Madras High Court
A.R.Safiullah vs A.Sowkath Ali on 6 July, 2012
Author: V.Periya Karuppiah
Bench: V.Periya Karuppiah
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 06/07/2012 CORAM THE HON'BLE MR.JUSTICE V.PERIYA KARUPPIAH O.A.Nos.304 to 306 of 2009 in C.S.No.282 of 2009 A.R.SAFIULLAH vs A.SOWKATH ALI ORDER
V.PERIYA KARUPPIAH, J., O.A.No.304 of 2009: This application has been filed seeking an order of ad-interim, interim injunction restraining the respondents by themselves, their partners, heirs, legal representatives, successors-in-business, agents, stockists, distributors, assigns, representatives, or any one claiming under them from in any manner infringing my registered patent under No.198079 in respect of "food grade laminated paper, method and apparatus for manufacturing the laminated paper", by manufacture and sale of products identical to my product and in the method and apparatus by which the applicant manufactures the said product pending disposal of the suit.
2. O.A.No.305 of 2009: This application has been filed seeking an order of ad-interim, interim injunction restraining the respondents by themselves, their partners, heirs, legal representatives, successors-in-business, agents, stockists, distributors, assigns, representatives, or any one claiming under them from in any manner passing off food grade laminated paper resembling banana leaf/ artificial banana leaves manufactured and sold by them as and for applicant's food grade laminated paper resembling banana leaf/ artificial banana leaves by using identical/ or deceptively similar same colour scheme, get up and lay out, imitation of applicant's trade dress in his unique, distinctive artificial laminated banana leaf or in any other manner whatsoever, pending disposal of the suit.
3. O.A.No.306 of 2009: This application has been filed seeking an order of ad-interim, interim injunction restraining the respondents by themselves, their partners, heirs, legal representatives, successors-in-business, agents, stockists, distributors, assigns, representatives, or any one claiming under them from in any manner infringing the plaintiff's registered design under No.182931 by manufacture and sale of artificial laminated banana leaf identical or similar to the shape and configuration of plaintiff's artificial laminated banana leaf registered under the Designs Act, pending disposal of the suit.
4. Heard Mr.P.S.Raman, learned Senior Counsel appearing on behalf of Mr.A.A.Mohan, learned counsel for the applicant and Mr.P.V.Balasubramanian, learned counsel appearing for the 2nd respondent.
5. The learned Senior Counsel Mr.P.S.Raman would submit in his argument that the plaintiff is engaged in the business of manufacturing and marketing of artificial laminated banana leaf an innovative product which was introduced in the year 2000 for the first time in India and all over the world, after the plaintiff conceived the idea of artificial laminated banana leaf and it can be used as an alternative to the traditional banana leaf obtained from the plantain trees. He would also submit that the artificial laminated banana leaf is not having quality of natural banana leaf getting dried and became brown in colour for over a period of time and the leaf itself would likely to decay due to the infection of bacteria, germs. He would also submit that the plaintiff after a sternest research over a period of time and after repeated experiments and trial in the laboratory, invented the artificial laminated banana leaf of a food grade and would be safe for serving hot food including storing and packing. He would further submit that the said laminated banana leaf was invented by the plaintiff and it became the original intellectual property of the plaintiff. He would also submit that the said product of the applicant/plaintiff is biodegradable as per the certificate issued by central Electrochemical Research Institute, Karaikudi and therefore it is eco-friendly. He would further submit that the applicant/plaintiff had applied for a patent for food grade laminated paper and method and apparatus for manufacturing the laminated paper on 29.08.2000 and the said letter patent was granted on 20.01.2006 in No.198079. He would also submit that even though the patent has been granted in the year 2006, it has got retrospective effect and therefore, it would be deemed to have patented from 29.08.2000. He would also submit that the plaintiff is renewing the patent every year and it was extended and was subsisting on the date of the suit. He would also submit that the plaintiff had also invented the apparatus and a technical know how with the details thereof for the production of the said artificial banana leaf. He would further submit that the plaintiff had also applied for registration of the design in his favour and it was registered in various shapes and configurations in registration No.182931 dated 18.07.2000 for the artificial banana leaf, registration No.1831311 dated 04.08.2000 for the circular shaped artificial banana leaf registration No.183132 dated 04.08.2000 for the oval shaped artificial banana leaf and Registration No.184037 dated 27.11.2000 for the square shaped artificial banana leaf and they were granted for 15 years from the said respective days. He would further submit that he had also registered laminated paper plates and circular laminated artificial banana leaf in Registration Nos.184035, 184036 and 184038 respectively dated 27.11.2000 and they were also given for 15 years. He would further submit that the said artificial laminated banana leaf of food grade quality a consideration of a distinctive shape of green colour nerves of the leaf are running in regular sequential order and having an uniform shape and size with the scent of real banana leaf. He would further submit that it would not be possible for anybody in the world to prepare such artificial banana leaf as invented by the plaintiff. He would also submit that the applicant/plaintiff as common law rights in respect of the food grade artificial laminated banana leaf and any imitation of the same would amount to passing off the good of the applicant. He would also submit that the applicant has been manufacturing such artificial laminated banana leaf since 2000 onwards and it became the intellectual property of the applicant and no one else can claim any right in the said patent and design. He would also submit that he has along with its sister concern SAS & Co sold