IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NOS. 996-997/2010 (Arising out of SLP(C)Nos.21955-21956 of 2008)  

M/S. GODREJ SARA LEE LIMITED ..   Appellant Vs.

RECKITT BENCKISER AUSTRALIA  PTY.LTD.& ANR.      ..   Respondents

J U D G M E N T

ALTAMAS KABIR, J.   

1. Leave granted.

2. Two First Appeals were filed in the Delhi High  

Court, being FAO No.131 and 132 of 2008, against  

two orders, both dated 28th March, 2008, passed by  

the  Controller  of  Patents  and  Designs,  Kolkata,  

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under  Section  19(1)  of  the  Designs  Act,  2000,  

cancelling two registered designs for “Insecticide  

Coil” in Class 12 belonging to the Respondent No.1  

herein.  The question for determination before the  

High Court in the two appeals was whether the Delhi  

High Court had jurisdiction to entertain the same  

against  the  order  passed  by  the  Controller  of  

Patents and Designs, Kolkata. Inasmuch as, in the  

said two appeals, it was held by the Delhi High  

Court  that  it  had  jurisdiction  to  entertain  the  

appeals, these two appeals have been preferred by  

M/s.  Godrej  Sara  Lee  Ltd.  against  the  said  

decision.   

3. On  27th January,  2005,  the  Respondent  No.1  

herein, M/s. Reckitt Benckiser Australia Pty. Ltd.,  

filed  a  suit,  being  C.S.(O.S.)No.121  of  2005,  

against  the  appellant,  in  the  Delhi  High  Court  

alleging  infringement  of  its  Registered  Designs  

bearing Nos.184136 and 184137.  The said suit is  

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yet  to  be  decided.   On  4th February,  2005,  the  

appellant herein filed his written statement in the  

suit,  inter  alia,  contending  that  the  aforesaid  

Designs of the Respondent No.1 were liable to be  

cancelled under Section 22(3) of the Designs Act,  

2000, on the ground that registration of the same  

had  been  obtained  by  concealment  of  facts  and  

infringement  of  the  Designs  Registration  Nos.  

197811 and 197426, before the Controller of Designs  

at Kolkata.  Similarly, the appellant herein also  

filed  a  Designs  Cancellation  Petition  for  

cancellation of the Registered Design Nos.184135,  

184136  and  184137  standing  in  the  name  of  the  

Respondent No.1 on the same ground as alleged by  

the respondent in its petition for cancellation of  

the  appellant’s  Designs.   After  certain  

interlocutory  proceedings  relating  to  the  prayer  

made for transfer of the cancellation proceedings  

from the Controller of Designs to the Delhi High  

Court, the Controller of Designs heard the parties  

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on  5th March,  2008  and  reserved  his  order.  

Meanwhile, the respondents filed FAO (OS) No.101/08  

against  the  orders  dated  13.2.2008  and  5.3.2008  

passed by the Controller of Designs, Kolkata and  

the  same  was  converted  into  a  Petition  under  

Article  227  of  the  Constitution.   Initially  the  

learned  Single  Judge  was  doubtful  about  the  

maintainability of the appeals.  Thereafter, on 28th  

March,  2008,  by  three  separate  orders  the  

Controller  of  Designs,  Kolkata,  cancelled  the  

Registered  Design  Nos.184135,  184136  and  184137  

belonging  to  Respondent  No.1.  As  indicated  

hereinabove,  three  First  Appeals  were  preferred  

before the Delhi High Court, where a question arose  

with regard to  the High Court’s jurisdiction to  

entertain the appeals and by the orders impugned in  

these appeals the Delhi High Court held that the  

appeals were maintainable and it had jurisdiction  

to entertain the same.

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4. Appearing  in  support  of  the  appeals,  Mr.  

