Facts
The applicants, namely Arun R, Dinesh M, and M/s Espoirs Solution represented by its partner G. Lakshmi Prabha, instituted a commercial intellectual property suit in the Madras High Court against Ms Integray Health Care Private Limited and its promoters, alleging passing off in relation to the design and shape of a product described as a Carbon Fiber Cervical Extension device used in medical applications, and sought damages, accounts, delivery-up, recovery of dues, and return of a demonstration unit besides injunctive reliefs, in addition to addressing design-related issues linked to the respondent’s registered design bearing No. 400027-001 in the Designs Registry at Kolkata.
The core product is a cervical extension device and the grievance is that the respondents’ design or shape closely imitates the applicants’ design and causes confusion in the marketplace, amounting to misrepresentation and damage to goodwill; alongside the civil suit, cancellation of the impugned design registration was already sought by the applicants before the Controller of Patents and Designs, Kolkata, under reference D-9107/2024-KOL.
Since all private parties are based in Chennai, the applicants approached the High Court with an application to direct the Controller to transfer the pending design cancellation petition from the Designs Office at Kolkata to the Madras High Court to enable consolidated adjudication with the pending commercial suit concerning the same design subject matter.
Procedural Details
The suit was filed under Order VII Rule 1 CPC read with Order IV Rule 1 of the Original Side Rules and Sections 27 and 135 of the Trade Marks Act, 1999 to seek injunctive and monetary reliefs typical of a passing off action in trade dress and product configuration disputes, while acknowledging that the respondents hold a registered design and that cancellation is separately pursued under the Designs Act mechanisms before the Controller in Kolkata.
In the suit, the applicants moved Application No. 726 of 2025 specifically praying for a direction to the Controller of Patents and Designs, Kolkata, to transfer their pending design cancellation petition concerning Design No. 400027-001 (Ref. D-9107/2024-KOL) to the Madras High Court to be heard along with the commercial suit; notice was given of a prior representation dated 27 March 2025 to the Controller invoking the Supreme Court’s guidance on transfer of cancellation proceedings to the High Court when suits involving the same design issues are seized by the High Court.
The respondents opposed the application relying on a previous Madras High Court order in OP (PT) No. 2 of 2024 between the same parties, and on the Supreme Court’s decision in S.D. Containers, Indore v. Mold Tek Packaging Ltd., Civil Appeal No. 3695 of 2020, to argue that cancellation petitions lie only before the Controller and the High Court lacks concurrent original cancellation jurisdiction save in appellate capacity or via statutory transfer when defences under Section 22(3) are raised in a suit.
Dispute
The immediate dispute before the Court is jurisdictional and procedural: whether, in the presence of a pending commercial suit concerning passing off and related reliefs over the same product shape or design, the Madras High Court can direct transfer of the applicants’ design cancellation petition from the Controller at Kolkata to the High Court at Madras for consolidated adjudication, by drawing upon Section 19(2) and Section 22(4) of the Designs Act, 2000, the Supreme Court’s pronouncements harmonizing these provisions, and the Madras High Court Intellectual Property Rights Division Rules, 2022 permitting consolidation of related IP proceedings.
The applicants rely on the Supreme Court’s order in Maya Appliances Pvt. Ltd. v. Preethi Kitchen Appliances Pvt. Ltd., 2020 SCC OnLine SC 1563, where both parties’ cancellation petitions pending before the Controller were directed to be referred to the Madras High Court under Section 19(2), given the pendency of a suit on infringement/passing off between the same parties concerning the same subject matter, to avoid multiplicity and conflicting outcomes.
The respondents contend that S.D. Containers clarifies that a cancellation petition under Section 19 must be filed before the Controller and that High Court jurisdiction is appellate save when Section 22(3)-(4) is triggered by a defence to a piracy action, and they also rely on an earlier Madras High Court order declining original cancellation jurisdiction under the Designs Act and requiring resort to the Controller’s forum.
Detailed Reasoning Including on Judgment
Statutory Framework
Section 19 of the Designs Act, 2000 provides that any person interested may present a petition for cancellation of registration to the Controller on grounds such as:
- Prior registration
- Prior publication
- Lack of novelty or originality
- Non-registrability
- The subject is not a “design” under Section 2(d)
Critically, Section 19(2) permits an appeal from any order of the Controller to the High Court and also permits the Controller to refer any such petition to the High Court, with the High Court to decide any petition so referred, thereby establishing a statutory pathway for the High Court to decide cancellation petitions referred by the Controller.
Judicial Precedents and IPD Rules
The Madras High Court engaged with its earlier decision in OP (PT) No. 2 of 2024 that held cancellation applications must be presented to the Controller and that the High Court’s role is appellate or upon statutory transfer, but distinguished that ruling by emphasizing that in the present scenario the applicants sought not to file an original cancellation directly in the High Court but to direct a transfer or referral of a pending Controller petition to the High Court seised of the related commercial dispute, which is contemplated under Section 19(2) and reinforced by Supreme Court practice in Maya Appliances.
The Court then examined the Madras High Court Intellectual Property Rights Division Rules, 2022. Rule 6 and Rule 14 expressly empower the Court to consolidate suits for infringement or passing off with other proceedings involving the same IPR, to direct consolidated recording of evidence and adjudication, and to use powers of transfer under Section 24 CPC to bring matters pending before commercial courts to the IP Division when consolidation is in the interests of justice, thus evidencing an institutional framework for unified IP adjudication where parallel proceedings exist.
Court’s Findings
The Court reasoned that consolidation of the Controller’s cancellation petition with the pending suit would best serve judicial economy and consistency, especially as all parties are located in Chennai and the High Court is already seized of the connected civil dispute, and it noted that the Supreme Court has recognized such transfers to an appropriate High Court when cause of action and parties are centred there, as seen in S.D. Containers where the Supreme Court, while preserving the statutory scheme, adjusted forum on cause of action grounds in line with Godrej Sara Lee principles on jurisdiction.
On this foundation, the Court concluded that there is no legal impediment to ordering the Controller to transfer the pending cancellation petition to the Madras High Court for decision, either by the Controller referring the petition under Section 19(2) or by virtue of the Court’s authority to consolidate and secure a single-forum decision when Section 22 issues are live or likely to arise, and that this approach aligns with the Supreme Court’s guidance and the IPD Rules’ consolidation mandate.
Decision
Allowing Application No. 726 of 2025, the Court directed the Controller of Patents and Designs, Kolkata, to transfer the applicants’ petition for cancellation of Design No. 400027-001 in favour of Respondent No. 1, bearing Ref. D-9107/2024-KOL, to the Madras High Court for adjudication along with the pending commercial suit.
| Case Title | Arun R & Ors. Vs Ms Integray Health Care Pvt. Ltd. & Ors. |
|---|---|
| Order Date | 25 October 2025 |
| Case Number | A No. 726 of 2025 in C.S. (Comm. Div.) No. 152 of 2024 |
| Name of Court | High Court of Judicature at Madras |
| Hon’ble Judge | Hon’ble Mr. Justice N. Senthilkumar |
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