the laminated banana leaf from 2000-01 onwards till 2004-05 with increasing sale prospects as it was given in para 11 of the affidavit. He would also submit that by virtue of essential sales development and high quality products having optimum utility value and aesthetic value, the said product artificial laminated banana leaf enjoys great reputation and good will amongst public. He would further submit that anybody manufacturing such products, identical to the artificial laminated banana leaf would amount to passing off the applicants valuable intellectual property rights. He would also submit that the applicant had filed the suit against the person who infringed his registered design and patent against one M/s.Umad Chand and others, Sivakasi in C.S.No.268 of 2011 before this Court and yet another suit filed in C.S.No.448 of 2006 for the patent infringement and passing off against one M/s.Mariappan and others. He would further submit that in the said suits, the applications have been filed for interim injunction and orders have been passed in favour of the applicant. He would also submit that in yet another suit filed in C.S.No.103 of 2005 before this Court for design infringement against one Daniel, this Court has granted interim injunction and it is still valid and subsisting. He would also submit that the applicant/plaintiff had also filed the suit against one M/s.Sathya Agencies in O.S.No.525 of 2008 for patent infringement and for passing off and the said suit is pending before City Civil Court, Hyderabad. He would also further submit that the respondents have copied the process of manufacturing an artificial laminated banana leaf from the process described and claimed in applicant's patent No.198079. He would further submit that the respondents claim was that the artificial laminated banana leaf was of food grade without obtaining certificate from CFTRI, Mylapore. He would further submit that the respondent's artificial laminated banana leaf is therefore not of food grade and used for consumption and packing of food and it may lead to health hazards. He would also submit that the respondents are selling the artificial laminated banana leaf in green colour with nerves running in sequential order and therefore a mere look at the respondents artificial laminated banana leaf would reveal that the respondents have copied each and every feature of the dress of the applicant. He would also submit that the shape configuration and size of the laminated artificial banana leaf produced by the respondents are identical to that of the applicants artificial laminated banana leafs. He would further submit that the applicant had incurred much expenditure in developing and promoting the sales of artificial banana leaf for several lakhs of rupees and the respondents who are at the receiving end in the market had sold the laminated banana leafs in Andhra Pradesh and Tamil Nadu market during February 2009 and thereby they have committed the acts of passing off. He would also submit that the applicant is exclusively entitled to manufacture, sale or distribute the artificial laminated banana leaf all over India since he is the registered patent holder for food grade laminated paper method and apparatus for manufacturing laminated paper, since the patent is granted to him. He wouyld also submit that the petitioner obtained an order of stay before the appellate forum against the revokation of the petitioner by the authority, and therefore the patent is deemed to have continuing and the respondents should have been restrained by an order of temporary injunction in any way claiming or infringing the registered patent No.198079 in respect of food grade laminated paper and apparatus for manufacturing the laminated paper pending disposal of the suit. He would further seek for temporary injunction against the respondent from in any way infringing the plaintiff's registered design under No.182931 by manufacture and sale of artificial laminated banana leaf identical or similar to the shape and configuration of the plaintiff's artificial laminated banana leaf registered under the Design Act. He would also request the Court to pass an order of temporary injunction restraining the respondents or agents in any way claiming under them and from in any way passing off the food grade laminated paper resembling artificial laminated banana leaf manufactured and sold by them as and for applicants food grade laminated paper resembling artificial laminated banana leafs by using identical or similar and same colour scheme, get up and lay out, imitation of the applicant's dress in the unique distinctive artificial laminated banana leaf pending disposal of the suit. He would also draw the attention of the Court to the patent certificate issued by the competent authority produced at page 1 of the typed set. Further he would submit that in any suit or proceedings filed by the plaintiff against 3rd person and in which the Court has come to a different conclusion of refusing the grant of injunction will not bind this Court because the said judgment passed in that matter was an order in personam, in which, the defendants were not parties. He would also submit that the contention of the respondents that the products of the 2nd respondent would not enter Tamil Nadu and he had no sales in Tamil Nadu could not be true and a single transaction would be sufficient to bring the territorial jurisdiction of this Court as it was done within the original jurisdiction of this Court. He would further submit that the said patent certificate issued to the plaintiff was revoked by the competent authority and against which an appeal has been preferred and the appellate authority stayed the revocation order on 23.10.2009 and therefore, the revocation order has been suspended and it would validate the earlier order of grant of patent certificate in favour of the applicant. He would further submit that the contention of the 2nd defendant that he was also given with the registration of the design as per Designs Act, would not in any way give him any right to infringe the registration of design given to the applicant. He would also cite a judgment of Delhi High Court reported in 2008 (37) PTC 288 (DEL) (Vikas Jain v. Aftab Ahmad and others) for the said proposition of law. Yet another judgment of Delhi High Court reported in 1997 PTC (15) (DEL) (Alert India v. Naveen Plastics) is relied upon for the same principle. He would also