Fact of the Case :
Kubota Corporation, the plaintiff, filed a suit against Kaira Agros and others, alleging infringement of its registered designs (nos. 265708 and 265709). Defendant no. 1 challenged the validity of these designs in its written statement and filed two cancellation petitions (D-9/129/2024-KOL and D-9/130/2024-KOL) before the Controller of Patents and Designs, Kolkata. The defendant sought transfer of these petitions to the Delhi High Court under Section 22(4) of the Designs Act, 2000.
Procedural Background in Brief:
The suit (CS(COMM) 273/2024) was filed with multiple applications, including I.A. 47753/2024 by defendant no. 1 for transfer of the cancellation petitions and I.A. 48242/2024 by the plaintiff to file additional documents. Notice for the transfer application was issued on December 10, 2024, and both applications were adjudicated on December 13, 2024.
Judgments Referred in Case with Complete Citation and Context:
S.D. Containers Indore v. M/s Mold Tek Packaging Ltd., Civil Appeal No. 3695/2020 – The Supreme Court clarified that under Section 22(4) of the Designs Act, 2000, if a defendant in an infringement suit seeks design cancellation, the matter must be transferred to the High Court, distinguishing it from standalone cancellation before the Controller.
Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., 2023/DHC/000960 – A Delhi High Court ruling following S.D. Containers, affirming that Section 22(4) mandates transfer of cancellation proceedings to the High Court when raised as a defense in a suit.
Reasoning of Court:
The court relied on Section 22(4) of the Designs Act, 2000, and precedents to determine that since defendant no. 1 raised the invalidity of the plaintiff’s designs in its defense and filed cancellation petitions, these petitions must be transferred to the High Court hearing the infringement suit. The undisputed defense of invalidity triggered the statutory requirement for transfer, as clarified in S.D. Containers and Novateur Electrical.
Decision:
The court allowed I.A. 47753/2024, directing the Controller of Patents and Designs, Kolkata, to transfer cancellation petitions D-9/129/2024-KOL and D-9/130/2024-KOL to the Delhi High Court within six weeks.
Case Title: Kubota Corporation Vs. Kaira Agros
Date of Order: December 13, 2024
Case Number: CS(COMM) 273/2024
Name of Court: High Court of Delhi at New Delhi
Name of Hon’ble Judge: Justice Amit Bansal
