JUDGMENT : 1. First defendant in a suit for injunction is the appellant. Suit was filed by the first respondent to restrain the appellant and another (second respondent) from fraudulently or obviously imitating the registered design of the plaintiff's stabilizers with design registration No.187578. Both defendants appellant and second defendant resisted the suit. After trial negativing their objections a decree of injunction was passed in favour of the plaintiff (first respondent) as prayed for. Aggrieved by that decree, appellant (first defendant) has preferred this appeal. 2. I heard the counsel for the appellant and also first respondent. 3. After hearing the counsel on both sides at length and looking into the pleadings and evidence of the case, I find meticulous scrutiny of the case canvassed by rival side is not to be proceeded more so, to avoid prejudice being caused to one or other parties. On the facts and circumstances presented with reference to the pleadings and evidence of the case, and hearing the submissions of the counsel as well, I find the court below has proceeded with trial of the suit overlooking the mandatory prescription under sub section (4) of section 22 of the Designs Act, 2000, hereinafter referred to as the Act. Plaintiff has filed the suit seeking injunction against the defendants alleging that there is fraudulent or obvious imitation of design obtained over its product viz stabilizer by the defendants, to injunct them from doing so by a decree of the court. Whatever be the claim or entitlement of plaintiff to get such decree on the allegations raised in the plaint, admittedly, it was resisted by both defendants filing written statement raising various contentions that the plaintiff cannot be granted the decree applied for. Among other contentions appellant (first defendant) has contended that there is no novelty in the design registered by the plaintiff asserting that it is not a new or original design, and the same is not registerable under the Act. In paragraph 3 of the written statement that defendant refuting the claim of plaintiff has stated thus:- “xx xx xx there is no peculiarity for design registered by the plaintiff and there is no novelty in the design. The design purportedly registered is not a new or original design and the same is not registerable under the Act. In paragraph 3 of the written statement that defendant refuting the claim of plaintiff has stated thus:- “xx xx xx there is no peculiarity for design registered by the plaintiff and there is no novelty in the design. The design purportedly registered is not a new or original design and the same is not registerable under the Act. It is relevant to note that rectangular, round, oval shaped stablizers were available in the market for the last several years and therefore, no person can claim monopoly in respect of round or oval shaped designs. Therefore, it is submitted that there is no novelty in the oval shaped design of the plaintiff.” 4. The question then for consideration is, when a defence was taken that the design got registered by the plaintiff is not a new or original design and it should not have been registered in its favour,to resist the suit claim, whether the court below could have proceeded with the suit, adjudicated the disputes involved and passed a decree in such suit. 5. Chapter V of the Act deals with legal proceedings. Where there is any fraudulent or obvious imitation of any registered design obtained over an article by a party except with his licence or written consent, he is entitled to seek damages for such contravention and also for an injunction. A suit proceeding for the above relief cannot be instituted before any court below the court of District Judge. In such a suit or proceeding it is open to the person proceeded against to set forth any ground for cancelling the registration of the design covered by section 19 of the Act. If any ground on which the registration of design may be cancelled under section 19 of the Act is taken as defence in the suit or proceeding, then such suit or proceeding has to be transferred by the court to the High Court for decision, is the mandatory prescription under sub section (4) of Section 22 of the Act. 6. Sub section (3) and (4) of Section 22 of the Act reads thus:- (3) In any suit or any other proceeding for relief under subsection( 2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. 6. Sub section (3) and (4) of Section 22 of the Act reads thus:- (3) In any suit or any other proceeding for relief under subsection( 2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. (4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section(3) in any suit or other proceeding for relief under sub-section(2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision. Though learned counsel for the first respondent plaintiff urged before me that no defence capable of being considered as a ground on which the registration of a design obtained by plaintiff over his stabilizer for its cancellation had been set forth by the appellant (first defendant), I cannot subscribe to that view. Contentions raised in the written statement, paragraph 2 reproduced earlier, would demonstrate that the first defendant had taken a specific ground under section 19 of the Act for cancellation of the registration to resist the suit claim. Section 19 of the Act dealing with the cancellation of the registration states the grounds on which a person may present a petition before the Controller for cancellation of a registration of a design after it has been so registered. One among the grounds provided for such cancellation of the design registered is that the design is not a new or original design as provided under clause (c) of Section 19 of the Act. The defence taken by the appellant (first defendant) resisting the suit clearly makes out a case that he has impeached the design registered in favour of the plaintiff contending that it is not new or an original design. That is sufficient to enable him to seek cancellation of the design under section 19 of the Act. The defence taken by the appellant (first defendant) resisting the suit clearly makes out a case that he has impeached the design registered in favour of the plaintiff contending that it is not new or an original design. That is sufficient to enable him to seek cancellation of the design under section 19 of the Act. When such a defence has been taken in the suit filed under sub section (2) of Section 22 of the Act, the mandatory prescription under sub section (4) of that Section has to follow and the court before which the suit or other proceeding is pending has to transfer it to the High Court for decision. The court before which the suit or other proceeding is pending cannot determine the merits of the defence nor even conduct an inquiry over such defence and it has to comply with the statutory mandate under sub section(4) of Section 22 of the Act by transferring the suit or proceeding to the High Court. Without taking note of the statutory prescription, learned District Judge after taking evidence has adjudicated the disputes and granted a decree in favour of the plaintiff. The decree so passed has to be interfered with and the case has to be remitted to the court below to follow the statutory prescription under sub section (4) of Section 22 of the Act. 7. Setting aside the decree and judgment the case is remitted to the court below directing it to transfer the suit in accordance with sub section (4) of Section 22 of the Act. Parties are directed to appear before the court below on 24.10.2013. Appeal is allowed with directions as above, and both parties are directed to suffer their costs.