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S.D. Containers Indore v. M/s. Mold-Tek Packaging Ltd.

Civil Appeal · 2020 INSC 668Decided 1 Dec 2020
Civil Appeal No. 3695 of 2020
Justice L. Nageswara Rao · Justice Hemant Gupta · Justice Ajay Rastogi

Background

Mold-Tek Packaging sued S.D. Containers in the Commercial Court at Indore for infringing its registered container and lid designs. S.D. Containers counter-claimed for cancellation of those designs and, since Indian law requires such cancellation disputes to go to a High Court, applied to transfer the suit. The District Judge transferred the case to the Calcutta High Court, but the Madhya Pradesh High Court set that transfer aside, holding the Commercial Court at Indore itself was competent to decide the whole dispute.

Decision Breakdown

The Supreme Court held that once a defendant raises a design-cancellation defence in an infringement suit under Section 22(4) of the Designs Act, 2000, the transfer of that suit to a High Court is virtually automatic ("a ministerial act") and the trial court loses jurisdiction to decide the cancellation question itself, so the Madhya Pradesh High Court was wrong to hold that the Commercial Court at Indore could retain and decide the case. However, the Court agreed that Calcutta was the wrong destination since no part of the dispute's cause of action arose there; the correct forum was the Madhya Pradesh High Court, Indore Bench, where the plaintiff had actually filed suit. The High Court's order was therefore set aside and the matter remitted to the Madhya Pradesh High Court, Indore Bench, to decide the underlying suit (including the design-cancellation question) on its merits.

Lesson Learnt

In a design-infringement lawsuit, if the defendant challenges the validity of the registered design itself, the law requires the case to move from the trial court up to the relevant High Court, but it must go to the High Court connected to where the dispute actually arose, not just any High Court a party prefers.

Official source (sci.gov.in)View Judgment (PDF)

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