cite a judgment of this Court reported in 2002(1) LW 85 (Safiullah,A.R. v. Umaidhanmd Singhni & others) for the principle whenever an infringement of design and copy right, and still prima facie could be found and injunction be granted. He would also submit that even though the patent is considered to have been revoked and the design registration was also found in favour of both parties, the passing off the products of the respondents will be that of the applicant's and there would be a product passing off on the right of design over the product, is yet to be decided. He would further submit that the injunction can be granted in respect of passing off even where injunction may not be granted for infringement of the patent as well as the design registered in favour of the applicant. He would therefore submit in his argument if no injunction is granted in favour of the applicant it will be more difficult to assess the damages likely to have sustained by the applicant/plaintiff and if no injunction is granted, immeasurable and irreparable loss would occur and it would not prevent sustaining of damages and therefore a temporary injunction can be granted and the same can be disposed of while the suit is likely to be disposed of by this Court. He would further submit in his argument that whenever two designs of similar nature have been registered by the competent authority, the previous design holder has a right to seek for injunction against the subsequent holder since the subsequent registration holder is not entitled to the benefit of the registration. He would further submit that such subsequent design stated to have been obtained by the 2nd defendant was in the name of her husband Hazarath oyase and that would not help the 2nd respondent to say that she is the design holder of the laminated artificial banana leaf. He would also submit that even such a design certificate was obtained after the filing of the suit and therefore that would not be a ground for refusing interim injunction. Therefore, he would request the Court that all the 3 applications have to be ordered and interim injunction may be granted against the respondents pending disposal of the suit as prayed for in all the 3 applications.
6. The learned counsel for the 2nd respondent would submit in his argument that the suit filed by the plaintiff against the defendant, who is actually having her business at Nellore, Andhra Pradesh, is not sustainale. He would also submit that a stray purchase of artificial laminated banana leaf within the jurisdiction of this Court would not give any cause of action since it was made only for the purpose of showing cause of action. When no part of cause of action arose within the jurisdiction of this Court, the leave obtained by the plaintiff has to be revoked. He would further submit in his argument that when the leave is revokable in nature, the injunction cannot be granted against the respondent, who is a small entrepreneur who started her carrier only recently. He would also submit in his argument that the plaintiff has filed a suit in C.S.No.448 of 2006 on the file of this Court for the reliefs against the alleged infringement of patent and passing off against other party and this Court refused the grant the relief of interim injunction in respect of infringement of patent and it granted the relief of passing off only and the said orders were confirmed by the Hon'ble Division Bench of this Court in a judgment reported in MIPR 2008 (3) 0431 (Mariappan v. A.R.Saflullah and Anr.). He would also submit that the said judgment was confirmed by the Hon'ble Apex Court in the SLP filed by the applicant herein. He would further submit that in the judgment, the Hon'ble Division Bench of this Court found that the patent does not appear to be novel but it was a verbatim filed in copy of patent filed in other countries. Furthermore, the judgment goes to show that the patent was the process patent and the relief of passing off can be granted on account of the registration certificate of the patent held by the plaintiff in that suit. He would further submit that the applicant had conceded the dismissal of the application in O.A.No.304 of 2009 and was insisting for passing an order of temporary injunction in the other applications for the relief of product passing off. He would further submit that the Hon'ble Division Bench has granted the relief of product passing off on the basis of patent certificate issued in favour of the plaintiff, however, the said certificate was cancelled and the prima facie case found by the Hon'ble Division Bench is no longer exists and therefore, the said relief of temporary injunction on product passing off also cannot be granted in favour of the plaintiff. He would also submit that since the order of interim injunction in respect of passing off was granted solely on the basis of the patent certificate which remained valid at that time but it has now became invalid due to revocation order passed by the competent authority and therefore, the passing off relief also cannot be granted in favour of the plaintiff. He would further submit that the stay order passed by the appellate Board over the cancellation of patent certificate dated 17.04.2009 would not make the parties to be in their position as existed before the order of cancelling the patent. He would also cite a judgment of Hon'ble Apex Court reported in AIR 1992 SC 1439 (Shree Chamundi Mopeds Ltd v. Church of South India Trust Association CSI CINOD Secretary, Madras) for the said principle. He would further insist in his argument by relying upon yet another judgment of the Hon'ble Apex Court reported in AIR 1999 SC 3678 (M/s.Style (Dress Land) etc v. Union Territory, Chandigarh and Another), that passing an order of stay cannot be presumed to be the conferment of any additional right. Relying upon the said judgment of the Hon'ble Apex Court, the learned counsel for the 2nd respondent would argue that the plaintiff can take no advantage of the order of stay granted by the intellectual property appellate board and therefore, prima facie case of the plaintiff as submitted in the argument of the learned counsel for the plaintiff would not survive. The dictum laid down by the Hon'ble Apex Court would be the law of land and the reference as to the stay of the order passed by the competent authority revoking the patent certificate cannot be considered as binding upon the parties since it is "per incuirium".
