Case Title: Arun R and Others Vs. Integray Health Care Private Limited and Others
Order Date: 25 October 2025
Case Number: A No. 726 of 2025 in C.S. (Comm Div) No.152 of 2024
Neutral Citation: 2025:MHC:726
Court: High Court of Judicature at Madras
Coram: Hon’ble Mr. Justice N. Senthilkumar
Facts of the Case
This case arose from a commercial intellectual property dispute involving a medical equipment design known as the “Carbon Fiber Cervical Extension.” The applicants, Arun R, Dinesh M, and M/s Espoirs Solution, claimed to have originally designed and marketed the product, alleging that the respondents — M/s Integray Health Care Private Limited and its directors — wrongfully copied their design and passed off their goods as those of the applicants.
The applicants stated that their medical equipment had a unique shape, appearance, and configuration, all of which qualified for design protection under the Designs Act, 2000. They accused the respondents of misappropriating the design and using it commercially without authorization. As a result, they filed a civil suit for permanent injunction, damages, and delivery up of infringing material under Sections 27 and 135 of the Trade Marks Act, 1999, read with Order VII Rule 1 CPC and the Original Side Rules of the Madras High Court.
During the pendency of the suit, the applicants discovered that the respondents had secured Design Registration No. 400027-001 for the same product from the Controller of Patents and Designs, located in Kolkata. To challenge this registration, they filed a petition for cancellation of the impugned design before the Controller’s office under Section 19 of the Designs Act, 2000. However, since both the applicants and the respondents were located in Chennai, the applicants requested the High Court to direct the Controller to transfer the cancellation proceedings (Reference No. D-9/107/2024-KOL) from Kolkata to the Madras High Court for adjudication along with their ongoing civil suit.
Procedural Background
In the main suit, the applicants sought multiple remedies — a permanent injunction restraining the respondents from passing off or infringing their design, compensation of ₹5,00,000 for damages, rendition of accounts of profits, return of their prototype product, and the destruction of all infringing materials and online listings.
To consolidate all related disputes concerning the same design, they filed the present application under Sections 19 and 22 of the Designs Act, 2000, supported by the Madras High Court Intellectual Property Rights Division Rules, 2022 (Rules 6(14) and 14), which empower the court to consolidate related proceedings involving the same intellectual property.
The Controller of Patents and Designs, Kolkata (Respondent No.4), was arrayed as a party to ensure the transfer of the pending cancellation petition.
The Core Legal Dispute
The main question before the Madras High Court was whether it had the power to direct the Controller of Designs, Kolkata, to transfer the cancellation proceedings of the impugned design registration to the Madras High Court, so that both the civil infringement suit and the cancellation proceedings could be heard together.
The dispute brought into focus the interplay between Sections 19 and 22 of the Designs Act, 2000, and the principle of judicial consolidation of IP disputes, particularly when the same subject matter (design) was under challenge in multiple forums.
The applicants argued that under Section 22(4) of the Designs Act, whenever a defence under Section 19 is raised in a design infringement suit, the case must be transferred to the High Court for a unified decision. They contended that since the civil suit and the cancellation petition concerned the same design and parties, it would serve the interest of justice and efficiency to transfer the proceedings from the Controller’s office to the Madras High Court.
Detailed Legal Reasoning and Analysis
The Court began by examining Sections 19 and 22 of the Designs Act, 2000, which govern the cancellation and piracy of registered designs. Section 19 permits any person interested to petition the Controller for cancellation of a design registration on specific grounds, such as prior registration, lack of novelty, or non-registrability. Section 22 deals with piracy of registered designs and includes a critical provision under sub-section (4), which mandates that if the grounds of cancellation are raised as a defence in an infringement suit, the case shall be transferred to the High Court.
Justice Senthilkumar analyzed the legislative intent behind these provisions and observed that Section 19(2) explicitly allows the Controller to refer cancellation petitions to the High Court. Likewise, Section 22(4) requires transfer of such cases to the High Court whenever they become intertwined with a pending infringement suit. This statutory design ensures that all issues regarding validity, infringement, and passing off are adjudicated comprehensively by one competent forum, thereby avoiding conflicting findings.
