Case Commentary of S.D. Containers v. Mold-Tek Packaging Ltd.


The plaintiff, in this case, filed a suit against the appellant-defendant seeking for and pleading immediate declaration, order and permanent injunction to restrict the appellant-defendant from copying, using or enabling others to use its designs in which the appellant-defendant sought cancellation of the said registered designs. In a gist, the appellant-defendant wanted to seek cancellation of the registered designs of the appellant. However, during the course of this particular action, the appellant-defendant was incessantly using the disputed designs. Therefore, in an appeal, the plaintiff demanded the restraint of the use of the designs by the appellant-defendant or any other people.

The jurisdiction of the courts in the case was also being questioned. The commercial court at the district level of Calcutta relocated the case to the Calcutta High Court. Indore bench of the M.P. court set aside the case giving a reason that only the Commercial Court of Indore is competent enough to decide on this particular matter. it was contended that the case did not arise under the jurisdiction of the Calcutta High Court and thus the case should be transferred to the Indore bench.

There were in total two bones of contention, one being the usage of the designs and the other being the jurisdiction of the matter in hand. If we bifurcate the entire issue then the matter can be easily solved. Simplification of the complex questions can be a mechanism for dealing with our present disagreement between the parties. Injunctions for the usage of a design or the infringement of a right to design is a crucial topic and hence adequate intellect is required.

Issues raised

  • The laws that are dealing with the case are the Designs Act 2000[1] and the Commercial Courts Act 2015[2]. The first issue of dealing with the validity of the designs is decided by the former code of laws and the second question in the frame is allocated to the provisions of Commercial Courts Act 2015. There are two major issues at hand; one being the validity and ownership rights of the designs and the second issue regarding the jurisdiction and capacity of the courts.
  • Section 4, 19 and 22(4) of the Designs Act 2000 elucidates the essentials of prohibition, cancellation and piracy regarding the designs and ensuing registrations of such designs. The appellant-defendant claimed that the designs that had been registered by the appellant should be cancelled and prohibited according to sections 19 and 4 of the act. The appellant sought a judgment under section 22 of the act appealing that the designs had been pirated by the appellant-defendant and hence passable remedies should be provided by the courts.
  • The region of the jurisdiction of the court was categorised by sections 3(2), 3-A, 4, 7 and 21 of the Commercial Courts Act 2015. This particular act specifies that a commercial division bench has to be formulated by a said High Court. A trajectory has to be followed. The commercial dispute, first, needs to be introduced in a court not inferior in position and power to a district court. Then the case can be forwarded to a high court and then consequently to the commercial division or bench of the High Court.


  • From the side of the appellant-defendant:

Section 4 of the Designs Act 2000, prohibits the registration of designs that are not new, original, or have been priorly disclosed anywhere. Moreover, designs that are indistinguishable from other traces of designs and are obscene or scandalous in any manner would be prohibited. Section 19 of the act states that the appellant’s registration of the design can be cancelled in case it has been already registered or published elsewhere. A petition testing such a cancellation can be filed to the Controller. Afterwards, the Controller may advance the case before the High Court. Therefore, the contention is that the registered design of the appellant needs to be cancelled and prohibited.

  • From the side of the appellant:

The appellant was under a burden that the design had been pirated by the appellant-defendant and incidentally, the appellant-defendant should be made liable under section 22 of the Designs Act 2000. According to this section, due to the presence of copyright, any fraudulent or obvious imitation and exposure or publication of a design for the purpose of sale is proscribed for registration without the consent of the proprietor. A sum of not exceeding INR 25,000 (twenty-five thousand rupees) has to be accorded to the proprietor in case of contravention of this act. Moreover, if a suit is filed or an injunction against repetition of the design is granted then damages have to be awarded accordingly. The overall sum of damages cannot exceed the total limit of INR 50,000 (fifty thousand rupees) for a particular design.

Rationale and judgment

The case can be dealt with only by the Commercial Division of a High Court and not by a Bench of the High Court. The case is thus remitted to the High court of Madhya Pradesh, Indore bench because the case can only be transferred from one exclusive Commercial court division to another division of the same kind. The High Court of Madhya Pradesh did not have the ordinary original civil jurisdiction to deal with the said matter. Moreover, the High Court can take up such cases only in an appeal after they have been passed on by the Controller.  Article 19—a plea for the cancellation of registration by appellant-defendant—follows a path wherein firstly the case has to be directed to the Controller and then to the High Court in the form of an appeal.

However, under section 22(4) the case can be directed to High Court. Section 19 can be availed even in the absence of an actual usage of the design. A mere objection becomes a cause of action in the case of section 19. Under section 22 only the usage or sale of the design would become a reason for liability for the registered proprietor. Section 19 is available to any group of people or “any person interested” whereas Section 22 applies to only a small fraction of the masses i.e., registered proprietors. Section 22 and Section 19 are two independent and separate provisions and thus give rise to entirely distinct causes of action. Therefore, keeping such points in mind, the court gave its judgement regarding the case. 

Defects of law

The muddling confusion is present when it comes to the laws in hand. There are two options available in order to attain the withdrawal of registration. One is the appeal before the Controller and the other is before the civil court on the basis of registration proof. The presence of remedies under Section 19 cannot be assumed to act as a negation of the essentials of Section 22. The distinction provided by the two provisions cannot be intertwined. Piracy and cancellation of registration arise due to two separate actions of people. The Designs Act 2000 does not meet the requirements of our present Fashion Law sector. The present arena is fraught with a lot of technicalities which the act is unable to decipher and present accurately. Fashion law is growing rapidly with time and the intricacies are still unmatched. Intellectual property infringement, counterfeiting, contract disputes, employment issues, consumer protection-related tussles, environment and sustainability compliance, privacy and data protection, licensing and brand protection and in the end issues related to adequate redressal are not satisfactorily addressed in the act.


Thecause of action cannot be assumed to have arisen within the jurisdiction of Kolkata and thus, the suit should be transferred to the bench of the High of Madhya Pradesh. It is quite pertinent to understand the dynamics related to designing, logos, ideas and creations are very complex, dynamic and a hard nut to crack. Laws may simplify the complications but these provisions need timely updates and upgradations. Firstly, the need to have originality of work is missing in most of the circumstances. However, even if the sector receives such novel works there are acts of cheating and lack of compliance to ethical requirements. During mass production of items, we need to understand that the trust of people is at stake. There should be a prior disclosure of the authenticity of these items. Suits regarding the originality of items are going on when culprits are earning profits out of the manufactured products. Even the regulatory actions are met with deaf ears. The ownership information that the public gets is often times fake and incorrect. The basic standards are not adhered to while formulating designs. Fake branding of ideas poses a potential threat to the owners leading to financial losses. False advertising, unjust gains, unfair discrimination and unfair employment concerns are hovering above the heads of creators. Markets are no longer a place for fair competition but are reduced to an unscrupulous arena of malpractices. Privacy and piracy of confidential data are threats to the global market. Defects in licensing and blemishes in brand protection create a fervour of mistrust. We need to navigate the discourse through legitimacy and a basic understanding of the fair legal disciplines.


[1] Designs Act, 2000.

[2] Commercial Courts Act, 2015.