JUDGMENT 1. Messrs. May & Baker Limited who are the Plaintiffs in this case made the applications in the United Kingdom for Letters Patents, being Nos. 16319 and 26963, dated respectively the 3rd of June and the 15th of September, 1938, in respect of alleged new inventions for the preparation of a drug called "Sulphathiazole." Two reciprocity applications for Indian patents were made here in 1939. The numbers of those applications are 26513 and 26850 in respect of the same inventions. Ultimately the applications made in the United Kingdom were withdrawn. The applications made here were pursued and on the basis of the said two applications two Letters Patents were sealed bearing the numbers of the applications of the 17th of January and the 17th of April, 1940, respectively. It is admitted that Messrs. May & Baker Limited did not manufacture the drug in India; but the drug was manufactured by them in England in accordance with the processes covered by the two Indian Letters Patents. The evidence also establishes the fact that since the year 1942 the drug was imported by them from England into India and sold here. The details of the imports into India from the year 1941 to the year 1945 are given in the affidavit affirmed by William Prederick De Penning on the 2nd July, 1946. In March, 1946, Boots Pure Drug Co. (India) Ltd. the Appellants before us, imported for the first time fourteen cases of Sulphathiazole tablets. Later on, either at the end of March, 1946, or, may be, the beginning of April, 1946, they imported into India fourteen cases of Sulphathiazole powder. After some correspondence, Messrs. May and Baker Limited filed a suit in the Original Side of this Court on the 21st of May, 1946, against Messrs. Boots Pure Drug Co. (India) Ltd., for injunction, for accounts and other reliefs. The plaint proceeded on the footing that the Defendants had infringed their patent rights under the aforesaid two Indian Letters Patents. On the same day they filed an application for interim injunction. The notice of motion was served on the Defendants on the following day. The affidavits in opposition were filed in June, 1946, and the affidavits in reply in the beginning of July of that year. Our learned brother Mr. Justice Clough granted the temporary injunction, and this appeal is against that order. The notice of motion was served on the Defendants on the following day. The affidavits in opposition were filed in June, 1946, and the affidavits in reply in the beginning of July of that year. Our learned brother Mr. Justice Clough granted the temporary injunction, and this appeal is against that order. In order to get an interim injunction it is necessary that the Plaintiffs should prove (1) they have a prima facie right, that is to say, lead such evidence as would lead the Court to come to the conclusion that the patents are prima facie valid patents; (2) they must prove by prima facie evidence that there is an infringement on the part of the Defendants and (3) that the balance of convenience is in their favour. Mr. Justice Clough held that the Plaintiffs have satisfied those three conditions. It is admitted that the two Indian Patents became effective from the year 1939. In the affidavits in opposition it is stated that the patents are invalid in as much as there is absence of novelty. It is a rule of practice that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for the refusal of an interim injunction, but if the patent is sufficiently old and had been worked the Court would for the purposes of considering an application for temporary injunction, presume the patent to be a valid one. The cases show that if the patent is more than six years old and that there has been actual user, it would be safe for the Court to proceed upon the last mentioned presumption. The two Letters Patents in this case became effective since 1939 and we think that there is evidence of actual user, for the drug was manufactured according to the patented process ever since the year 1941, though the place of manufacture was not India but England. In this state of the evidence we are not prepared to dissent, from the first finding of Mr. Justice Clough, namely that the Plaintiff's have established in a prima facie manner their right. 2. The second question, namely, as to whether the Plaintiffs have established a prima face case of infringement on the part of the Defendants is, however, a difficult question. Justice Clough, namely that the Plaintiff's have established in a prima facie manner their right. 2. The second question, namely, as to whether the Plaintiffs have established a prima face case of infringement on the part of the Defendants is, however, a difficult question. After considering the affidavit evidence on the point we are not prepared to agree with the view which Mr. Justice Clough has taken. The application for injunction was supported by the affidavit of an eminent Indian scientist, namely, Dr. Prafulla Chandra Mitter. Paragraph 13 of his affidavit is as follows :-- As far as I know there is no-process or way of making or manufacturing Sulphathiazole known to science other than by using the processes disclosed and claimed in the aforesaid patents. 