Vidyaa Ayurveda and Herbals, NIRAPARA, Kalady v. Vaishali Industries

IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT: THE HONOURABLE MR. JUSTICE P.SOMARAJAN FRIDAY, THE 10TH DAY OF FEBRUARY 2017/21ST MAGHA, 1938 OP(C).No. 2295 of 2014 (O) ------------------------------------ AGAINST THE ORDER OF THE VIth ADDITIONAL DISTRICT COURT, ERNAKULAM IN I.A.No.916/2014 IN O.S. No.5/2013 DATED 11.07.2014 PETITIONER/DEFENDANT: - ----------------------------------------- MESSRS. VIDYAA AYURVEDA AND HERBALS, NIRAPARA, KKR GROUP OF COMPANIES, BUILDING NO.667, VIII, OKKAL P.O., KALADY - 683 550. BY ADVS.SRI.T.M.RAMAN KARTHA SMT.O.A.NURIYA RESPONDENT/PLAINTIFF:- --------------------------------------- MESSRS. VAISHALI INDUSTRIES, XXXIII/577, DEVELOPMENT PLOT, P.O.SOUTH KALAMASSERY, PIN: 683 109, ERNAKULAM DISTRICT. R1 BY ADV. SRI.JOHN MATHEW R1 BY ADV. SRI.MATHEW JOHN (JMA) R1 BY ADV. SRI.VINU SASIDHARAN THIS OP (CIVIL) HAVING BEEN FINALLY HEARD ON 10-02-2017, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING: OP(C).No. 2295 of 2014 (O) -------------------------------------- ## **APPENDIX** PETITIONER'S EXHIBITS :- -------------------------------------- - EXHIBIT P1 : TRUE COPY OF THE PLAINT IN OS NO.5/2013 DATED 30/1/2013 OF THE DISTRICT COURT, ERNAKULAM. - EXHIBIT P1(a): TRUE COPY OF THE CERTIFICATE OF REGISTRATION OF DESIGN NO.219416 DATED 23/10/2008. - EXHIBIT P2 : TRUE COPY OF THE WRITTEN STATEMENT IN O.S.No.5/2013 DATED 6.6.2013 FILED BY THE DEFENDANT. - EXIBIT P3 : TRUE COPY OF THE I.A NO.916/2014 IN OS NO.5/2013 DATED 1/2/2014. - EXHIBIT P4 : TRUE COPY OF THE OBJECTION IN I.A NO.916/2014 IN OS NO.5/2013 DATED 27/5/2014. - EXHIBIT P5 : TRUE COPY OF THE ORDER IN I.A NO.916/2014 IN OS NO.5/2013 DATED 11/7/2014. RESPONDENT'S EXHIBITS : -NIL;. -------------------------------------- // TRUE COPY // P.A. TO JUDGE DMR/- ## **P. SOMARAJAN, J.** --------------------------------------- ## **O.P.(c) No. 2295 of 2014** ---------------------------------------- Dated this the 10[th] day of February, 2017 ## JUDGMENT Aggrieved by the order passed by Additional District Court, Ernakulam in I.A.No.916 of 2014 in O.S. No.5 of 2013 dated 11.07.2014, the defendant came up with this petition under Article 227 of the Constitution of India. The dispute involved in the suit is with respect to a registered design given to the product of the plaintiff. The suit was instituted on the allegation that the defendant is imitating the very same design to their product causing loss of reputation. An application in I.A.No.916/2014 was filed disputing the jurisdiction of the District Court in dealing with the matter. It was submitted that the plaintiff is seeking only permanent prohibitory injunction and compensation, as such it would come under the purview of Section 22(2) IInd proviso to the Designs Act, 2000. The dispute involved is whether the present matter would come under the purview of Section 24(2) IInd Proviso or Section 22(4) of the said Act. It was _inter alia_ contended by the plaintiff that what is sought in the plaint is only a O.P.(c) No. 2295 of 2014 2 permanent prohibitory injunction and compensation, as such it would come under the purview of Section 24(2) IInd proviso and the District Court has ample jurisdiction to entertain this suit. After hearing both the parties, the learned District Judge dismissed the application ordering that the District Court has jurisdiction over the matter. 2. Heard the learned counsel for the petitioner and the learned counsel appearing for the respondent. 3. The matter in dispute is with respect to the jurisdiction of the District court to deal with a suit of this nature being a one for permanent prohibitory injunction and compensation. The main contention raised by the defendant is that the matter in dispute would come under the purview of Section 19 of the Designs Act, 2000. 4. It was contended that a defence was raised in the written statement submitted by the defendant disputing the exclusive right over the design of the product issued by the controlling authority. Based on the above said defence raised in the written statement, the learned counsel would argue that the matter would squarely come under the purview of Section 19 and took support from the decision in **Premier Elmech** O.P.(c) No. 2295 of 2014 3 **Systems (P) Ltd v. V. Guard Industries (P) Ltd.** reported in 2013 (4) KLT 395 rendered by a learned Single Judge of this court. Section 19 of the Designs Act is extracted below for reference. “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 registerable 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 Court, and the High Court shall decide any petition so referred.” 'emphasis supplied' ## 5. Going by Section 19 of the Act, it is clear that it would come into play only when an application is presented by a O.P.