ESSDEE INDUSTRIES Vs. ESBEE EECTROTECH LLP

JUDGEMENT

(1.) This writ petition challenges an order passed by the District Court at Pune on an application of the Respondent/plaintiff for withdrawal of its suit filed in respect of infringement of design as well as infringement of registered trademark and passing-off of goods with liberty to institute two separate suits, one for the alleged trademark infringement and passing off of goods, and the other for the alleged design infringement.

(2.) The plaintiff s suit was a composite suit (i) for infringement of its registered trademark as well as passing-off of goods by the Petitioner/ defendant as those of the plaintiff and (ii) for infringement of its registered design. The cause of action in respect of infringement of its trademark and passing-off of goods was clearly a separate cause of action from that of the defendant s infringement of its registered design. These two separate and distinct causes of action were combined by the plaintiff. The defendant, in its written statement, took up a defence under Section 19 of the Designs Act, challenging the very registrability of the plaintiff s design inter alia on account of want of novelty. After this defence was raised, the plaintiff applied for withdrawal of the suit with liberty to split up the causes of action in the suit and file separate suits in respect of infringement of trademark and infringement of design.

(3.) The main opposition of the defendant to the impugned order permitting the plaintiff to withdraw its composite suit with liberty to file two separate suits, is that the trial court had lost seisin of the matter once a defence was raised under Section 19 of the Designs Act. It is submitted that upon such defence being raised, what the trial court has to do is simply transfer the suit to the jurisdictional High Court by virtue of sub-section (4) of Section 22 of the Designs Act. Learned counsel for the Petitioner/defendant relies on a judgment of Allahabad High Court in the case of R.N. Gupta and Co. Ltd. Jasola New Delhi vs. M/s. Action Construction Equipments Ltd. Dudhola , 2016 6 ADJ 102 in support of his case that the legislative intent behind Sub-section (4) of Section 22 implies that moment a defence referred to therein is raised, the jurisdiction for deciding the suit vests with the jurisdictional High Court. Learned Counsel for the Petitioner also relies on the case of Carlsberg Breweries A/S vs. Som Distilleries and Breweries Ltd. , 2019 AIR(Del) 23 decided by a Full Bench of Delhi High Court in support of his submission that it is not permissible to split up the cause of action as proposed by the Respondent herein.