3. If this statement be correct it would indicate, though in an indirect way, that the substance imported by the Defendant's in India had been manufactured by the Plaintiffs' patented processes. We realise that in such a case the only way in which the Plaintiffs could have established an infringement of their patent rights would have been by the indirect proof which is sought to be given by the use of the said affidavit of Dr. Mitter. The Defendants on the other hand filed the affidavit of Dr. Joseph Marshall. He is also quite competent to speak on the subject. In his affidavit he says that there are other processes known to science by which that organic compound, namely, Sulphathiazole is being manufactured. He goes into some details and mentions. "U.S. Patent No. 2332906 Foldi et nal in example 7." It further appears that the Defendant Company as also Messrs. Boots Pure Drug Co. Ltd., Nottingham, have applied for patents for processes for the manufacture of Sulphathiazole both in the United Kingdom and in India. Those applications had been made in the year 1942 and they are still pending, in view of the fact that the Plaintiffs May and Baker Limited, have put in objections before the patent authorities. An affidavit sworn to by Dr. Prafulla Chandra Mitter on the 2nd of July, 1946, has been put in by way of reply to the affidavit of Dr. Joseph Marshall. In that affidavit Dr. Mitter states that the process which is the subject-matter of the United States Letters Patent mentioned in the affidavit of Dr. An affidavit sworn to by Dr. Prafulla Chandra Mitter on the 2nd of July, 1946, has been put in by way of reply to the affidavit of Dr. Joseph Marshall. In that affidavit Dr. Mitter states that the process which is the subject-matter of the United States Letters Patent mentioned in the affidavit of Dr. Joseph Marshall is in substance the process mentioned in the Indian Letters Patent on the basis of which the Plaintiffs have brought their suit. Specifications of the different processes, namely, the processes which have been patented in India and the processes which have been patented in the United States of America have also been put in. The matter is of a highly technical nature and Mr. Justice Clough felt the difficulty of deciding the point raised in the two affidavits of Dr. Mitter and the affidavit in opposition of Dr. Marshall at this stage of the suit. We feel the same difficulty in deciding that point also, for the purposes of considering the application for temporary injunction. 4. This being the position it is impossible to come to the conclusion as to whether the Plaintiffs have by means of those affidavits been able to establish in a prima facie way that the Defendants have infringed their patent rights. This is also the view indicated by our learned brother Mr. Justice Clough. Mr. Justice Clough held that there was, however, an admission by the Defendants to the effect that they had infringed the patent rights of the plaintiffs contained in the letter which Mr. Poole, acting on behalf of Boots Pure Drug Co., Ltd., wrote to Messrs. May and Baker, Limited on the 22nd of March, 1946. That letter is annexure "C" to the application for injunction and has been printed at page 53 of the record. We are to see if Mr. Justice Clough is right in saying that this letter contains the aforesaid admission. This letter was written at a time when the first consignment of fourteen cases of the tablets which had arrived in India by S.S. "Empire Cheer" was lying in the Customs office at Bombay. The letter is headed "Merchandise Marks Act" "Trade Mark Infringement of 14 Cases Sulphathiazole ex S.S. Empire Cheer of 1945-1946". This letter was written at a time when the first consignment of fourteen cases of the tablets which had arrived in India by S.S. "Empire Cheer" was lying in the Customs office at Bombay. The letter is headed "Merchandise Marks Act" "Trade Mark Infringement of 14 Cases Sulphathiazole ex S.S. Empire Cheer of 1945-1946". It runs as follows:-- With reference to the 14 cases of Sulphathiazole sent by our Head Office in the U.K. and which arrived in Bombay recently ex the S.S. 'Empire Cheer'. As we understand that the importation of Sulphathiazole by us would constitute an infringement of Messrs. May & Baker Ltd., Dagenham, Essex, Indian Patents Nos. 26513, 27825 and 26850 in order to avoid demurrage we shall be grateful if you will kindly allow us to clear the 14 cases in question. In the event of your agreeing to our suggestion, we hereby undertake that we will not dispose of, sell, wholly or in part, any of the Sulphathiazole Tablets contained in the above-mentioned 14 cases whose marks and numbers are-- Boots Nos. 427/28 Bombay 430/41 until such time as an agreement has been reached between us as to their disposal. 