Published on 23.07.2021 by Ms. Harinder Narvan, Ms. Aparna Jain, Ms. Aashrika Ahuja and Mr. Angad Yadav

Industrial design constitutes ornamental aspect of an article. It consists of three or two dimensional features such as shape, configuration, pattern, composition of lines or colours applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye. A design does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957. The owner of a registered design has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy of the protected design in case such an act is undertaken for commercial purpose. At Knowledgentia, we offer all services relating to property registration in India which also includes intellectual property registration and hence Industrial Designs as well. Apart from protecting our client’s locally, we also offer Global IPR Protection services with respect to industrial designs.In India, we have the Designs Act,2000 that governs all legal aspects in relation  to filing, registration and enforcement of designs. As per the new design (amendment) rule 2021, for the purpose of design registration, the designs are classified as per current edition of International Classification for Industrial Designs (Locarno Classification)” published by World Intellectual Property Organization (WIPO). Knowledgentia being the Best corporate international law firm in India can offer all services as per current amendments and laws in each jurisdiction

The registered design may face cancellation in case of infringement as per section 19(1) wherein 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 that-

• the design has been previously registered in India; or
• it has been published in India or in any other country prior to the date of registration; or
• the design is not a new or original design; or
• the design is not registrable under this Act; or
• it is not a design as defined under clause (d) of section 2.

The legal proceeding pertaining to the piracy of design runs as per section (22), of the design act 2000.

Section 22(4) states that “where any ground on which the registration of a design may be cancelled under Section 19 has been availed of as a ground of defence, the suit shall be transferred by the court, in which the suit is pending, to the High Court for decision”. More particularly, Section 22(4) imposes artificial suspension of authority of the court of first instance wherein it prescribes a compulsory transfer of the matter to the High Court when a design infringement suit is initiated before a court of first instance. The Defendant, as part of its defence, may rely on the grounds mentioned in Section 19 of the design act 2000 that assail the Claimant’s registration. Once the defendant raises grounds which are mentioned in the act for cancellation of the registered design, the court of first instance, where it is not a High Court, is enforced by Section 22(4) to transfer the suit to the High Court for further decisions. Nevertheless, for the commencement of such transfer, a request may be made by the parties, usually in the form of an interlocutory motion.

The condition for a Section 22(4) transfer must be invoked by the Defendant via a pleading. The pleading itself need not be the formal written statement filed against the infringement claim but it can be any pleading which particularly invokes the grounds of challenge, such as a reply to an interlocutory application.

In addition to the statutory provision of the commencement of transfer, there exists certain interlocutory power with the court of first instance before the Defendant places grounds of defence under Section 19. The interlocutory power available to transferring courts of first instance comprises of:

1. the powers to grant and vacate interlocutory injunction;
2. order costs at the interlocutory stage;
3. allowing withdrawal of proceedings.

The Supreme Court has stated that such transfer is a “ministerial act”, since the Defendant has a right to seek cancellation of the design which necessarily mandates the transfer.

As a matter of fact, the transfer of the cases under Section 22(4) to the high court is justified only when High Court receiving the infringement suit considers the viability of Section 19 at the interlocutory stage, as these grounds are the key drivers of the transfer in the first place. It is imperative on the transferee High Court to consider the viability of the Section 19 grounds, else it would Defendants can use Section 19 grounds to defend themselves against a permanent injunction but not an interim injunction.

The statutory transfer under Section 22(4) specifically applies to two sub-categories of cases. The first are low value infringement proceedings before District Courts in jurisdictions where high value original claims are instituted directly before High Courts and the second are all infringement claims instituted in jurisdictions where the High Court does not have original jurisdiction over civil commercial claims.

It can therefore be concluded that the imposition of Section 22(4) protects the intellectual property right on one hand but on the other it immediately terminates the jurisdiction of the court of first stance on the ground of Section 19. This statutory transfer of case is a unique provision in Indian intellectual property law that forces a delicate balance upon courts receiving infringement claims. The court must deploy their wide range of interlocutory powers to do justice to the claims before them but must step aside immediately upon the invocation of the Section 22(4) transfer. However, any execution of interlocutory powers exercised in reference to Section 22(4) will be prone to differing quality of adjudication between different types of infringement claims. Since Knowledgentia is the Best law firm in India, our clients fully trust us with handling their intellectual property no matter how complicated the situation is.

