1 PGK IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION Miscellaneous Petition Nos.13, 14 & 15 of 2009 Jyoti Jiten Bhatt Trading as Personal Care Systems ... ... Petitioner v/s. The Controller of Designs & ors. ... Respondents Mr.D.D. Madon, Sr.Advocate with Mr.Bhagwati Trivedi, Ms.Ushal Chandrashekhar, Priyanka Kothari and Brijal Trivedi i/by Bhagwati & Co. for Petitioner. Mr.V. Shekhar, Sr.Advocate with Mr.A.K. Singh and Mr.Raju Yamgar i/by Lex Remedemn for Res.No.3. ----- CORAM : SMT.ROSHAN DALVI, J. Date of reserving the order : 21st April, 2010 Date of pronouncing the order : 3rd May, 2010 P.C. : 1.The Petitioner carries on business in the name and style of M/s.Personal Care Systems for manufacturing, marketing and sale of a range of products for bio- energy, more specially a Pyramid Yantra which is a Vastu rectification instrument for enhancing bio-energy in individuals. The Petitioner carries on business in Ahmedabad, Gujarat. The design of the Petitioner s 2 product was invented and manufactured in Gujarat. 2.The Petitioner applied for registration of the design of her product Pyramid Yantra under Application No. 191893 in April 2003. The Petitioner commenced marketing of the said design in June 2003. Respondent No.3 applied for a design of a similar product Pyramid Vastu (for which she had a registered trademark earlier in April 2006). The Petitioner applied for cancellation of the design of Respondent No.3 in November 2006. Similarly Respondent No.3 filed a cancellation Petition for cancellation of the design of the Petitioner in April 2007. Both the Petitions were heard in February 2008 and July 2008. The orders of cancellation came to be passed by the Controller of Designs, the Patent Office, Kolkata on 22.4.2009 and 27.4.2009, which have been impugned. 3.Respondent No.3 has contended that this Court has no territorial jurisdiction to try the Appeal filed by the Petitioner against the impugned orders of cancellation of the design. The Court s territorial jurisdiction shall have to be decided as a preliminary issue. If the Court has territorial jurisdiction the contentions of the parties on merits would have to be considered. If the Court has no territorial jurisdiction, the Petitions shall have to be returned to proper Court for 3 filing. Hence the issue with regard to the territorial jurisdiction of the Court is required to be framed. It is framed as follows:- Whether this Court has jurisdiction to try the Petition. 3.Counsel on behalf of the parties concede that the territorial jurisdiction, if any, of this Court can be decided as a question of law under the Designs Act, 2000 (Designs Act) read with the Patents Act, 1970 (Patents Act) and the precedents thereunder. The cancellation of registration of a design under the Designs Act can be applied by any person interested in such cancellation by way of a Petition to the Controller of Designs under Section 19(1) of the Designs Act. An Appeal therefrom would lie to the High Court under Section 19(2) of the Designs Act. 4.The High Court is defined under Section 2(c) of the Designs Act as having the same meaning assigned to it in Section 2(i) of the Patents Act. 5.Section 2(i) of the Patents Act defines a High Court, in relation to a State or Union territory as the High Court having territorial jurisdiction in that State or Union territory, as the case may be. 4 Though under the Designs Act, the High Court is not referred to in relation to any State, under the Patents Act, the High Court is referred to in relation to a State or Union territory. 6.Under Section 2(h) of the Designs Act and Section 2(r) of the Patents Act, the patent office is the office referred to in Section 74 of the Patents Act. Section 74 of the Patents Act deals with a patent office and its branches. Under Section 74(1) of the Patents Act, there is to be an office known as the patent office. Under Section 74(2), the Central Government may, by notification in the official gazette, specify the name of the patent office. Under Section 74(3), the head office of the patent office is to be at such place as the Central Government may specify, and for the purpose of facilitating the registration of patents there may be established at such other places as the Central Government may think fit, branch offices of the patent office. There is no separate design office. The Designs Act refers only to the patent office. The patent office would consist of one head office and several branch offices as specified by the Central Government. That would be for the purpose of facilitating the 5 registration of patents. They would be established at the places the Central Government deems fit. Such offices would be branch offices. 7.A register of designs is kept at the patent office under Section 10 of the Designs Act. The register would contain inter alia the names and addresses of proprietors of registered designs. Consequently, the designs which are registered and allowed to be registered, would be entered in the register. Under Section 11 of the Designs Act, once the design is registered, the registered proprietor would have a copyright in the design for a period of 10 years from its registration. 