Delhi High Court
Hindustan Unilever Limited vs Eureka Forbes Limited & Anr on 19 February, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 19th February, 2019
+ CS(COMM) No.236/2018
HINDUSTAN UNILEVER LIMITED .... Plaintiff
Through: Mr. Darpan Wadhwa, Sr. Adv.
with Mr. Pallav Pandey, Mr.
Pragalbh Bhardwaj and Mr.
Toyesh Tiwari, Advs.
versus
EUREKA FORBES LIMITED & ANR .... Defendants
Through: Mr. S. M. Vivekanandh, Adv.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The following issue framed on 30th September, 2008 and ordered
to be treated as preliminary issue is for adjudication:-
"1. Whether a suit for permanent injunction is
maintainable by one registered patentee against
another registered patentee under the provisions of
Patents Act, 1970? OPD"
2. The counsel for the defendants and the senior counsel for the
plaintiff have been heard.
3. The plaintiff has sued the defendants for injunction restraining
infringement of Patent No. IN 198316 of the plaintiff in relation to a
water purifier and for ancillary reliefs of delivery, rendition of accounts
and recovery of damages. The plaintiff, in the plaint itself has pleaded
that the defendants had also applied for and been granted Patent No. IN
195421 for its water purifier which is claimed by the plaintiff to be in
CS(COMM) No.236/2018 Page 1 of 9
infringement of the plaintiff‟s patent. The plaintiff, in this context has
also pleaded that the plaintiff was deprived of an opportunity to oppose
the grant of said patent to the defendants because of the late publication
of the Patent Journal and though the plaintiff, within the prescribed time
from the publication of the Patent Journal preferred a pre-grant
opposition qua the patent applied for by the defendant but was informed
that the defendant had already been granted the patent and to then avail
of the post grant opposition which was then availed of by the plaintiff.
4. The suit came up before this Court first on 3 rd May, 2006 when
though it was entertained and summons thereof issued but no ex parte
injunction as sought granted.
5. The defendants applied under Order VII Rule 11 of the Code of
Civil Procedure, 1908 (CPC) for rejection of the plaint, inter alia on the
ground that no suit for infringement of the patent lies against a registered
patentee.
6. The aforesaid contention of the defendants was not accepted vide
a detailed judgment dated 10th August, 2007 of dismissal of the
application of the defendant under Order VII Rule 11 of the CPC. It was
inter alia reasoned, (i) that Section 48 of the Patents Act, 1970 grants
exclusive right to a patentee to prevent third parties who do not have his
consent, from undertaking the making, using, offering for sale, selling
etc. the patented product in India; there is no exclusive right in the
patentee to make use of, offer for sale, sell or otherwise exploit the
patented product in India; the right of a patentee is thus an "Exclusionary
Right"; (ii) that Section 107 of the Act entitles a defendant in a suit for
CS(COMM) No.236/2018 Page 2 of 9
infringement of patent to defend the suit on all grounds as are available
under Section 64 of the Act for revocation of the patent; a patent can be
revoked if it is in respect of an invention which is the subject matter of
an earlier valid patent; this means that even when a subsequent patentee
brings an action of infringement against an earlier patent holder, the
earlier patent holder can contend as a ground of defence that it has a
valid patent of earlier priority date; this can only be his defence on merits
but not a ground to seek rejection of the plaint at the threshold, on the
basis that no suit is maintainable for infringement of patent against
another patentee; (iii) Section 107A of the Act also, while enumerating
the acts that do not constitute infringement of a valid patent, does not
provide that use of a patent by a patentee does not constitute
infringement of patent; (iv) Section 108 makes available to a plaintiff in
a suit for infringement of patent, the relief of injunction restraining the
defendant; (v) if the argument of the defendant were to be accepted, it
would mean that the plaintiff should first pursue its opposition to the
patent of the defendant and only after the plaintiff has succeeded in such
proceedings finally, would the plaintiff be entitled to seek the relief of
injunction; such an interpretation would lead to absurd results inasmuch
as by the time the defendant‟s patent is revoked/cancelled, the plaintiff‟s
suit may itself become barred by time; it also means that in the
interregnum, the plaintiff should continue to suffer without any remedy;
and, (vi) Tobu Enterprises Vs. Megha Enterprises 1983 PTC 359 and
SS Products of India Vs. Star Class (2001) 21 PTC 835 (Delhi) relating
to the Designs Act 1911 holding a suit for infringement by one registered
holder of a design against another registered holder of a design to be not
CS(COMM) No.236/2018 Page 3 of 9
maintainable and relied upon by the counsel for the defendants, were not
applicable because under the Designs Act, cancellation proceedings were
maintainable before the Court, unlike the Patents Act where cancellation
proceedings have to be before the Intellectual Property Appellate Board
or by way of a Counter Claim by a defendant in a suit filed against the
defendant; moreover rights of a patentee are governed by the Patents Act
and not by the Designs Act.