5. It is quite clear to us that the letter was written as the Custom authorities had refused to release the goods on the ground that there was infringement of the Merchandise Marks Act and the Trade Marks Act because that is the heading of the letter. Mr. Poole as agent of Messrs. Boots Pure Drug & Co. Ltd., must have got the notice of the detention by the Customs authorities from the Customs authorities. It is also quite clear that on that information he must have got in touch with the Bombay Office of Messrs. May & Baker before writing this letter. That conclusion we make from the fact that the numbers of the Indian Patents are mentioned in this letter. The language used "as we understand etc.," would not imply an admission by Mr. Poole that the goods which had arrived by the S.S. "Empire Cheer" were in fact manufactured by the process patented by the Plaintiffs in India. The last portion of the letter, namely that the goods would not be sold until such time as an agreement has been reached between the two companies would be inconsistent with the case of admission. Poole that the goods which had arrived by the S.S. "Empire Cheer" were in fact manufactured by the process patented by the Plaintiffs in India. The last portion of the letter, namely that the goods would not be sold until such time as an agreement has been reached between the two companies would be inconsistent with the case of admission. That sentence indicates that there were differences at the time and it was proposed to settle those differences either in favour of Messrs. May & Baker or in favour of Messrs. Boots Pure Drug Co. Ltd., through negotiations. For these reasons we can not agree with our learned brother Mr. Justice Clough in coming to the conclusion that the said letter contains an admission by the Defendants that they had by importing these fourteen cases of tablets infringed the patent rights of the Plaintiffs. 6. In paragraph 8 of their application the Plaintiffs give the particulars of the breaches committed by the Defendants in the following manner: (a) In March, 1946, the Defendant imported into British India by S.S. "Empire Cheer" commercial quantities of Sulphathiazole tablets not of the Plaintiffs' manufacture and that those tablets had been so manufactured as to infringe the claiming clauses 1 to 7 of the Plaintiffs' aforesaid two Indian letters patents. 7. In sub-paragraph (b) of the same paragraph they deal with the Sulphathiazole powder imported by the S.S. "City of Chester" in the same manner. 8. In paragraph 9 of the affidavit in opposition the allegations made in paragraph 8 of the petition are denied. The denial is the denial of the statement made in paragraph 8 of the petition to the effect that the tablets and the powder imported by the Defendants "had been so manufactured as to infringe the claiming clauses 1, 2, 3, 4, 5, 6 and 7 of the Plaintiffs' two Indian letters patents." We think that this denial is quite sufficient for the purposes of throwing the burden of proof on the Plaintiffs to establish that the Defendants had infringed their patent rights. We have already stated that in view of the affidavit of. Dr. Joseph Marshall the Plaintiffs have not satisfied us by indirect evidence that the goods imported by the Defendants had been manufactured by the Plaintiffs' patented processes, and we have already held that we can not construe the latter of Mr. We have already stated that in view of the affidavit of. Dr. Joseph Marshall the Plaintiffs have not satisfied us by indirect evidence that the goods imported by the Defendants had been manufactured by the Plaintiffs' patented processes, and we have already held that we can not construe the latter of Mr. Poole dated the 22nd of March, 1946, to contain an admission of the nature suggested by the Plaintiffs. 9. The learned Advocate-General has contended that even if it can not be said that the said letter contains an admission on the part of the Defendants, the correspondence between the parties coupled with the vagueness of the affidavits in opposition would support a finding that the Plaintiffs have made out a prima facie case of infringement. The substance of that correspondence is this that Mr. Poole in his letter dated the 22nd of March, 1946, written to the Bombay Office of Messrs. May & Baker, gave an undertaking not to sell the fourteen cases of tablets till an understanding had been reached between the two companies. This letter reached Messrs. May & Baker Ltd., on the same date and they took prompt steps with the Customs authorities by asking the latter to allow the Defendants to clear the goods. This communication they made to the Customs authorities was on the same date, namely, the 22nd of March, 1946, the date on which Mr. Poole wrote that letter. It further appears that immediately on getting that letter Messrs. May & Baker Ltd., sent a cable to England and got instructions from England by the next day, namely, the 23rd of March, 1946. On the last-mentioned date a reply was sent to the Defendant Company, The reply was that they, Messsr. May and Baker in India, had received instructions from their English Office and those instructions were that the Defendants would be allowed to sell the goods in the Indian market only if within the period of two months from the date of that letter the latter satisfied Messrs. May & Baker Ltd., that the goods in question had not been manufactured by the patented processes of the Plaintiffs. It appears that Messrs. Boots Pure Drug Co. (India) Ltd., had also been in touch with the English firm Messrs. Boots Pure Drug Co. Ltd., Nottingham, and had received instructions. The letter which Mr. Lumley wrote on behalf of Messrs. May & Baker Ltd., that the goods in question had not been manufactured by the patented processes of the Plaintiffs. It appears that Messrs. Boots Pure Drug Co. (India) Ltd., had also been in touch with the English firm Messrs. Boots Pure Drug Co. Ltd., Nottingham, and had received instructions. The letter which Mr. Lumley wrote on behalf of Messrs. Boots Pure Drug Co. Ltd., to Messrs. May & Baker (India) Ltd., on the 27th of March, 1946, made it quite clear that they considered themselves free to sell the goods without further reference to Messrs. May & Baker. He gave an explanation of the letter which Mr. Poole had written on the 22nd of March, 1946. That explanation, is not convincing but it is quite clear to us that Messrs. Boots Pure Drug Co. Ltd., Nottingham, took a different view of the matter and sent their instructions accordingly. On the 3rd of April, the Plaintiffs wrote a letter to the Defendants in respect of the fourteen cases of the powder which had arrived by the S.S. "City of Chester" and asked for a similar undertaking in regard to sale and disposal that had been given by Mr. Poole in his letter of the 22nd March, in respect of the fourteen cases of tablets which had arrived by the S.S. "Empire Cheer". In the reply which was sent to that letter on the 7th of April following the Defendants maintained the position that they had taken in the letter of the 27th of March. A letter on the same lines was written to the Plaintiffs by the Defendants' solicitor Messrs. Sandersons and Morgans. This is the substance of the correspondence. Comment has been made by the learned Advocate-General to the effect that there is no definite statement in those affidavits, saying that these goods had not been manufactured according to the Plaintiffs' patented processes and there is no disclosure of the fact as to who were the manufacturers or by what process the goods had been manufactured. Comment has been made by the learned Advocate-General to the effect that there is no definite statement in those affidavits, saying that these goods had not been manufactured according to the Plaintiffs' patented processes and there is no disclosure of the fact as to who were the manufacturers or by what process the goods had been manufactured. He says that a general denial of the Plaintiffs' allegation on the point might have been sufficient, but in view of the attitude that the Defendants had taken in their correspondence, the details of which we have already given, it was the incumbent duty on the part of the Defendants to make a disclosure of the name of the manufacturers and to give more definite denial to the allegations made in the petition bearing upon the question of infringement. We do not agree with the contention of the learned Advocate-General. The denial is there. That casts the onus upon the Plaintiffs to prove that there has been an infringement of their patent rights. Mr. Justice Clough held that the onus had been discharged by the admission contained in the letter of Mr. Poole dated the 22nd of March, 1916. But, as we have already stated, we cannot agree with Mr. Justice Clough on his view of the said letter. In this view of the matter it is not for us to consider the balance of convenience. We are of opinion that there is a serious question which can only, be satisfactorily determined at the trial of the suit. 10. It is not a fit case in which an injunction ought to be granted and we think that the ends of justice would be met by taking an undertaking from the Defendants to keep an account of the imports and sales of Sulphathiazole tablets, powders or of the same commodity in whatever shape it is imported in India or sold in the Indian market. Mr. Chaudhury has given an undertaking on behalf of his clients which according to our directions has been minuted. 11. That undertaking is as follows: I undertake on behalf of Messrs. Boots Pure Drug Co. Mr. Chaudhury has given an undertaking on behalf of his clients which according to our directions has been minuted. 11. That undertaking is as follows: I undertake on behalf of Messrs. Boots Pure Drug Co. (India), Ltd., to keep a separate account of the imports and sales in India of Sulphathiazole tablets, powders or in whatever form it may be, of the quantities that are held in balance and to give monthly inspection of our accounts and stocks, My clients further undertake on the final disposal of the suit to pay without execution, in the event of Plaintiffs' succeeding, to the Plaintiffs such amounts as may be assessed as damages or the profits which they will have made by the sale in India of the aforesaid commodity. My clients further undertake to give consent to the suit being expedited as much as possible. 12. Costs costs in the cause. Certified for two Counsel,