District Court Can Hear Design Infringement Cases Unless Cancellation Is Sought : Rajasthan High Court

SN Kapoor Export had accused Saraswati Global Ltd., another Jaipur-based manufacturer and exporter, of copying its registered carpet and rug designs. During the proceedings, Saraswati Global questioned the originality of these designs. Relying on this, S.N. Kapoor Export argued that the cases should be transferred to the High Court. The District Judge initially agreed and transferred the cases in March 2019.

The High Court, however, held that the District Judge's jurisdiction is not automatically ousted merely because the opposing party questions the validity of the registered design in its written statement. The court explained that Section 22(4) applies only when a clear plea or counterclaim is made to cancel a registered design. Since Saraswati Global had not filed such a plea, the transfer was unjustified.

The court relied on the Supreme Court's decision in S D Containers Indore v. Mold Tek Packaging Ltd. which clarified that district courts retain jurisdiction in design infringement suits unless a prayer for cancellation is made.

“As per enunciation and discussion made hereinabove, since undisputedly in the present suits, there is no prayer or counter claim of the defendant seeking cancellation/ revocation of the registration of the design in question in favour of plaintiff nor any issue questioning the registered design of plaintiff has been framed or falls for consideration nor any decision thereupon is warranted, hence, the invocation of provisions of Section 22 (4) of the Design Act, 2000, by the petitioner-plaintiff does not come in operation and the transfer of present suits to the High Court for decision in view of Section 22(4) of the Act of 2000 is unwarranted.”, the court said.

Accordingly, the High Court set aside the transfer order and directed that the case be sent back to the District Judge, Jaipur.

Case Title: S N Kapoor Export v. Saraswati Global Limited

Case Number: OOS-1/2019

For the Petitioner: Advocate Rishabh Khandelwal

For the Respondent: Ashwani Kumar Gupta

Click Here To Read/Download The Judgment