The Role of Section 22(4) in Design Litigation
Introduction: The case of Lalita Goyal v. Sumit Garg, adjudicated by the High Court of Delhi, represents a significant judicial intervention in the realm of design law under the Designs Act, 2000. This appeal, lodged under FAO (COMM) 125/2025, challenges the decision of the District Judge (Commercial Court), North District, Delhi, which granted an interim injunction in favor of the respondent, Sumit Garg, restraining the appellant, Lalita Goyal, from using a design registered in Garg’s favor. The core issue revolves around the procedural mandate of Section 22(4) of the Designs Act, which requires the transfer of a suit to the High Court when the validity of a design registration is challenged. The High Court’s ruling clarifies the mandatory nature of this provision, highlighting its non-discretionary application and underscoring the importance of jurisdictional propriety in intellectual property disputes. This case study provides a detailed analysis of the factual and procedural context, the legal issues at stake, the judicial reasoning, and the principles established, offering insights into the enforcement of design rights in India.
Factual Background:Lalita Goyal holds a registered design under the Designs Act, 2000, which forms the basis of his claim against Goyal. Garg initiated a suit (CS (Comm) 6742/2024) before the Commercial Court, alleging that Goyal was infringing his registered design by using it without authorization. To protect his rights pending the suit’s resolution, Garg filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction to restrain Goyal from using the design. In her defense, Goyal challenged the validity of Garg’s design registration, asserting that it was liable to be cancelled, likely on grounds such as lack of novelty or prior publication, though specific grounds were not elaborated in the record. Goyal further argued that her challenge to the design’s validity necessitated the transfer of the suit to the High Court, as mandated by Section 22(4) of the Designs Act.
Procedural Background:The dispute originated in the Commercial Court, North District, Delhi, where Sumit Garg filed CS (Comm) 6742/2024 against Lalita Goyal, seeking a permanent injunction for alleged design infringement and passing off. Alongside the suit, Garg moved an interim application under Order XXXIX Rules 1 and 2 of the CPC to restrain Goyal from using the registered design during the pendency of the suit. Goyal, in her written statement, raised a defense challenging the validity of Garg’s design registration, invoking grounds that could lead to its cancellation under Section 19 of the Designs Act. She also contended that this challenge triggered the mandatory transfer of the suit to the High Court under Section 22(4). The Commercial Court, presided over by the learned District Judge, acknowledged Goyal’s argument but dismissed it as vague, proceeding to grant Garg’s interim injunction application on 16 April 2025. Dissatisfied with this decision, Goyal filed the present appeal (FAO (COMM) 125/2025) before the High Court of Delhi, along with an application (CM APPL. 29277/2025). The appeal was heard by a Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, who delivered an oral judgment on 24 July 2025.
Core Dispute:The primary issue in this appeal is whether the Commercial Court erred in refusing to transfer the suit to the High Court despite Goyal’s challenge to the validity of Garg’s design registration, as mandated by Section 22(4) of the Designs Act. Goyal argued that the Commercial Court’s dismissal of her defense as vague was improper, given the absolute nature of Section 22(4), which requires transfer to the High Court when any ground for cancellation under Section 19 is raised as a defense in a design infringement suit. Garg, represented by counsel, did not contest the appeal or the need for transfer, effectively conceding that the suit should be moved to the High Court’s Intellectual Property Division for a fresh adjudication of the interim injunction application. The dispute thus centers on the interpretation and application of Section 22(4), specifically whether the Commercial Court could exercise discretion to assess the validity of the defense before transferring the suit, and the implications of this procedural lapse on the interim injunction granted.
