaded on 25/12/2022 at 03:44:44 AM) (21 of 23) [OOS-1/2021] specified value of the subject-matter of the commercial dispute in the suit exceeds rupees one crore. The value regarding the right to trade mark as estimated by the plaintiff has to be taken into account for the purpose of determining specified value and obviously the profit to which the plaintiff may be found entitled cannot be determined at this stage and thus, the court below has committed no error in rejecting the application preferred by the petitioners at this stage. It is not out of place to mention here that even as per the provisions of Section 26 (b) of the Rajasthan Court Fees and Suits Valuation Act, 1961 where the prayer relates to the plaintiff's exclusive rights to use, sell, print or exhibit any mark named book, picture, design or other thing and is based on an infringement of such exclusive rights, the fee payable shall be computed on the amount at which the relief sought is valued in the plaint or on rupees five hundred, whichever is higher and thus, the question of rejecting the valuation made by the plaintiff and presuming the specified value of the subject matter of the suit to be rupees one crore or more does not arise.
8. It is always open for the defendants to dispute the valuation made in the suit by the plaintiff by filing a written statement thereto. Obviously, the contentious issue, if any, between the parties shall be determined by the court below at the appropriate stage, but in any case, from the perusal of the plaint, in no manner it can be said that the suit as framed was liable to be rejected or returned by the court below for want of jurisdiction. In the result, the revision petition fails. It is hereby dismissed. No order as to costs."
19. Heard counsel for the parties and perused the record.
20. The first argument raised by the counsel for the defendants No.2 & 4 with regard to under valuation of the suit, is not acceptable in view of the fact that at this stage, while considering the application under Order 7 Rule 11 this court has to see the averments made in the plaint only and the question whether (Downloaded on 25/12/2022 at 03:44:44 AM) (22 of 23) [OOS-1/2021] valuation of suit is proper or not can only be decided at the appropriate stage after framing of the issues based on the pleadings made by the parties.
21. The second argument raised by counsel for the defendants No.2 & 4 that two parallel proceedings cannot run together, one before this court and another before the Controller under the Act of 2000 is also not acceptable in view of the fact that two separate provisions with regard to cancellation of registration of design as well as for restraining from using a registered design are provided under the Act of 2000. Further, so far as infringement on account of copy being made of the design registered with the plaintiffs only is concerned, there is no bar of jurisdiction in filing the suit before the Civil Court under the Act of 2000.
22. The another objection of the defendants about the cause of action being artificial and fake is also not acceptable as from the pleadings made in the plaint, it is revealed that the plaintiffs have stated that the respondents-defendants No.2 & 4 are regularly infringing the design of the cooler registered with the plaintiffs and are selling the same at various places including at Jaipur where the defendant No.1 has sold the coolers by infringing the registered design of the plaintiffs.
23. The another objection raised by the defendants regarding the proceedings being flimsy & fictitious in nature and also the objection of forum shopping, are also not acceptable in view of the fact that no such specific allegation has been made by the defendants No.2 & 4 in their application under Order 7 Rule 11 of CPC against any person by name.
24. In view of the material which has come on record, the judgments relied upon by counsel for the defendants No.2 & 4 are (Downloaded on 25/12/2022 at 03:44:44 AM) (23 of 23) [OOS-1/2021] of no help to them and the application filed by the defendants No.2 & 4 under Order 7 Rule 11 read with Section 151 CPC, based on the objections/grounds (supra) is without merit and deserves to be dismissed.
25. In that view of the matter, the application under Order 7 Rule 11 read with Section 151 CPC filed on behalf of the defendants No.2 & 4 is dismissed.
26. List the matters on 12.09.2022.
(INDERJEET SINGH),J MG/355-357 (Downloaded on 25/12/2022 at 03:44:44 AM) Powered by TCPDF (www.tcpdf.org)