7. He would also submit in his argument that the 2nd respondent as a registered design holder in her favour through her husband Nazarath Ayya and she is actually using the said design registration on the permission given by her husband and therefore, she cannot be injuncted by virtue of design certificate issued in favour of the applicant. He would further submit that the husband of the 2nd respondent is actually managing the entire affairs of the 2nd respondent and the certificate issued to him shows the name of the 2nd respondent as the customer and therefore, the certificate issued in the name of the husband of the 2nd respondent could be utilised by the 2nd respondent on the implied permission given by her husband. He would also submit that when the defendant has got a design certificate in her favour, no injunction can be granted in favour of the plaintiff on the foot of the design certificate obtained by him. He would also cite a judgment of Delhi High Court reported in MANU/DE/1174/2001 (Indo Asahi Glass Co Ltd. v. Jai Mala Roller Glass Ltd. And another) in support of his case. He would also refer to yet another judgment of Delhi High Court made in MANU/DE1174/2001 (S.S.Product of India v. Star Plast), in support of his arguments. He would further submit that the judgment cited by the learned counsel for the applicant reported in 1997 PTC (15) (DEL) (Alert India v. Naveen Plastics) was over ruled and yet another judgment of Delhi High Court consisting of three judges had found that injunction cannot be granted against the holder of the design certificate which was followed in a judgment of Bombay High Court reported in CDJ 1997 BHC 090 (Bajaj Electricals Ltd. vs. Sriri Rama & Sons & Another). The judgment of Delhi High Court reported in 1983 PTC 359 (Tobu Enterprises Pvt Ltd v. Megha Enterprises and another), in which it was held that when the design of both parties are designed no question of ordering injunction and recovery of damages is permissible. He would therefore submit in his argument that even on the foot of the registration of design in favour of the plaintiff injunction cannot be granted against the 2nd respondent. He would further submit in his argument that the design certificate issued in favour of the plaintiff is under the challenge as per provisions of Section 51 A of Designs Act and it is still pending where as the design certificate of the 2nd respondent is not challenged till this date. He would further submit in his argument that the suit was filed in the year 2009 and even though the applications were filed along with the suit no injunction was granted in favour of the applicant for the past more than 2 and half years. He would also submit that the 2nd respondent had built up its own goodwill and reputation. He would also submit that the maintainability of the suit will also be tested in either a preliminary issue of in a full-fledged trial and if in the meanwhile, any interim injunction has been granted on the foot of revoked patent certificate and the contemporaneous design certificate, there could not be any passing off and the ultimate sufferer would be the 2nd defendant, whose loss would be immeasurable and irreparable. The silence of the applicant all this days from the date of filing of the suit would establish that there not be any prejudice likely to be caused to him in the event of no granting of any injunction. Since the suit itself can be disposed of expeditiously and therefore the balance of convenience is also in favour of the 2nd respondent. He would further submit in his argument that the 2nd respondent is manufacturing its product by using the available commercial machines purchased from one Jailakshmi Industries and therefore, the product can be commercially produced other than the process adopted by the applicant/plaintiff. Therefore, the method adopted by the 2nd respondent cannot be the process adopted by the plaintiff. He would further submit in his argument that even otherwise, the patent issued to the plaintiff was only process patent and the 2nd respondent has not adopted the process of the applicant in producing the products and there cannot be any passing off and if at all it would be a products passing off. When the process adopted by the plaintiff was not followed by the 2nd respondent to manufacture the products of the 2nd defendant which were registered as per Designs Act, there could not be any acts of passing off. He would further submit that when the 2nd defendant has obtained a design certificate and manufactures under its subsequent brand namely 'SAGAR' there could be no deception or confusion for the products of the plaintiff under the name SAS & AZAM. Therefore, there would be no case of product passing off as argued by the learned Senior counsel for the applicant. He would therefore, request the Court to dismiss all the 3 applications.