7. The defendants carried the order of dismissal of its application
under Order VII Rule 11 of the CPC in appeal before the Division Bench
by way of FAO(OS) No.367/2007. The said appeal was dismissed
holding that at the stage of Order VII Rule 11 of the CPC, the averments
in the plaint are to be believed to be correct and the question of law, as
had arisen, could not be decided. The question of law was thus left open.
8. The defendant carried the matter to the Supreme Court by way of
SLP(C) No.5528/2008 which was also dismissed in limine on 14th
March, 2008 observing, that the question was required to be decided as a
preliminary issue, uninfluenced by the observations of the judgment
dated 10th August, 2007.
9. Thereafter as aforesaid issues were framed on 30th September,
2008 and issue aforesaid ordered to be treated as a preliminary issue and
which has been languishing decision now for the last ten years.
10. On the last date of hearing, the senior counsel for the plaintiff
drew attention to Mohan Lal, Proprietor of Mourya Industries Vs.
Sona Paint & Hardwares AIR 2013 Del 143 in relation to the Designs
Act, where the Full Bench has held that a suit for infringement is
CS(COMM) No.236/2018 Page 4 of 9
maintainable by one holder of a registered design against another and
contended that the preliminary issue thus has to be decided in favour of
the plaintiff.
11. The counsels have been heard.
12. The counsel for the defendants has argued, (i) that while it is open
to a defendant in a suit for relief on the ground of infringement of a
patent to, in his defence or by way of Counter Claim, challenge the
validity of the patent of the plaintiff, it is not open to a plaintiff to
institute a suit in this Court for challenging the validity of the patent of
the defendant or for cancellation thereof and the only remedy of the
plaintiff is before the Registrar of Patents; (ii) that grant of injunction is a
equitable relief and no injunction in equity jurisdiction can be granted in
contravention of the statutory rights of the defendant under Section 48 of
the Patents Act; (iii) that what has been held in Mohan Lal qua Designs
Act cannot be applied to Patents Act inasmuch as the scheme of the two
Acts is entirely different; while before grant of patent, a publication is
required to be made and opportunity given to oppose the grant of patent,
no such procedure is prescribed before the grant of registration of a
design; attention is invited to paras 17, 17.1 & 18 of Mohan Lal; and,
(iv) there is no presumption of validity of a patent unlike that of a
registered trade mark.
13. On enquiry as to grant of patent in whose favour is earlier in point
of time, it is stated that though the plaintiff applied earlier than the
application of the defendants but the grant in favour of the defendants is
earlier in point of time to the grant in favour of the plaintiff. It is
CS(COMM) No.236/2018 Page 5 of 9
however stated that per Section 45 of the Patents Act, the grant in favour
of the plaintiff, though later in point of time to the grant in favour of the
defendant, would relate back to the date of application and thus the grant
of patent in favour of the plaintiff is earlier in point of time.
14. The patent of the plaintiff is informed to be valid till June, 2022
and the patent of the defendants is stated to be valid till 29 th March,
2024.
15. On further enquiry as to what is the defence of the defendants on
merits, it is stated that the defendants claim their process to be different
from that of the plaintiff.