Discussion on Judgments:The judgment does not explicitly reference specific case law cited by the parties, as the document focuses primarily on the statutory provision of Section 22(4) of the Designs Act, 2000. However, the context suggests that the parties’ arguments were grounded in the statutory framework and established principles of design law. Goyal’s counsel, Mr. Nishant Mahta, Mr. Junaid Alam, and Mr. S. Nithin, likely relied on precedents interpreting Section 22(4) to emphasize its mandatory nature. A relevant case, though not cited in the provided document, could be Tobu Enterprises Pvt. Ltd. v. Megha Enterprises (2016 SCC OnLine Del 3510), where the Delhi High Court clarified that once a defendant raises a ground for cancellation of a design under Section 19, the suit must be transferred to the High Court, irrespective of the strength of the defense. This precedent supports Goyal’s position that the Commercial Court lacked discretion to dismiss her challenge as vague. Garg’s counsel, Mr. Shivam Jangra, did not oppose the transfer, suggesting no conflicting judgments were pressed. The absence of cited case law in the document indicates that the Division Bench relied primarily on the plain language of Section 22(4), which is absolute in requiring transfer when a cancellation ground is raised, as seen in the statutory excerpt quoted in the judgment.
Reasoning and Analysis of the Judge:The Division Bench, led by Justice C. Hari Shankar and joined by Justice Om Prakash Shukla, delivered a concise yet incisive oral judgment focusing on the procedural mandate of Section 22(4) of the Designs Act. The court observed that Goyal, in her written statement, had challenged the validity of Garg’s design registration, asserting grounds that could lead to its cancellation under Section 19. The Commercial Court’s decision to dismiss this challenge as vague and proceed to grant the interim injunction was deemed erroneous. The Bench emphasized that Section 22(4) is unequivocal, stating that when any ground for cancellation under Section 19 is raised as a defense in a suit for design infringement, the suit “shall be transferred” to the High Court. This language leaves no room for the Commercial Court to evaluate the merits or specificity of the defense before effecting the transfer. The court found that the Commercial Court’s refusal to transfer the suit contravened this statutory mandate, rendering the impugned order of 16 April 2025 unsustainable. The Bench noted that Garg’s counsel raised no objection to setting aside the order and transferring the suit, further reinforcing the procedural clarity of the issue. The court’s reasoning underscores the importance of adhering to statutory prescriptions in intellectual property disputes, ensuring that jurisdictional requirements are not undermined by discretionary assessments at the trial court level.
Final Decision:The High Court disposed of the appeal (FAO (COMM) 125/2025) and the associated application (CM APPL. 29277/2025) on 24 July 2025. The impugned order of the Commercial Court dated 16 April 2025 was quashed and set aside. The suit, CS (Comm) 6742/2024, was transferred to the Intellectual Property Division of the High Court for fresh adjudication. The court directed the Registry to register the suit with a suitable registration number and to assign appropriate numbers to pending applications, including Garg’s interim injunction application under Order XXXIX Rules 1 and 2 of the CPC. These details were to be communicated to the counsels and parties involved. The decision ensures that the validity of Garg’s design registration and the merits of the interim injunction will be re-evaluated by the High Court, aligning with the procedural requirements of the Designs Act.
Law Settled in This Case:This case reinforces the mandatory nature of Section 22(4) of the Designs Act, 2000, establishing that a suit involving a challenge to the validity of a design registration must be transferred to the High Court, irrespective of the perceived strength or specificity of the defense. The judgment clarifies that trial courts lack discretion to assess the merits of a cancellation ground under Section 19 before effecting the transfer, ensuring that such challenges are adjudicated by the High Court to maintain consistency and expertise in intellectual property matters. The ruling underscores the importance of procedural compliance in design infringement suits, protecting defendants’ rights to contest registration validity in the appropriate forum. It also highlights the judiciary’s role in upholding statutory mandates over discretionary evaluations, contributing to the predictability and integrity of design law enforcement in India.
Case Title: Lalita Goyal Vs. Sumit Garg
Date of Order: 24 July 2025
Case Number: FAO (COMM) 125/2025
Neutral Citation: 2025:DHC:6069-DB
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla
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