Dushyant Dave, learned Senior Advocate, questioned  

the decision of the Delhi High Court based on the  

interpretation of Section 19(2) read with Section  

2(e) of the Designs Act, 2000.  He submitted that  

the  expression  “High  Court”  as  used  in  Section  

19(2) and Section 2(e), would have to be read in  

relation to the cause of action and not otherwise.  

In the instant case, since the cause of action for  

the  appeal  has  arisen  on  account  of  the  

cancellation  of  Designs  by  the  Controller  of  

Designs at Kolkata, it is only the Calcutta High  

Court, which would have jurisdiction to entertain  

the  appeals  under  Section  19.  Any  other  

interpretation would be contrary to the principles  

relating to the filing of suits where the cause of  

action arises as contemplated under Section 20 of  

the Code of Civil Procedure.   

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5. Mr. Dave urged that the High Court appears to  

have gone wrong in making a comparison between the  

provisions  relating  to  cancellation  of  designs  

under  Section  51A  of  the  Designs  Act,  1911  and  

Section 19 of the Designs Act, 2000.  Mr. Dave  

urged  that  while  Section  51A  of  the  1911  Act  

allowed a person to move for cancellation directly  

before the High Court in its original jurisdiction,  

under Section 19 of the 2000 Act an application for  

cancellation could only be made to the Controller  

of  Designs,  Kolkata.   Mr.  Dave  urged  that  the  

conclusions  arrived  at  by  the  High  Court  on  an  

analysis of the two provisions were erroneous as  

was the reliance placed by the High Court on the  

decision in the case of Girdharilal Gupta vs. M/s.  

K. Gian Chand Jain & Co. [(1978) 14 D.L.T. 132].  

 6. Mr. Dave submitted that the decision in the  

said case was clearly distinguishable on facts, as  

also the finding that the cancellation of a design  

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under Section 51A of the 1911 Act could be filed  

either in the High Court having jurisdiction over  

the place at which the design is registered or in  

the High Court, the local jurisdiction of which has  

a nexus with the subject matter of the cause of  

action of the application.  Mr. Dave urged that in  

the said case, the High Court made it clear that an  

application for cancellation cannot be made in any  

High Court merely because the applicant chose to do  

so.  In fact, the applicant would have to establish  

the jurisdiction of the High Court to which the  

application  is  made  by  establishing  a  live  link  

between the territory in which the cause of action  

and the subject matter of the application.  Mr.  

Dave submitted that the sum total of the decision  

in  Girdharilal Gupta’s case is that in the normal  

course both the Calcutta High Court and the High  

Court  within  whose  territorial  jurisdiction  

the  cause   of  action  arises,    would    have  

jurisdiction to entertain an appeal under Section  

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19 of the Designs Act, 2000, but in some cases such  

jurisdiction would also extend to any other High  

Court within the local limits of which a part of  

the cause of action and/or subject matter of the  

application  may  arise  or  be  situate.   Mr.  Dave  

urged that the latter part of the findings was not  

in consonance with Section 19(2) of the 2000 Act.

7. Mr. Dave submitted that a different view had  

been expressed by a learned Single Judge of the  

Delhi High Court in  M/s. Scooters India Ltd. vs.  

M/s. Jaya Hind Industries Ltd. & Anr. [AIR 1988  

Delhi 82], wherein it was held that rejection of an  

application  for  grant  of  patent  under  the  

provisions  of  the  Patents  Act,  1970,  and  the  

Patents Rules, 1972, by the Deputy Controller of  

Patents and Designs, Bombay, gave rise to a cause  

of  action  whereby  appeal  against  such  order  of  

refusal  could  be  filed  only  in  the  Bombay  High  

Court and not in any other High Court.

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8. Reference  was  then  made  by  Mr.  Dave  to  the  

decision  of  this  Court  in  Ambika  Industries vs.  

Commissioner of Central Excise [(2007) 6 SCC 769],  

wherein the question as to which High Court would  

have the jurisdiction to entertain an appeal from  

an  order  of  the  Appellate  Tribunal  exercising  

jurisdiction over several States, was in question  

and this Court held that it had to be determined on  

the basis of the statutory provisions and nothing  

else such as  dominus litus or the  situs of the  

Appellate  Tribunal  or  the  cause  of  action.  