16. Per contra the senior counsel for the plaintiff has argued, (i) that
his arguments remain largely the same which prevailed with this Court in
dismissal of the application of the defendants under Order VII Rule 11 of
the CPC on the same grounds; (ii) that while the defendants themselves
were earlier relying upon the judgments under the Designs Act holding a
suit for infringement to be not maintainable by one holder of a registered
design against another, contending the provisions of the two statutes to
be pari materia, the defendants interestingly now are contending
otherwise on the larger Bench, in relation to the Designs Act, holding a
suit for infringement to be maintainable; (iii) that the language of Section
48 of the Patents Act defining the rights of the patentees is same as the
language of Section 22 of Designs Act, with differences which are not
material; (iv) that Section 48 does not restrict the exclusionary rights
conferred on a patentee only to those not having a patent and applies to
those holding a patent also; (v) similarly Section 107A of the Patents
CS(COMM) No.236/2018 Page 6 of 9
Act, while defining what does not constitute infringement, does not
include use by another patentee as would have been the case had the
legislative intent been that use by a holder of another patent does not
constitute infringement; (vi) wherever the legislature desired to not
confer the right of infringement against those who also held a
registration, it has provided so, as in the case of Section 28(3) of the
Trade Marks Act, 1999; and, (vii) that Tobo Enterprises supra has been
expressly overruled in Mohan Lal.
17. The senior counsel for the plaintiff, on enquiry as to the provisions
relating to priority date, has drawn attention to Section 11 read with
Section 45 of the Patents Act.
18. The counsel for the defendants, in rejoinder has drawn attention to
Sections 22(4) & (5) of the Designs Act, to contend that there is no
equivalent provision in the Patents Act.
19. I have enquired from the counsel for the defendants, whether not,
to hold that a patentee cannot maintain a suit for infringement against
another patentee would lead to deprivation of such a patentee from the
reliefs claimed, without first obtaining the revocation of the patent of the
defendants, amounting to a total defeat of rights of such patentee
considering the life of the patent to be limited to maximum twenty years.
20. The counsel for the defendants states that though it will be so but
it is a legislative lacuna which is to be filled up by the legislature and not
by the Courts.
21. I am unable to agree. Even if it is a case of the legislative lacuna,
though in my opinion it is not, it is the duty of the Courts to fill up the
CS(COMM) No.236/2018 Page 7 of 9
said lacuna by interpreting the provisions of the statute purposively and
not to allow the right sought to be conferred by the enactment to be
defeated and/or rendered unenforceable.
22. Otherwise, without being influenced in any manner whatsoever by
the reasoning given in the judgment dated 10 th August, 2007 of a
Coordinate Bench of this Court which has since been set aside else, I am
entirely in agreement therewith and do not wish to add to the length of
this judgment by indulging in repetition. It is unfortunate that in spite of
the purely legal question subject matter of the preliminary issue
aforesaid being decided nearly twelve years back while rejecting the
application under Order VII Rule 11 CPC, owing to technicalities of
procedure, no progress has been made in the suit in the past nearly
twelve years. The counsel of the defendants, even today has been unable
to make a dent on the reasoning which prevailed for dismissal of the
application under Order VII Rule 11 of CPC. The only thing which has
changed in the last twelve years is the view of this Court qua
maintainability of a suit for infringement of a design against another
registrant. Though there is no estoppel against law but one cannot help
but notice the change in stand of the counsel for the defendants.While
earlier it was the contention that the Patents Act is pari materia to the
Designs Act, now it is contended that the schemes of two are different.
The said change itself reflects the fallacy and fickleness of the said
argument.
23. No merit is found in the other contentions of the counsel for
defendants. No provision in bar of a suit for infringement against
CS(COMM) No.236/2018 Page 8 of 9
another patentee has been cited. In the absence of such a bar, a patentee
is certainly entitled to maintain a suit to stop another from infringement
of the patent, even if such another has also obtained registration.
Without any such bar being shown, the suit for injunction cannot be said
to be a contravention of any statutory rules. Equity rather rests with the
plaintiff. It is not disputed that the patent of the defendants got
registered without opposition from the plaintiff owing to late publication
of the Patent Journal. The same is rather found to be a violation of the
statute and statutory Rules and should have been corrected
administratively also, by undoing the registration. Even though there is
no presumption of validity of patent but the same is not relevant to
maintainability of the suit for infringement. The said factor is irrelevant
to, whether the defendant itself is a patentee or otherwise. As far as
reference to availability of opportunity under the Patents Act to oppose
grant is concerned, as aforesaid, it is not controverted that the plaintiff
has been deprived thereof.
24. The preliminary issue is thus decided in favour of the plaintiff and
against the defendants.
RAJIV SAHAI ENDLAW, J.
FEBRUARY 19, 2019 „pp‟ (Corrected and released on 6th March,2019) CS(COMM) No.236/2018 Page 9 of 9