8. I have given anxious thoughts to the arguments advanced on either side.
9. The applicant / plaintiff has filed the suit against the defendants for the following reliefs:-
"a. A permanent injunction restraining the defendants by themselves, their partners, heirs, their legal representatives, successors-in-business, agents, stockists, distributors assigns, representatives, or any one claiming under them from in any manner infringing the Plaintiff's patent no. 198079 for "Food Grade Laminated Paper, Method and Apparatus For Manufacturing The Laminated Paper" and/or from using the technology/ invention described in the said Patent no.198079 by manufacturing, marketing, selling, offering for sale or exporting artificial laminated banana leaves identical or similar to the plaintiff's artificial laminated banana leaves;
b. A permanent injunction restraining the defendants by themselves, their partners, heirs, legal representatives, successors-in-business, agents, stockists, distributors, assigns, representatives, or any one claiming under them from in any manner infringing the Plaintiff's registered design under No.182931 by manufacture and sale of artificial laminated banana leaf identical or similar to the shape and configuration of plaintiff's artificial laminated banana leaf registered under the designs act;
c. A permanent injunction restraining the defendants by themselves, their partners, heirs, legal representatives, successors-in-business, agents, stockiest, distributors, assigns, representatives, or any one claiming under them from in any manner passing off food grade laminated paper resembling banana leaf/ artificial banana leaves manufactured and sold by them as and for plaintiff's food grade laminated paper resembling banana leaf/ artificial banana leaves by using identical/ or deceptively similar same colour scheme, get up and layout, imitation of plaintiff's trade dress in his unique, distinctive artificial laminated banana leaf or in any other manner whatsoever;
d. For mandatory injunction directing the defendants to surrender for destruction to the plaintiff all materials and implements used for creation of the infringing goods to be forfeited or destroyed as the court deems fit in the facts and circumstances of the case;
e. The defendant be directed to pay to the plaintiff, a sum of rs.10,05,000/- as damages;
f. For costs of the suit"
10. The claim of the plaintiff would be that he had invented and introduced for the first time in India and in the world, after conceiving the idea that the artificial laminated banana leaf can be used as an alternative to the traditional banana leaf obtained from the plantain trees and had applied for the registration of patent and the said patent was granted "Food Grade Laminated Paper Method and Apparatus for Manufacture the Laminated Paper" in Patent No.198079, on 20.01.2006 in the application filed by the plaintiff dated 29.08.2000. The said patent was said to have been renewed every year and it is still valid and subsisting. According to the patent certificate issued in favour of the plaintiff, the plaintiff, as a patent holder, is exclusively entitled to manufacture, sell or distribute or otherwise dealing in the artificial food laminated leaf resembling a banana leaf. The further case of the plaintiff was that he had also obtained a design registration for his artificial laminated banana leaf in various shapes and configurations in Reg.No.182931 dated 18.07.2000 for laminated artificial banana leaf, in Reg.No.183131 dated 04.08.2000 for a circular shaped laminated artificial banana leaf, in Reg.No.183132 dated 04.08.2000 for oval shaped leaf ,and in Reg.No.184037 dated 27.11.2000 for square shaped artificial banana leaf. The further case of the plaintiff was that the plaintiff has also obtained design registrations in Reg.No.184035 dated 27.11.2000 for laminated paper plate in Reg.No.184036 dated 27.11.2000 for laminated paper plate and Reg. No.184038 dated 27.11.2000 for circular laminated artificial leaf. The said designs registration have been found in page Nos.15 to 52 of the typed set produced by the plaintiff. The patent certificate issued has been produced in page Nos.1 to 14 of the typed set of the plaintiff. Therefore, I could understand that the plaintiff has got patent certificate and the design registration certificate in respect of the artificial laminated banana leaf and for other artificial laminated papers in different designs and the plaintiff has become the owner and holder of such patent and designs.
11. However, it was contended by the 2nd defendant that the said patent certificate issued by the registration of patent as produced in page Nos.1 to 14 of the typed set has been revoked by an order passed by the patent authorities on 17.04.2009. The said order is produced in page Nos.157 to 171 of the typed set produced by the 2nd defendant. Therefore, I could see that the said patent certificate issued to the plaintiff in patent No.198079 has been revoked. The learned Senior counsel for the plaintiff would submit that the said order of revocation has been stayed by the appellate board and therefore, it should have been considered that the grant of patent through the patent certificate is still in force and therefore, the claim of the plaintiff is bonafide and be granted. The learned counsel for the 2nd defendant would reply in his argument that whenever a stay order has been passed by the appellate court, it would not vacate the order of the lower court and it would only go to show that the operation alone is stayed. The judgment of the Hon'ble Apex Court reported in 1992 (3) SCC (1) (Shree Chamundi Mopeds Ltd. v. Church of South India Trust Association CSI Sinod Secretariat, Madras) has been cited for that purpose. The relevant passage would be thus:-
" The appeal filed by the appellant-company under section 25 of the act against said order of the board was dismissed by the Appellate Authority by order dated January 7, 1991. As a result of these orders, no proceedings under the act was pending either before the Board or before the Appellate Authority on February 21, 1991, when the Delhi High court passed the interim order staying the operation of the Appellate Authority dated January 7, 1991. The said stay order of the High court cannot have the effect of reviving the proceedings which had been disposed of by the Appellate Authority by its order dated January 7, 1991. While considering the effect of an interim order staying the operation of the order under-challenge, a distinction has to be made between quashing of an order and stay of operation of an order. Quashing of an order results in the restoration of the position as it stood on the date of the passing of the order which has been quashed. The stay of operation of an order does not, however, lead to such a result. It only means that the order which has been stayed would not be operative from the date of the passing of the stay order and it does not mean that the said order has been wiped out from existence."
