The 3-Judge Bench of the Supreme Court of India has upheld the view that the suit for alleged infringement in designs, where the defendant had in a counter claim sought cancellation of the registered design, is to be transferred to a High Court even if it does not have a Commercial Court Bench, i.e. High Courts which do not have ordinary original civil jurisdiction.
The Apex Court set aside the Madhya Pradesh High Court decision wherein the High Court had in turn set aside the Commercial District Court at Indore’s order transferring the suit to the Calcutta High Court.
The defendant in the design infringement suit had filed an application before the Commercial District Court at Indore, M.P., under Section 22(4) of the Designs Act, 2000, for transfer to the Madhya Pradesh High Court.
The Supreme Court observed that there is no provision in the Commercial Courts Act, 2015 either prohibiting or permitting the transfer of the proceedings under the Designs Act, 2000 to the High Courts which do not have ordinary original civil jurisdiction.
It noted that Section 7 of the Commercial Courts Act only deals with the situation where the High Courts have ordinary original civil jurisdiction. The Court was also of the view that Section 21 of the 2015 Act gives an overriding effect, only if the provisions of the Act have anything inconsistent with any other law for the time being in force and since there was no inconsistency, said provision will not be applicable.
The Commercial District Court’s decision was found to be in accordance with law except the part for transfer to Calcutta High Court. The Apex Court in this case S.D. Containers Indore v. Mold Tek Packaging Ltd [Judgement dated 1 December 2020] held that the suit was liable to be transferred to Madhya Pradesh High Court since no cause of action had arisen within the jurisdiction of Kolkata.