(c) No. 2295 of 2014 4 person interested in the matter before the Controller on any of the ground made mentioned therein as (a) to (e) to Sub Section (1). Sub section (2) deals with the question of appeal and appellate right of party and it states that an appeal shall lie from any order of the Controller under this section to the High Court. In order to bring the matter within the purview of Section 19 of the said Act, the parties should satisfy at least three conditions. That is (1) submission of a representation/petition by a person before the Controller (2) on any of the ground under Clause (a) to (e) of Sub Section (1) to Section 19 and (3) An order passed by the Controller in that application. Then only Section 19 would come into play. 6. It is relevant to consider and extract Section 22 of the said Act for having a better understanding with respect to the application of Section 19 and Section 22 as far as jurisdiction vested with the court concerned. Section 22 is also extracted below for reference. “22. **Piracy of registered design** - (1) During the existence of copyright in any design it shall not be lawful for any person - - (a) for the purpose of sale to apply or cause to - be applied to any article in any class of articles in O.P.(c) No. 2295 of 2014 5 which the design is registered, the design or any fraudulent or obvious limitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article. (2) If any person acts in contravention of this section, he shall be liable for every contravention - (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees: Provided further that no suit or any other O.P.(c) No. 2295 of 2014 6 proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge. (3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. (4) Notwithstanding anything contained in the second proviso to sub-section (2), 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 and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision. - (5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.” 7. Sub Section (2) second proviso says that any suit or any other proceeding for the relief under Sub Section (2) shall be instituted in any court below the court of District Judge. Sub Section (2) says that if any person acts in contravention of this section, he shall be liable for every contravention to pay the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt O.P.(c) No. 2295 of 2014 7 and also for the grant of injunction against the repetition of any violation or contravention, as the case may be. The present suit is filed for compensation and for a permanent prohibitory injunction against the repetition of contravention and violation. 8. Sub section (4) of Section 22 says that notwithstanding anything contained in second proviso to Sub Section (2), where any ground on which the registration of a design is challenged or being capable of challenging under Section 19 was taken as a ground of defence, such suit or other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision. In order to bring the matter within the purview of sub-section (4) of Section 22 the person who claims the benefit should satisfy that there exists a ground on which the registration of a design may be cancelled under Section 19 and that it has been availed of as a ground of defence. The learned counsel relied on the pleading in paragraph 3 of the written statement in order to establish that their exists a ground on which the registration of design may be cancelled under Section 19 and that the same was availed of as a ground of O.P.(c) No. 2295 of 2014 8 ## defence. The relevant portion of the written statement is extracted below for reference: “It is further submitted that the plaintiff has no exclusive right over the design of a product which is exclusively made of natural materials. The spathe of arecanut is not an 'article' as defined under Section 2(a) of the Designs Act and hence the claim of the plaintiff that he is having exclusive right over the disputed design is illegal and unsustainable.” 9. It is now well settled that at the stage of deciding a jurisdiction a meticulous analysis of each and every part of the pleading is inadvisable and as such the course to be applied is whether the suit would come within the jurisdiction of the Court and whether there is sufficient materials in the written statement sufficient to take away the jurisdiction of the Court. If it is a suit for injunction and for compensation, as per Section 22(2), the jurisdiction is with any of the court below the District Court. What is embodied in sub-section (4) of Section 22 is a _non-obstandi_ clause which shows that on satisfaction of the two ingredients referred above it would come into operation. By a mere pleading that “the plaintiff has no exclusive right over the design of a product which is exclusively made of natural materials and the spathe of O.P.(c) No. 2295 of 2014 9 arecanut is not an article as defined in Section 2(a) of the Designs Act and hence the claim of the plaintiff that he is having exclusive right over the disputed design is illegal and unsustainable” would not bring the matter within the sweep of sub-section (4). No specific pleading was raised that the registration granted in favour of the plaintiff is liable to be cancelled under Section 19 of the Act. In fact, there is no pleading any where in the written statement that the certificate is liable to be cancelled under Section 19 of the Act. Hence I cannot find any reason to interfere with the order of the lower court and petition deserves only a dismissal and I do so. ## **P. SOMARAJAN, JUDGE** DMR/-