8.If the designs registered under the Designs Act are required to be cancelled, a Petition in that behalf would be required to be filed under Section 19(1) of the Designs Act for cancellation of registration. This application is to be filed in the prescribed form being Form-8 set out in the Designs Rules, 2000 (the Rules). The Form is to be filed before the Controller of Designs who would consider the Petition for cancellation. From the order of the Controller of Designs, the Appeal, as aforesaid, would lie to the High Court under Section 19(2) of the Designs Act. The Appeal is required to be filed within 3 months of the 6 order passed by the Controller to the High Court under Section 36(1) of the Designs Act. This Petition is one such Appeal, challenging the order of Controller of Designs upon cancellation of the registration of the designs under the Designs Act. 9.It is filed before this Court, essentially on the premise that the application for cancellation of the registration was filed by the Petitioner in Mumbai. Mumbai is one of the branch offices set out in Section 74 of the Patents Act established for facilitating the registration of patents. It is the same office which accepts the Petitions for cancellation of the registration of a design also. But the branch office of the patent office is not the branch office of the design office. 10.The application for registration of the Petitioner s design was to be made under Form-1 of the Rules to the Controller of Designs, the patent office, Kolkata. It was filed in Mumbai office which is the branch office of the patent office and which was established for facilitating the registration of patents. Since the patent office under the Designs Act is the patent office referred to in Section 74 of the Patents Act, the branch office established under Section 74(3) of the Patents Act would allow filing of the application 7 for registration of a design before it to facilitate such registration, though it is not a branch office of the design office. 11.Similarly the Petition for cancellation of the registration of a design was to be made under Form-8 of the Rules to the Controller of Designs, the patent office, Kolkata, for the same purpose and to the same end. It was filed in Mumbai office which is the branch office of the patent office and which was established for facilitating the registration of patents. Since the patent office under the Designs Act is the patent office referred to in Section 74 of the Patents Act, the branch office established under Section 74(3) of the Patents Act would allow filing of the application for registration of a design before it to facilitate such registration, though it is not a branch office of the design office. 12.It has to be seen whether such filing for the purpose of facilitating it would confer jurisdiction upon the Court in the State in which it is filed. 13.The High Court, as defined in Section 2(i) of the Patents Act, is the High Court in relation to a State. That would be the definition of the High Court under Section 2(e) of the Designs Act also. It has to be 8 seen whether mere filing in a branch office of a patent office which is specified for facilitating the filing of any such Petition would confer jurisdiction upon the High Court in that State. The filing does not relate to the High Court. These Petitions are required to be filed as per the forms set out in the Rules. The forms show that they are to be filed before the Controller of Designs, who has a patent office, which is the design office, only in Kolkata. The facilitation of the filing at branch offices of the patent office is, therefore, not an act in relation to any State and does not relate to the High Court of that State. 14.Further the order of cancellation of registration is the one against which an Appeal is filed under Section 19(2) of the Designs Act. The Appeal is required to be filed only consequent upon the order. The cause of action in the Appeal is, therefore, the passing of the order of the Controller of Designs and nothing else. It is not the place where the Petitioner or the Respondent carries on business or where the design is sought to be used for such business or otherwise. It is not the place also where the Petitioner or the Respondent resides or where any of their acts would constitute a cause of action to file a Petition for cancellation of the registration of a design. The order that would be impugned in such a Petition is only the order of the 9 Controller of Designs which is passed in the patent office at Kolkata. The Calcutta High Court is the only High Court in which jurisdiction the orders of Controller of Designs would be passed. 15.It is contended by Mr.Madon on behalf of the Petitioner that all of the Petitions challenging the order of cancellation of the registration of a design all over India cannot lie before only one High Court and that the High Court in a State where the application for cancellation of the registration of design is filed would be the High Court having territorial jurisdiction to adjudicate upon that dispute as the High Court in relation to that State where the Petition was filed. 