Accordingly, where the first forum was located in  

the State other than the State where the Appellate  

Tribunal was located, the appropriate High Court to  

entertain the appeal was the High Court situated in  

the former State and not the High Court situated in  

the latter State.  

 9. Mr. Dave also referred to the decision of this  

Court in Canon Steels (P) Ltd. vs. Commissioner of  

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Customs  [(2007) 14  SCC 464] where the original  

order  had  been  passed  under  the  Customs  Act  at  

Mumbai whereas the appellate order was passed by  

the  Customs  Excise  and  Service  Tax  Appellate  

Tribunal  (CESTAT) at Delhi.  Appeal under Section  

130 of the Customs Act, 1962, filed in the High  

Court at Delhi was withdrawn with liberty to file  

the appeal in the appropriate place. An appeal was  

subsequently filed in the Punjab and Haryana High  

Court at Chandigarh on the ground that a part of  

the cause of action had arisen at Chandigarh. The  

Punjab and Haryana High Court, however, held that  

it  had  no  jurisdiction  to  entertain  the  appeal.  

Affirming the said view, this Court held that since  

neither the original nor the appellate orders were  

passed within the territorial jurisdiction of the  

Punjab and Haryana High Court, it was the Delhi  

High Court which had jurisdiction to entertain the  

appeal.

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10.  Mr. Dave submitted that similarly since the  

order impugned in the appeal had been passed in  

Kolkata, it was the Calcutta High Court and not the  

Delhi  High  Court  which  had  jurisdiction  to  

entertain the statutory appeal under Section 19 of  

the Designs Act, 2000.

11. Several other decisions were also cited by Mr.  

Dave on similar lines which need not detain us at  

present.

12. Mr. Dave submitted that the Delhi High Court  

was  apparently  persuaded  to  make  a  comparison  

between  the  provisions  of  Section  51A  of  the  

Designs Act, 1911 and Section 19(2) of the Designs  

Act, 2000, which led to erroneous reliance being  

placed on the decision of the Delhi High Court in  

Girdharilal Gupta’s case (supra) the facts whereof  

were completely different and distinguishable from  

the facts of this case. Mr. Dave submitted that  

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having regard to the above, the impugned judgment  

of the High Court was liable to be set aside.  

13. 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.  In  this  regard  

reference was made to the Full Bench decision of  

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the  Delhi  High  Court  in  M/s  Metro  Plastic  

Industries  (Regd.)  vs.  M/s  Galaxy  Footwear,  New  

Delhi (AIR 2000 Delhi 117), in which the question  

for  decision  was  whether  an  injunction  could  be  

granted in favour of a registered owner of a design  

when  an  application  under  Section  51-A  of  the  

Designs Act, 1911, was pending. After examining the  

provisions of Section 51 A, the Full Bench on a  

reference to Sections 53 and 54 relating to piracy  

of registered designs and the incorporation of the  

provisions  of  the  Patents  Act,  1970,  into  the  

Designs Act, held that the powers conferred under  

Section  53  were  not  absolute  and  did  not  

contemplate  an  absolute  right  in  the  owner  to  

prevent  all  other  persons  from  infringing  that  

design under all circumstances. It was held further  

that Section 53 creates a right in a registered  

owner  and  in  the  absence  of  an  application  for  

cancellation such a right can be enforced and no  

defence  can  be  taken  based  on  a  ground  of  

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cancellation.  But  once  an  application  for  

cancellation  is  filed,  the  Court  trying  a  suit  

under Section 53 would not be entitled to ignore  

the same.