Few case laws in this context are hereasunder:

1. In M/S Micolube India Limited v/s Rakesh Kumar Trrading As Saurabh on 30 March, 2012.The plaintiff filed an application under section 151 of the Code of Civil Procedure, 1908 seeking an ad interim injunction against the defendants. As the defendants challenged the validity of registered design of the plaintiff, inter alia, on the ground that under Section 19(d) of the Design Act, 2000 therefore, in view of Section 22 (4) of the Act, the Addl. District Judge lost its jurisdiction and transferred the matter to the High court.
2. In M/S Mold Tek Packaging Ltd … vs S.D. Containers on 1 September, 2020.
   Plaintiff  filed the suit before the Commercial Court ( District Court at Indore) seeking a decree of declaration that defendant has no right to manufacture containers that are similar to those manufactured by the plaintiff company. The defendant by way of the written statement specifically challenged the registration of the plaintiffs’ designs on the grounds provided under Section 19(1) of the Design Act, 2000. The Defendant further pleaded that having availed the grounds under Section 19 of the Act as the ground of defence, Section 22(4) of Act comes into force and the trial court must transfer the suit to the High Court for its decision. The commercial district court transferred the suit with all pending application to the High Court of Calcutta. Being aggrieved by the above order the plaintiff has filed a writ petition under Art 227 of the Constitution of India before MP high court.The MP High Court set aside the order and found the Commercial Court, Indore to be the competent court for adjudication in terms of the Commercial Courts Act, 2015. The petition was filed before the Supreme Court challenging MP High Court’s above order. The Apex court ordered relying on Godrej Sara Lee that the jurisdiction lies with the high court where the cause of action arises.
3. N. Gupta & Co. Ltd. Jasola New vs M/S Action Construction on 27 May, 2016
   The facts of the present case in brief were that the plaintiff-respondent filed a suit for permanent injunction against the defendant-appellant and one M/s Navrang Constructions Private Limited-proforma respondent no. 2 herein with the allegation that the plaintiff-respondent is an innovator and legal proprietor of several designs in regard to tower cranes and its parts and which designs, according to the plaintiff-respondent, were new and original and were not previously published on the date of their application of registration i.e. 26.6.2013. The suit for injunction was filed primarily in the light of provisions of Section 22 of the Designs Act, 2000 in the Court of Additional District Judge, Gautam Budh Nagar on 6.11.2015 against the appellant for an alleged infringement of the aforesaid 8 registered designs and also for reliefs from unfair competition, rendition of accounts, delivery etc. on the allegation that the tower cranes and their parts manufactured and are marketed by the defendant-appellant were an obvious and fraudulent imitation of the plaintiff-respondent’s above noted registered designs. Along with the said suit, an application for interim injunction being paper no. 6-C was also filed under the provisions of the Order 39 Rules 1 and 2 read with Section 151 CPC.Again an appeal was filed by the defendant-appellant challenging the order dated 21.1.2016 passed by the Additional District Judge/Special Judge and further prayed that the aforesaid suit be ordered to be transferred to this Court. The appeal was therefore, allowed and the order by the district court was  set aside.
4. M/S Garuda Overseas Through v/s Gigaram M Patel Prop. Of M/S on 30 April, 2013.Petition was filed in Gujarat High court by the appellant against the order dated 4.2.2013 passed by the learned City Civil Judge, Court No.12, Ahmedabad, in Civil Suit No.1331 of 2012 below Exhibit 7 on Notice of Motion application for injunction. The appellant submitted that the learned trial Judge has not considered the provisions of Section 22(4) of the Design Act, 2000, while passing impugned order. He further submitted that the appellant is a prior user and he obtained registration on 3.11.2009.He also submitted that Civil Court has no jurisdiction to entertain the application and misread the provisions of Section 22(4) of the Act. The order by the district court was quashed and directed to transfer to the high court.In matters concerning intellectual property, each case is unique and different in its own way but Knowledgentia known as best litigation firm in India only for the sole reason of our flexibility and awareness to adapt to current laws and customise our advice for our clients as per their unique situations.