In design infringement actions, the registration of a design gives the proprietor a statutory right against piracy of the registered design. However, the Designs Act, 2000 also provides the defendant with a specific statutory defence, under which the defendant may contend that the registered design is liable to be cancelled on any of the grounds available under Section 19 of the Act, including lack of novelty, prior publication, or non-registrability. Once such a defence is taken in a suit for piracy of design, Section 22(4) of the Designs Act provides for transfer of the suit to the High Court for decision.
The Gujarat High Court dealt with this issue in M/s Satyam Fashion through Ghanshyam Laxmanbhai Vaghasia vs Meesho Technologies Private Limited trading as Meesho.com & Ors. [R/Appeal from Order No. 224 of 2025]. The Division Bench delivered the decision on June 16, 2026, where the appeal arose from an order of the Commercial Court, Surat, rejecting the plaintiff’s application for temporary injunction in a design infringement suit.
The High Court did not examine the merits of the injunction claim. Instead, it found that once the defendants had raised cancellation of the registered design as a defence and had also sought a declaration that the plaintiff’s design lacked novelty and originality, the Commercial Court should have transferred the suit to the High Court under Section 22(4). The Commercial Court had no occasion to decide the interim injunction application before dealing with the mandatory transfer requirement.
Background of the Case
The appellant (original plaintiff) had filed a suit before the Commercial Court for relief against alleged infringement or piracy of its registered design. The appellant also filed an application for a temporary injunction restraining the respondents (original defendants) from infringing the registered design during the pendency of the case. By order dated September 12, 2025, the Commercial Court rejected the application for ad-interim injunction. Consequently, the appellant challenged this order before the Gujarat High Court through an appeal.
The appellant highlighted the defence taken by the respondents in their written statement, where they alleged that the appellant had suppressed material facts relating to prior publication and availability of similar designs in the public domain. They further contended that the appellant’s registered design lacked novelty and originality under Section 2(d) and 4 of the Designs Act and was liable to be cancelled under Section 19.
The respondent highlighted the product listings and customer reviews available on its e-commerce platform, contending that identical or similar products had already been published before the appellant’s design application. They also requested the Court to hold and declare that the appellant’s registered design lacks novelty and originality, thereby rendering it liable to cancellation under Section 19 of the Designs Act.
Issue Before the High Court
The principal issue before the Gujarat High Court was whether the Commercial Court could proceed to decide the appellant’s interim injunction application when the respondents had already raised cancellation of the registered design as a defence under Section 19 and had sought a declaration that the design lacked novelty and originality. The related question was whether, in view of Section 22(4), the Commercial Court had any option other than transferring the suit to the High Court.
Court’s Analysis
The High Court examined the written statement and the reliefs sought by the respondents. It was noted that the respondents had specifically pleaded prior publication, lack of novelty and lack of originality. They had also pleaded that the appellant’s registration was invalid and unenforceable and liable to be cancelled under Section 19 of the Designs Act.
The Court also noted that the respondents had not merely referred to cancellation in passing. They had expressly sought a declaration from the Civil Court that the appellant’s registered design lacked novelty and originality and was liable to be cancelled under Section 19.
In light of this, the High Court held that Section 22(4) was attracted. Once a defendant in a design piracy suit avails a ground of cancellation under Section 19 as a defence, the Court before which the suit is pending is required to transfer the suit to the High Court for decision.
The High Court found that the Commercial Court had taken note of the written statement and the respondent’s plea, but had ignored the statutory effect of Section 22(4). In such circumstances, there was no occasion for the Commercial Court to proceed with the plaintiff’s interim injunction application. The first step should have been to transfer the suit to the High Court.
The Gujarat High Court relied on the Supreme Court’s decision in S.D. Containers Indore vs Mold-Tek Packaging Ltd. [(2021) 3 SCC 289], where the Court had considered the effect of Section 22(4) in a design infringement suit where the defendant had raised cancellation of the registered design as a defence.
The Supreme Court had clarified that the Designs Act provides two independent routes to question the validity of a design registration. One route is to file a cancellation petition before the Controller under Section 19. The other is to raise cancellation as a defence in a design piracy suit under Section 22(3). Where the second route is adopted, Section 22(4) requires transfer of the suit to the High Court. The Supreme Court had also held that the transfer is a ministerial act once revocation or cancellation is sought as a defence. The Commercial Courts Act, 2015 does not override this mechanism, and therefore, even where the suit is before a Commercial Court, the statutory mandate under Section 22(4) must be followed.
Applying this principle, the Gujarat High Court held that the Commercial Court, Surat, should have transferred the suit to the High Court once the defendants raised the cancellation defence.
Decision of the High Court
The Gujarat High Court set aside the Commercial Court’s order, rejecting the appellant’s application. The Court did not decide whether the plaintiff was entitled to a temporary injunction. Instead, it was held that the matter had to be first placed before the proper forum as per Section 22(4). The High Court directed the Commercial Court, Surat, to pass an appropriate order transferring the suit to the High Court, within one week from receipt of the High Court’s order.
Importance of the Decision
The Gujarat High Court’s decision reinforces the mandatory effect of Section 22(4) of the Designs Act, 2000. Where a defendant in a design piracy suit raises grounds of cancellation under Section 19, the suit must be transferred to the High Court for decision. The Commercial Court cannot proceed to decide the interim injunction application without first giving effect to the statutory transfer requirement. The ruling is a reminder that design infringement suits often involve two linked issues of the enforcement of a registered design and validity of that registration. Once validity is challenged on a cancellation defence, the Designs Act assigns the matter to the High Court. The decision therefore provides clarity in design litigation and confirms that Section 22(4) must be applied before the suit proceeds further on merits.
Authors: Manisha Singh and Shivi Gupta