16.It is contended by Mr.Shekar on behalf of Respondent No.3 that the Petitions are not filed in any branch office of the patent office since there is no branch office of the design office under the Designs Act, though the patent office referred to in the Designs Act is the patent office under Section 74 of the Patents Act. It is argued that the form itself shows that it is made to the Controller of Designs at the patent office in Kolkata and it cannot be filed in any branch office of the patent office in any of the States. Such a branch office of the patent office serves only as a 10 window or counter for the purpose of facilitating the registration of Petitions. Hence for cancellation of the registration of a design the Petitions are allowed to be tendered at such counter. Such tendered Petitions are thereafter sent to and filed in the patent office at Kolkata. They are adjudicated upon in Kolkata and the cause of action that would arise to file an Appeal therefrom is from the order of Controller of Designs, which is passed in Kolkata and hence only the Calcutta High Court would have territorial jurisdiction to adjudicate upon the Appeal filed under Section 19(2) read with Section 36(1) of the Designs Act. 17.Mr.Shekhar, Senior Counsel on behalf of Respondent No. 3 has relied upon a judgment of the Supreme Court in the case of Godrej Sara Lee Limited vs. Reckitt Benckiser Australiay Pty. Limited & anr., (2010) 2 SCC 535. Upon considering earlier judgments, this Court considered the application filed under Section 19(1) of the Designs Act, from which an Appeal which was filed in Delhi High Court was held not to have been filed in the Court having territorial jurisdiction. The Apex Court considered and made a comparison of Section 51-A of the Designs Act, 1911 and Section 9 of the Designs Act, 2000. It held that under Section 51-A of the 1911 Act, an application for cancellation of a design could 11 be filed either in the High Court having jurisdiction over the place at which the design was registered or the High Court within the local limits of which the subject matter of the cause of action of the application arose. Under Section 19(1) of the Designs Act, the application for cancellation of the registration of a design had to be made only to the Controller of Designs. The Controller of Designs had his office only in the patent office in Kolkata. It is only from his order that thereafter an Appeal would lie before the High Court. Hence his order alone would give the cause of action to the Appellant to file the Appeal. Since under the earlier Act the application for cancellation of the registration itself could be moved before the High Court, the order of the High Court would then be challengable in its appellate jurisdiction either under the Civil Procedure Code or under the Letters Patent, as applicable. Since in the Designs Act, 2000, the application for cancellation of the registration cannot be made to the High Court and only an Appeal from the order on an application for cancellation of the registration of a design lies before the High Court, the Appeal would have to be filed where the order of cancellation of registration, which is challenged, is passed and since that is passed in Kolkata, geographically only the Calcutta High Court would have territorial jurisdiction to adjudicate upon 12 the Appeal from the order of the Controller of Designs passed under Section 19(1) for cancellation of the registration of a design. 18.Besides, the Central Government has not notified or specified any office at a branch office of the design office as it has done with regard to the patent office. Consequently, it is argued on behalf of Respondent no.3 that the branch office of the patent office where a Petition for cancellation of the registration of a design can be tendered, is only a counter to facilitate such tendering. Hence it can be seen that if and when the Central Government specifies any other office as a branch office under the Designs Act having a Deputy Controller of Designs who would pass an order at the branch office for cancellation of registration of the design, then in relation to such order passed in any State, the High Court in that State would have territorial jurisdiction to adjudicate upon the Appeal filed from such order. 19.The Apex Court judgment in the case of Godrej Sara(supra) considered what was the cause of action in a Petition for cancellation of a registered design. It held that the cause of action had arisen where the order was passed. In that case also as in all other cases, the order for cancellation of a registered 13 design was passed in the State of West Bengal. The Apex Court held that that gives the Calcutta High Court jurisdiction to deal with the matter. It further held that the Delhi High Court in that case was not the place where the cause of action had arisen which was on account of cancellation of the registration of the design and not on account of impact thereon in any particular State. Though the Apex Court considered that in that case the parties to the suit were in Kolkata, it held that the cause of action arose in Kolkata not because of that fact but by virtue of the order passed by the Controller in relation to the impugned design. 20.Mr.Madon on behalf of the Petitioner sought to argue that because the parties to that suit were in Kolkata and because the observation of the Apex Court was also that in any event the cause of action had arisen in Kolkata, in that case the Calcutta High Court s territorial jurisdiction was confirmed. A reading of the judgment shows that the law that is laid down in the judgment is that the High Court where the cause of action arises alone has the jurisdiction. That is the Calcutta High Court because the order of the Controller of Designs is passed in Kolkata. It is not because incidentally in that suit the parties were in Kolkata. There is nothing in the Designs Act which would show, 14 as in other civil actions, that the High Court where the parties reside or carry on business would have jurisdiction. Consequently, it is clear that this Court does not have the territorial jurisdiction. The aforesaid issue is answered in the negative. 21.All the 3 Petitions are returned to the proper High Court which is the Calcutta High Court for filing and adjudication. (SMT.ROSHAN DALVI, J.)