The Delhi High Court, in a recent judgment, has held that counterclaims seeking cancellation and expunction of a design registration is maintainable even during the pendency of a civil suit basis the same registration.
In a suit for piracy of a registered design filed by Novateur Electrical & Digital Systems Pvt. Ltd. (“Plaintiff”) against V-Guard Industries Ltd. (“Defendant”), the Defendant took the defense of invalidity of the Plaintiff’s registered design on the ground of prior publication. The Plaintiff submitted that the design statute does not provide for such a counter claim, and that petitions seeking revocation or cancellation of a design have to be filed with the Controller of Designs. The Plaintiff further submitted that the grounds of cancellation of a registered design can, instead, be sought as a defense to a plea of piracy, which the Defendant has rightfully done in its written statement. As such, per the Plaintiff, the Defendant cannot maintain a plea for revocation of the suit design even in the form of a counter claim.
The Defendant, on the other hand, submitted that this issue has been settled by the Supreme Court in the case of S.D. Containers Indore v. Mold-Tek Packaging Ltd. [(2021) 3 SCC 289], in which it was held that cancellations and revocations are independent remedies.
The Court, upon examining the S.D. Containers decision, held that the right to seek revocation of a registered design is independent of the right to raise a plea of invalidity of a registered design as a defense in a piracy suit. Accordingly, the objection raised by the Plaintiff to the maintainability of the Defendant’s counter claim was rejected.
Novateur Electrical & Digital Systems Private Limited v. V-Guard Industries Limited, CS(COMM) 567/2021 & I.A. 2117/2023, Judgement dt. February 8, 2023