12. It has been categorically laid down that the stay order granted by the appellate court would not wipe out the order passed by the lower court and its operation alone has been stayed from the date of passing such a stay order. It is also brought to the notice of the Court that the appellate Board had not only passed an order of stay but also commented upon the validity of the certificate which would be contrary to the tenor of the judgment of the Hon'ble Apex Court referred supra and therefore, such stay order cannot give any right over the patent certificate after it was revoked by the issuing authority. When we consider this aspect, I could see that the judgment of the Hon'ble Apex Court referred supra is quite clear that the order of the lower court passed cannot be wiped out but its operation alone could be stayed. Therefore, we cannot see any force in the argument advanced by the learned counsel for the plaintiff that the revocation of the patent certificate is absolutely not in force and the patent certificate is still alive, cannot be sustained. However, the validity of revocation order is subject to the decision to be reached by the appellate Board in the said appeal.
13. Now the relevant question is whether this Court can grant any injunction on the basis of the patent certificate produced by the plaintiff. The patentee is having an exclusive right and is entitled to protect his right in respect of any product patented in India as per Section 48 of the Act. In case, no consent has been obtained from the patentee, by any person for making, using, offering for selling or importing such product, the patentee is entitled to proceed against the person who infringed the right of the patentee before the District Court for necessary relief. The said relief can be granted by the said court after enquiring the case on the basis of the grant of patent certificate. As far as the case is concerned whether such patent certificate is in vogue or not is the important aspect to reach a finding.
14. It was brought to the notice of the Court that in earlier occasions, the plaintiff herein had filed several suits against the 3rd parties on the basis of the patent certificate issued in page Nos.1 to 14 of the typed set of the plaintiff and order of injunction were obtained and the same have been produced in the typed set of the plaintiff in page Nos.107 to 127. A judgment passed by this Court in C.S.No.268 of 2001 dated 30.10.2001 and the order passed by this Court in O.A.No.144 of 2005 in Tr.C.S.No.103 of 2005 dated 17.02.2005 are also produced in page Nos.128 and 129. A judgment made in O.A.Nos.494 and 495 of 2006 in C.S.No.448 of 2006 dated 10.08.2006 is produced in page Nos.130 to 154 and also a reported judgment of this Court made in MIPR 2008(3) 0431 passed in O.S.A.No.263 and 283 of 2006 dated 30.06.2008 has been cited in support of the plaintiff's case. On a perusal of those judgments and the judgment of the Hon'ble Division Bench of this Court, I could see that the grant of temporary injunction were ordered, while the patent certificate was in force. However, the grant of patent was vehementally opposed by those defendants as not sustainable. This Court had answered for the said argument that the patent issuing authority is the competent Forum to decide about revocation of patent and as long as the patent is not revoked, the certificate of patent issued by the patent issuing authority will be valid and a temporary injunction was accordingly granted in favour of the plaintiff in those suits. Now, the trend of the case has been entirely changed because of the revocation of the patent certificate issued in favour of the plaintiff, the patentee. In all those suits as well as in this suit, the same patent certificate is produced which would show that the plaintiff was in possession of patent certificate. No doubt, the said patent certificate is revoked and the appeal is preferred against the revocation order and it is pending before appellate Board and order of stay has been passed towards operation of the revocation order. In the said circumstances, I could see that the revocation order has not been wiped out as per the dictum laid down by the Hon'ble Apex Court and therefore, the patent certificate cannot be relied upon for the purpose of granting temporary injunction in favour of the applicant, in this case.
15. However, it has been shown to Court that the plaintiff was provided with design certificate on various registration Numbers in respect of the artificial laminated banana leaf in various shapes and in respect of laminated paper plates as detailed in the affidavit of the applicant. As seen from the affidavit, I find 7 registration numbers for registering the designs of the artificial laminated banana leaf in various shapes and also the artificial paper plates and it was not disputed by the defendant. The only plea put forth by the 2nd defendant was that the husband of the 2nd defendant namely Hazarath Ayya has also got design registration in respect of artificial banana leaf and therefore, the plaintiff as a design certificate' holder, cannot sue the 2nd defendant who is also having design certificate for the artificial laminated banana leaf in the name of her husband. The design certificate produced by the 2nd defendant in the typed set in page Nos.147 to 156 would be akin to the design produced in page Nos.15 to 20 of the typed set produced by the plaintiff in registration certificate No.182931 dated 18.07.2000. The design registration obtained by the 2nd defendant is in no way connected with the design certificate obtained by the plaintiff in registration Nos.183131, 183132, 184035, 184036, 184037 and 184038 and produced in the typed set of the plaintiffs in page Nos.21 to 52. Therefore, even the 2nd defendant's husband has given permission to use the same by her and the 2nd defendant's husband is taking over the business of the 2nd defendant and is using the design given in his favour in the registration certificate bearing design No.216857 dated 24.06.2008, the plaintiff is entitled to take action against the infringement of the other designs, except the design in registration certificates bearing No.182931 of the plaintiff.