14. Mr.  Lall  then  submitted  that  there  were  

innumerable instances of appeals having to be filed  

at the place where the cause of action had arisen  

or the effect thereof was felt. By way of example,  

Mr.  Lall  submitted  that  appeals  against  orders  

passed  by  the  Company  Law  Board  would  lie  only  

before  the  Delhi  High  Court.  The  decision  in  

Stridewell  Leathers  (P)  Ltd. vs.  Bhankerpur  

Simbhaoli Beverages (P) Ltd. [(1994) 1 SCC 34] was  

also referred to in this regard.

15. Mr. Lall submitted that full disclosures had  

not been made regarding the pendency of the suit  

filed  by  the  respondent,  which  is  still  pending  

decision, wherein the appellant had filed a counter  

affidavit  and  a  defence  had  been  taken  against  

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cancellation.   Mr.  Lall  submitted  that  for  the  

reasons aforesaid and also in view of the fact that  

under the Designs Act, 2000, only the Controller of  

Designs had the jurisdiction to cancel a design, no  

interference was called for with the order of the  

Delhi  High  Court  ruling  on  its  jurisdiction  to  

entertain the Appeals under Section 19 of the 2000  

Act.

16. Countering  the  submissions  made  by  Mr.  Lall  

with regard to the jurisdiction of the Delhi High  

Court, Mr. Dave concluded on the note that after  

the enactment of the Design Act, 2000, it is only  

the  Controller  of  Designs  before  whom  an  

application  can  be  made  under  Section  19  for  

cancellation  of  a  Design  in  contrast  to  the  

provisions of Section 51 A of the 1911 Act under  

which  even  the  High  Court  could  cancel  the  

registration of a Design.  Mr. Dave urged that in  

view of the amendments in Section 51-A of the 1911  

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Act the question of jurisdiction of the Delhi High  

Court to entertain the appeals has become relevant.

  17. The answer to the question thrown up in these  

appeals  involves  the  interpretation  of  the  

expression “High Court” used in Sections 19(2) and  

22(4) of the 2000 Act and in Section 51A of 1911  

Act.

18. Section 51A of the 1911 Act which deals with  

“Cancellation  of  Registration”,  provides  as  

follows:

“51A.  Cancellation  of  registration. (1)  Any  person  interested  may  present  a  petition  for  the  cancellation  of  the  registration of a design-  

(a) at any time after the registration  of the design, to the High Court on  any of the following grounds, namely:-  

(i)  that  the  design  has  been  previously registered in India; or  (ii) that it has been published in  India  prior  to  the  date  of  registration ; or (iii) that the design is not a new  or original design ; or  

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(b) within one year from the date of  the registration, to the Controller on  either  of  the  grounds  specified  in  sub-clauses  (i)  and  (ii)  of  clause  (a).  

(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.”  

19. Section 51A(1)(a) very clearly provides that at  

any  time  after  registration  of  the  design,  an  

application  for  cancellation  of  the  registration  

could be made to the High Court on the grounds  

indicated  therein.   Section  51A(1)(b)  makes  an  

exception and provides that within one year from  

the  date  of  registration  of  the  design,  an  

application could be made for cancellation of the  

registration  to  the  Controller  on  the  grounds  

specified  in  Sub-clauses  (i)  and  (ii)  of  Clause  

(a).  Section 51A(2) provides that an appeal from  

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the order of the Controller would lie to the High  

Court.

20. 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  

(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  

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Court, and the High Court shall decide any  petition so referred.”

21. In  contrast  to  the  provisions  of  Section  

51A(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.  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  

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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  

51A(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 51A  

of  the  1911  Act  the  High  Court  could  itself  

directly  cancel  the  registration.   Whereas  in  

Girdharilal Gupta’s case (supra), the question of  

jurisdiction of the High Court was in relation to  

an application made to the High Court directly, in  

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the instant case, we are concerned with an order of  

the Controller against which an appeal is required  

to  be  filed  before  the  High  Court.  While  in  

Girdharilal Gupta’s case the Court was considering  

the expression “High Court” in the context of a  

fall-out in respect of the ground of registration  

and the cause of action arising on account of such  

fall-out, in the present case, there is no question  

of any consequential impact since the application  

for cancellation of registration was on the basis  

of fake documents created in order to perpetrate a  

fraud.