The Court then discussed key precedents shaping this principle. The most significant among them was Maya Appliances Pvt. Ltd. v. Preethi Kitchen Appliances Pvt. Ltd. & Anr., 2020 SCC OnLine SC 1563, where the Supreme Court directed the Controller of Designs to refer cancellation petitions to the Madras High Court when parallel suits for design infringement were pending. The Apex Court clarified that Section 19(2) empowers such reference to ensure judicial efficiency and prevent duplication of proceedings.
The Court also examined S.D. Containers, Indore v. Mold Tek Packaging Ltd., Civil Appeal No. 3695 of 2020, decided on 01.12.2020, in which the Supreme Court held that while the primary jurisdiction for cancellation lies with the Controller, the High Court assumes jurisdiction in appeal or when the matter is transferred under Section 22(4) due to concurrent infringement litigation. The Supreme Court emphasized that the choice of forum depends on the cause of action — either cancellation before the Controller or an infringement suit before the court. Both are independent but can converge when the same issue arises in both contexts.
Justice Senthilkumar further referred to the earlier Madras High Court ruling in OP(PT) No. 2 of 2024, where the same parties were involved. That case clarified that while the High Court cannot directly entertain a cancellation application under Section 19, it can receive transferred proceedings under Section 22(4) when the subject matter overlaps with a pending infringement action. This reinforced the applicants’ argument for consolidation.
The Court then turned to the Madras High Court Intellectual Property Rights Division (IPD) Rules, 2022, particularly Rule 6(14) and Rule 14, which explicitly empower the court to consolidate suits or proceedings involving the same intellectual property. These rules allow the High Court, either suo motu or on application by parties, to bring together related disputes for unified adjudication. Justice Senthilkumar emphasized that these rules were introduced to align with global best practices and the Commercial Courts Act, 2015, ensuring specialization and consistency in IP adjudication.
In applying these principles, the Court found that all parties to the dispute were based in Chennai, and the suit concerning infringement and passing off was already pending before the Madras High Court. Hence, continuing the cancellation proceedings separately in Kolkata served no practical purpose and would cause unnecessary duplication and delay. The Court held that transferring the cancellation petition to the Madras High Court was legally permissible under Section 19(2) and Section 22(4) of the Designs Act, consistent with the Supreme Court’s direction in Maya Appliances (2020).
The Court also drew strength from the reasoning in Godrej Sara Lee Ltd. v. Reckitt Benckiser (India) Pvt. Ltd., (2010) 2 SCC 535, where the Supreme Court emphasized that territorial jurisdiction in IP cases should align with the place where the cause of action arises, not merely where the registry office is located.
Applying this to the present case, Justice Senthilkumar observed that since all alleged acts of infringement occurred in Chennai and both the applicants and respondents were situated there, the Madras High Court was the most appropriate and convenient forum to hear both the infringement suit and the design cancellation petition.
Decision
The Madras High Court allowed the application. Justice N. Senthilkumar directed the Controller of Patents and Designs, Kolkata, to transfer the cancellation petition (Reference No. D-9/107/2024-KOL) concerning Design No. 400027-001 to the Madras High Court for joint adjudication along with the pending infringement suit.
The Court emphasized that consolidation of proceedings avoids duplication, ensures consistent findings, and upholds the spirit of Section 22(4) of the Designs Act and the IPD Rules, 2022. Justice Senthilkumar also clarified that the transfer did not prejudice the rights of any party; instead, it served the broader objective of fair and efficient adjudication.
In conclusion, the Court reaffirmed that when multiple proceedings involve the same design and the same parties, the High Court possesses the power to bring all matters under its jurisdiction, ensuring that justice is not obstructed by procedural fragmentation. The application was accordingly allowed, with no order as to costs.
Suggested Titles for Publication
Judicial Consolidation under the Designs Act: Madras High Court’s Approach in Arun R v. Integray Health Care Pvt. Ltd.
From Kolkata to Chennai: A Case Study on Jurisdiction and Transfer of Design Cancellation Proceedings
Interpreting Sections 19 and 22 of the Designs Act through the Lens of Maya Appliances and S.D. Containers
Streamlining IP Litigation: The Role of Madras High Court’s IP Division in Design Disputes
Design Piracy and Jurisdictional Harmony: An Analytical Review of the Arun R v. Integray Health Care Decision
Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