16. The learned counsel for the plaintiff had also stressed in his argument that when there are two identical designs, one obtained after the design certificate of the plaintiff, the subsequent design certificate issued for the same design, can be prevented by injunction by an order of Court. For that, the judgment of Delhi High Court reported in 1997 PTC (15) (DEL) (Alert India v. Naveen Plastics) has been produced. The relevant portion would run thus:-
"27. On the other hand, learned counsel for the defendant relies on Tobu Enterprises Pvt.Ltd. (1983 PTC 359). In that case plaintiff had filed a suit for injunction alleging infringement of his design registered on 16.8.1976. Defendant pleaded that they had got their design in respect of the same goods registered on 6.10.1982 and contested the suit and the application for temporary injunction. It was also pleaded that their goods had no resemblance with those of the plaintiff. Learned Single Judge of this court assuming for the sake of arguments that the goods of the defendant resembled the hones manufactured by the plaintiff, after referring to the provisions of sections 53, 51A, and 47 of the act and also sections 27 and 28 of the Trade and Merchandise Act,1958 in Paras 10 and 11 laid down that -
10. It is true that Section 47 of the act does create a substantive right in favour of a person whose design is registered. But that provision does not say that a registration earlier in time will prevail against a later registration. Had there been such an intention of the legislature it could have been expressed in the said terms.
11. Then the question arises as to what is the remedy, if rights accrued on account of registration of design, are infringed. That remedy is provided in section 53 of the Act...xxxxxxxxxxx firstly Section 47 does not create any right of preference in favour of an earlier registration and section 53 does not provide for any remedy of injunction etc. With a view to enforce prevailing of earlier registration as against later one. The registration of a design can, therefore, prevail and is to be protected against infringement only when the opposite party does not possess any registration. The obvious result is that if each of the parties is having registration of design, each of them can use that design for its products.
28. With great respect, the learned Judge in that case has not considered the object, purpose and policy behind enacting the designs Act, nor has he considered the question, which is germane, as to who is the 'proprietor' of a new or original design and it is he who is lawfully entitled to the registration of the design and consequently to claim protection against piracy. Design registered later would not be entitled to protection against first or prior registered proprietor of design." [Emphasis supplied]
17. Yet another judgment of Delhi High Court reported in 2008 (37) PTC 288 (DEL) (Vikas Jain v. Aftab Ahmad and others) has been cited for the same purpose. The relevant portion would also run thus:-
"13. Furthermore, not much turns on the factum of the defendant being the registered proprietor of the design under the registration No.198624. Firstly, the registration of the plaintiff's design is prior in time. The plaintiff's design was registered on 23.02.2004, whereas the defendants' design was registered on 01.03.2005. The fact that the plaintiff's registration is prior in time to that of the defendants' would entitle the plaintiff to prevent its infringement by the defendants. In Alert India (supra) a learned single Judge of this court held that a design registered later would not be entitled to protection against the first or prior registered proprietor of a design."
18. The learned counsel for the 2nd defendant has cited a judgment reported in (1995)1 AD (Delhi) 110 (Indo Asahi Glass co.Ltd. v. Jai Mala Roller Glass Ltd. and another) for the principle that the subsequent design issued cannot be restrained by an order of injunction. The relevant passage would run as follows:-
"14. Reference has been made by leavened Counsel for the defendant to M/s. Wimco Ltd. v. M/s. Meena Match Industries MANU/DE/0255/1983: AIR1983Delhi537, where an observation has been made that there is a publication if the design has been disclosed to the public or the public has been put in possession of the design. This disclosure even to one person is sufficient to constitute publication.
.....
24. The learned Counsel for the defendant has also cited M/s. Tobu Enterprises Private Ltd. v. M/s Megha Enterprises, 1983 PTC 359. In the said case, the two designs were found to be similar in nature and both designs had been registered. The court held that Section 47 of the Designs Act does create substantive right in favour of the person whose design is registered but merely earlier registration of a design would not prevail against a latter registration. The court held that if rights accrued on account of registration of design are infringed, the remedy is provided under section 53 of the Designs Act, but that section does not in any way give preference to the earlier registration as against the latter one. Therefore, the net result is that firstly Section 41 does not create any right of preference in favour of earlier registration and Section 53 does not provide for any remedy of injunction, etc. with a view to enforce prevailing of earlier registration as against the latter ones. So it was held that registration of design ca, Therefore, prevail and is to be protected against the infringement only when the opposite party does not possess any registration. So, it was laid down that obvious result is that if each of the party is having registration of design, each of them can use that design for its products."
