Summary
The Madras High Court directed the Controller to transfer a pending petition for cancellation of Design No. 400027-001 to be heard with a related passing-off suit. Relying on IPD Rules and Supreme Court guidance against parallel proceedings, the Court found consolidation lawful and efficient.
Summary
The Madras High Court has directed the Controller of Patents and Designs in Kolkata to transfer a pending petition for the cancellation of a registered design to the High Court. The Court stated that by doing so it could consolidate the cancellation proceedings with a commercial suit for passing off that was already pending between the same parties before its Intellectual Property Division (IPD).
Background
In this case, the Applicants, Arun R and others, filed a suit before Madras High Court against M/s Integray Health Care Private Limited and its partners. The suit alleged that the defendants were “passing off” their goods by using a design/shape of goods for a “Carbon Fibre Cervical Extension” that was deceptively similar to the applicants’ product.
Separately, the Applicants had also filed a petition before the Controller of Patents and Designs in Kolkata to cancel the design registration (Design No. 400027-001) held by the Defendants.
This created two parallel proceedings: the passing-off suit pending in Chennai and the design cancellation petition pending in Kolkata.
The Applicants sent a letter to the Office of Controller of Design on 27.03.2025 stating the pendency of the proceedings and requesting to transfer the matter to the Madras High Court. After receiving no response, the Applicants filed an application before the Madras High Court seeking to transfer the cancellation petition from Kolkata to be heard along with their suit in Chennai.
Issue
The issue before the Court was whether it had the jurisdiction to order the transfer of a design cancellation petition pending before the Controller of Designs to itself, in order to consolidate it with a related passing-off suit pending before its Intellectual Property Division.
Parties’ Contentions
The Applicants argued that since all primary parties involved in the dispute are based in Chennai, it would be efficient and just to have both matters heard together by the High Court. They contended that there would be no prejudice to the parties involved. They also stated that, except for the fact that the 4th respondent, the Controller of Designs, has its office at Kolkata, there are no other reasons for the parties involved to register the designs or file a cancellation petition before the 4th Respondent Office. They relied on a Supreme Court decision in Maya Appliances Pvt. Ltd. v. Preethi Kitchen Appliances Pvt. Ltd., which had previously directed the Controller to transfer cancellation applications to the Madras High Court where a related suit was pending.
The Respondents opposed the transfer. They argued that under the Designs Act, 2000, an application for cancellation of a design can only be filed before the Controller. They submitted that the High Court’s jurisdiction is limited to hearing appeals against the Controller’s decisions or when a defendant in an infringement suit raises a plea for revocation, which triggers a mandatory transfer of the suit itself. They cited the Supreme Court’s judgment in S.D. Containers, Indore v. Mold Tek Packaging Ltd. to support their position that the initial jurisdiction for cancellation lies exclusively with the Controller.
Court’s Reasoning
Justice N. Senthilkumar considered the arguments from both sides and reviewed the relevant legal provisions and precedents. The Court also noted that despite receipt of notice, the fourth respondent did not take any steps or pass any orders to transfer the cancellation of the design petition to the file of this court.
The Court considered the settled position of the Supreme Court, which allows for the transfer of cases to a competent court when the parties reside in the same location to avoid multiplicity of proceedings.
The Court also relied on the Madras High Court Intellectual Property Rights Division Rules, 2022. It highlighted Rule 6(14) and Rule 14, which explicitly empower the Court’s IPD to consolidate a suit for infringement or passing off with any other related proceeding involving the same IPR.
Considering these specific rules and the Supreme Court’s general stance on preventing parallel proceedings, the Court found that there was no legal impediment to granting the Applicants’ request. It concluded that the prayer made in the application could be granted.
Order
The High Court allowed the application and directed the 4th Respondent, the Controller of Patents and Designs in Kolkata, to transfer the petition for cancellation of Design No. 400027-001 to the Madras High Court.
Relevant Paragraphs
“16. Rule 6(14) of the Madras High Court Intellectual Property Rights Division Rules, 2022, empowers the court to direct consolidation of the suit for infringement involving an IPR with any other proceeding(s) before it, involving the same IPR at any stage. Rule 14 provides for consolidation of matters or cases or proceedings or disputes and sub clause (1) and (2) of the said rule gives power to consolidate the proceedings and there is no impediment to adjudicate that the case, which falls under the category of Cancellation of Registration, before the court, which has competent jurisdiction.
- The Hon’ble Supreme Court in the cases cited supra, has, made it clear that there is no impediment to transfer the cases to a competent court when the parties are residing at one place and permitted the transfer of proceedings from the competent authority. In view of the settled proposition of the Hon’ble Supreme Court, I am of the considered view that the prayer made in this application can be granted.
- Accordingly, this application is ordered as prayed for and the 4th Respondent, namely the Controller Of Patents And Designs, Kolkatta, is directed to transfer the petition for cancellation of the impugned design registration with Design No.400027-001 in favour of Respondent No.1 filed by the Applicants herein bearing Reference No.D-9/107/2024-KOL to this court.”
Citation: Arun R & Ors. v. M/s Integray Health Care Private Limited & Ors. (A No. 726 of 2025 in C.S. (Comm Div) No.152 of 2024), High Court of Judicature at Madras dated October 25, 2025