M/S Godrej Sara Lee Limited vs Reckitt Benckiser Australia Pty.Ld.& ...

3. On 27th January, 2005, the Respondent No.1 herein, M/s. Reckitt Benckiser Australia Pty. Ltd., filed a suit, being C.S.(O.S.)No.121 of 2005, against the appellant, in the Delhi High Court alleging infringement of its Registered Designs bearing Nos.184136 and 184137. The said suit is 3 yet to be decided. On 4th February, 2005, the appellant herein filed his written statement in the suit, inter alia, contending that the aforesaid Designs of the Respondent No.1 were liable to be cancelled under Section 22(3) of the Designs Act, 2000, on the ground that registration of the same had been obtained by concealment of facts and infringement of the Designs Registration Nos. 197811 and 197426, before the Controller of Designs at Kolkata. Similarly, the appellant herein also filed a Designs Cancellation Petition for cancellation of the Registered Design Nos.184135, 184136 and 184137 standing in the name of the Respondent No.1 on the same ground as alleged by the respondent in its petition for cancellation of the appellant's Designs. After certain interlocutory proceedings relating to the prayer made for transfer of the cancellation proceedings from the Controller of Designs to the Delhi High Court, the Controller of Designs heard the parties 4 on 5th March, 2008 and reserved his order. Meanwhile, the respondents filed FAO (OS) No.101/08 against the orders dated 13.2.2008 and 5.3.2008 passed by the Controller of Designs, Kolkata and the same was converted into a Petition under Article 227 of the Constitution. Initially the learned Single Judge was doubtful about the maintainability of the appeals. Thereafter, on 28th March, 2008, by three separate orders the Controller of Designs, Kolkata, cancelled the Registered Design Nos.184135, 184136 and 184137 belonging to Respondent No.1. As indicated hereinabove, three First Appeals were preferred before the Delhi High Court, where a question arose with regard to the High Court's jurisdiction to entertain the appeals and by the orders impugned in these appeals the Delhi High Court held that the appeals were maintainable and it had jurisdiction to entertain the same.

25. Having regard to the above, we are of the view that the impugned order of the Delhi High Court cannot be sustained and we, accordingly, set aside the same and hold that in the instant case it is the Calcutta High Court which will have jurisdiction to entertain the appeal under Section 19 of the 2000 Act. The proceedings before the Delhi High Court are, therefore, quashed. The Appellant is granted leave to move the Calcutta High Court against the order of cancellation of its 25 design on the grounds taken in these Appeals, as well as such other grounds as may be relevant for the purpose of deciding the question of cancellation of the Appellant's design by the Controller of Designs, Kolkata, within 30 days from date. If the appeals are filed within the said period, the delay in taking such proceedings shall be condoned.

26. The appeals are, accordingly, allowed, but there will be no order as to costs.

________________J.

(ALTAMAS KABIR) ________________J.

(CYRIAC JOSEPH) New Delhi Dated:29.01.2010.