22. The reliance placed by the High Court on the  

judgment  in  Girdharilal  Gupta’s  case  (supra)  

appears to be misplaced, inasmuch as, while under  

the 1911 Act the High Court acts as an Original  

forum, under the 2000 Act the High Court acts as an  

Appellate  forum,  which  are  two  separate  

jurisdictions  operating  in  two  different  fields.  

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In  the  instant  case,  the  doctrine  of  cause  of  

action, as understood under Section 20 C.P.C., has  

been imported on the basis of the provisions of  

Section 51A of the Designs Act, 1911, whereas the  

case of the appellant would fall under Section 19  

of  the  Designs  Act,  2000,  where  the  High  Court  

functions as the Appellate forum.  The cause of  

action  for  the  instant  proceedings  is  most  

certainly the cancellation of the registered design  

of the appellant which happened in the State of  

West Bengal which gave the Calcutta High Court the  

jurisdiction to deal with the matter.  The Delhi  

High Court, in our view, erred in holding that the  

cause  of  action  had  arisen  within  its  local  

jurisdiction, whereas the jurisdiction of the High  

Court  was  on  account  of  the  cancellation  of  

registration of the design and not on account of  

the impact thereof in any particular State.  This  

is what distinguishes the decision in  Girdharilal  

Gupta’s case from the facts of this case.

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23. Apart from the fact that the parties to the  

suit were in Kolkata, it is clear that the cause of  

action for the suit arose in Kolkata by virtue of  

the order passed by the Controller in relation to  

the appellant’s design.  As the facts indicate, the  

cause  of  action  for  the  suit  arose  in  Kolkata,  

which, in any event, had jurisdiction to entertain  

the suit.  Having erroneously applied the decision  

in Girdharilal Gupta’s case (supra) to the facts of  

the case, the High Court was led into error in  

holding that the consequence of the cancellation  

gave  jurisdiction  to  the  Delhi  High  Court  to  

entertain  the  suit,  without  considering  in  its  

proper perspective the provisions of Section 51A of  

the  1911  Act  in  contrast  to  the  provisions  of  

Section 19 of the 2000 Act.

24. The  various  decisions  cited  by  Mr.  Dave  to  

support  his  submissions  that  the  question  as  to  

which  High  Court  would  have  jurisdiction  to  

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entertain an appeal under Section 19, had to be  

determined on the basis of the statutory provisions  

and not on the basis of dominus litus or the situs  

of the Appellate Tribunal or the cause of action.  

We  are  inclined  to  accept  Mr.  Dave’s  submission  

that the Delhi High Court had erred in making a  

comparison between the provisions of Section 51A of  

the 1911 Act and Section 19(2) of the 2000 Act,  

which operate on different planes.

25. Having regard to the above, we are of the view  

that the impugned order of the Delhi High Court  

cannot be sustained and we, accordingly, set aside  

the same and hold that in the instant case it is  

the  Calcutta  High  Court  which  will  have  

jurisdiction to entertain the appeal under Section  

19 of the 2000 Act.  The proceedings before the  

Delhi  High  Court  are,  therefore,  quashed.   The  

Appellant  is  granted  leave  to  move  the  Calcutta  

High Court against the order of cancellation of its  

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design on the grounds taken in these Appeals, as  

well as such other grounds as may be relevant for  

the  purpose  of  deciding  the  question  of  

cancellation  of  the  Appellant’s  design  by  the  

Controller of Designs, Kolkata, within 30 days from  

date.  If the appeals are filed within the said  

period, the delay in taking such proceedings shall  

be condoned.  

26. The  appeals  are,  accordingly,  allowed,  but  

there will be no order as to costs.  

________________J. (ALTAMAS KABIR)

________________J. (CYRIAC JOSEPH)

New Delhi Dated:29.01.2010.             

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