19. When we consider the principles laid down by the Delhi High Court, contrary views expressed in those judgments which are yet to be settled. However, I could see that Sections 41 and 54 of the old Design Act have been discussed and found that there was no right of preference given for the earlier registration and no right of remedy of injunction has been given to the registered design holders. Further it has been considered that the design holders are equally to be protected and therefore, the subsequent design holder should not suffer with the injunction. However, in the latest judgment pronounced by the Delhi High Court in 2008 (37) PTC 288 (DEL) (Vikas Jain v. Aftab Ahmad and others), on the provisions of Section 22 of the Designs Act, has been considered and all the previous judgments running contrary were also discussed and it was held that a design registered in prior point of time would entitle the plaintiff to prevent its infringement by the defendants. Therefore, the view taken by the latest decision of the Delhi High Court, after considering the provisions of Section 22 of the present Designs Act is applicable to the present case. Moreover, the design certificate was not obtained by the 2nd defendant in her name nor any permission letter has been produced as obtained by the 2nd defendant from her husband for using the design by her. Therefore, the arguments advanced by the learned counsel for the respondent that the subsequent registration of the design in the name of 2nd defendant's husband Hazarath Ayya produced in page No.147 of the typed set of the 2nd defendant would dis-entitle the plaintiff from getting any interim injunction, cannot be sustained. Therefore, I could see that the plaintiff even though is not entitled to get interim injunction on the basis of the patent certificate issued in his favour, can protect his right accrued under the design certificate issued by the competent authority under the provisions of Section 22 of the Designs Act. The prima facie case is therefore, seen in favour of the applicant.
20. At this juncture, it is further contended that the stray cause of action stated to have taken place within the original jurisdiction of this Court would not give any jurisdiction for entertaining the suit has to be considered. No doubt, the plaintiff had purchased the artificial laminated banana leaf within the jurisdiction of this Court and the invoice has been produced. In clause-12 of the Letters Patent, it has not been stated that where the bundle of causes of action has taken place it would be sufficient to seek the leave of this Court, if, a part of cause of action has arisen within the jurisdiction of original jurisdiction of this Court. Therefore, the arguments advanced by the learned counsel for the 2nd respondent that this Court has no jurisdiction to entertain the suit and therefore, the injunction applications have to be dismissed, cannot be accepted. Moreover, the said objection should have been raised at the earliest point of time but it has been raised after filing counter and also after putting forth the defence in this case. It is highly belated and it is not possible to take up the jurisdiction matter and to dispose the suit after the contest at the interlocutory stage. That would be possible only after filing of the written statement and after framing preliminary issues in this regard or if all the issues were framed including the jurisdiction issues, it may be disposed of along with other issues on the basis of the evidence adduced therein. Therefore, I could see that the suit cannot be disposed of at this stage by saying that this Court has no jurisdiction.
21. As regards the grant of interim injunction, the plaintiff is said to have used the design for the purpose of his business within this jurisdiction and the 2nd defendant has infringed the said right of the plaintiff registered under the Designs Act by producing the same design of artificial laminated banana leaf and if permitted, it would certainly, cause loss to the plaintiff. Apart from that, the said loss would not be measurable and it may lead to irreparable loss. The loss likely to have happened to the plaintiff by virtue of the infringement of the design certificate issued in favour of the plaintiff are immeasurable and irreparable. There would not be any prejudice to the defendant if injunction is granted against her. On the other hand, if no injunction is granted the plaintiff would be put to irreparable loss. Therefore, I could see that the balance of convenience is only in favour of the applicant/plaintiff. If the goods produced by the 2nd defendant are being passed off under the same designs where the plaintiff has got design certificates in his favour, it would certainly cause much prejudice to the plaintiff as aforesaid.
22. Therefore, I am of the considered view that the applicant/plaintiff is entitled for interim injunction restraining the respondents from in any manner infringing the plaintiff's registered design under registration No.182931 by manufacture and sale of artificial laminated banana leaf identical or similar to the shape and configuration of the plaintiff's artificial laminated banana leaf under the Designs Act and also for an interim injunction restraining the defendants from in any manner passing off food grade laminated paper resembling artificial banana leaf manufactured and sold by them as and for the applicant's food grade laminated paper resembling banana leaf or artificial banana leaf by using identical or deceptively similar with same colour, get up and layout an imitation of dress in any other manner whatsoever, pending disposal of the suit. The claim for restraining the respondents from in any way infringing the registered patent granted under Registration Patent Certificate No.198079 against the respondents/defendants, is not grantable.
23. In fine, the application in O.A.No.304 of 2009 is dismissed and the applications in O.A.Nos.305 and 306 are allowed. No costs.
06.07.2012 Index: Yes / No Internet : Yes / No ssn V.PERIYA KARUPPIAH, J., ssn PRE-DELIVERY ORDER MADE IN O.A.Nos.304 to 306 of 2009 in C.S.No.282 of 2009 06.07.2012