Godrej Soaps Ltd v. Hindustan Lever Ltd — 1993 DIGILAW 361 (CAL)

JUDGMENT 1. THESE two appeals - one by Godrej soaps Ltd. and the other by Procter and Gamble Godrej Ltd. arise out of the same interim order passed by the Court of the first instance on an interlocutory application filed by the first respondent, Hindustan Lever Ltd. for an order restraining the appellants, inter alia, from manufacturing, selling or offering for sale and/or marketing and/or advertising the bathing bar vigil' with the words' All New' and The Longer Lasting Soap' which uses and/or utilises the process and/or composition of the patent No. 170131 of the first respondent or any composition which comes within the range and/or scope and/or is covered by the said patent of the first respondent. The said injunction application was; moved on 12th July 1993 and an ad interim order in terms of the aforesaid prayer was passed. On 21st July 1993 the learned Judge passed the following order:- ". . . . . . . . I have carefully considered the submissions made by the learned Advocates and also the provisions of Section 48 of the patent Act. The fact remains that no affidavit has been filed by the defendants. Now it is too early to decide the matter without affidavit. From the averments made in the plaintiff's application and also from the facts and circumstances of the case it appears that the plaintiff has got a prima facie case and it will not be proper to vacate the interim order at this stage. It is ordered that the defendants will be at liberty to sell soaps wherein TFM', i.e. total fatty matter percentage is mentioned but will not sell any soap infringing the composition of the plaintiffs patent bearing No. 17031. Earlier interim order is modified to this extent only. Defendants will file their affidavit in opposition by 26. 7. 1993; plaintiff will file reply by 28. 7. 1993 and the injunction matter will come up for hearing as a 'specially Fixed matter' on 29. 7. 1993. . . . . . . . . . . . . . " 2. IT has been submitted by Mr. Defendants will file their affidavit in opposition by 26. 7. 1993; plaintiff will file reply by 28. 7. 1993 and the injunction matter will come up for hearing as a 'specially Fixed matter' on 29. 7. 1993. . . . . . . . . . . . . . " 2. IT has been submitted by Mr. Ashoke Sen, Senior Counsel for Godrej soaps Ltd. and S. B. Mukherjee, Senior Counsel for Procter and Gambel Godrej Ltd. that at this stage the Court is only concerned to see whether the balance of convenience is in favour of granting any order of injunction against the manufacture and sale of the product in question. It is the contention that the patent of the first respondent has been sealed only in may 1993 and the first respondent has not marketed any product on the basis of the said patent. On the contrary, the bathing bar under the trade mark Vigil' (green) is being manufactured by the first respondent since November 1987 and a variant thereof, namely Vigil' (pink) is being manufactured from November 1991. The Words 'new' and 'longer lasting' appeared on the wrapper of the said bathing bars as far back as in February 1990. The words 'all new' and 'the longer lasting soap' were a mere change in the art form and have been appearing on the wrappers of the products manufactured by the first respondent since January 1993. Accordingly the learned Counsel submitted that the interim order should be vacated. The learned Counsel have relied on several decisions in support of their contentions. Mr. Gautam Chakraborty, (learned Counsel appearing for the first respondent has. however, submitted that no affidavit-in-opposition has been filed in the Court below. The appellants have not disclosed if they have got any patent and what are the compositions of the product manufactured by them. Since the first; respondent has got the right under the patent that right cannot be allowed to be interfered with by the appellants in any manner whatsoever. If the TFM', i.e. total fatty matter percentage is more than what has been specified in the patent obtained by the first respondent, the first respondent should not have any objection to the manufacture and sale of the product of the appellant. It is submitted that it is immaterial whether the first respondent has produced or manufactured any product under the patent or not. It is submitted that it is immaterial whether the first respondent has produced or manufactured any product under the patent or not. 3. A contention has been raised by Mr. Gautam Chakraborty, Senior counsel that before the Court below it has been admitted by the first appellant "has every right to manufacture soap with the self-same composition for which the plaintiff has obtained patent". It is also pointed out that the learned Judge has recorded that the first appellant has not denied that they are not using plaintiff's composition. 4. MR. Das has however submitted that no such admission was made. It was only said that assuming that the averments made in the petition are true and correct, even then the first respondent was not entitled to obtain any interim order of injunction. On a reading of the Judgment it appears to us that although it was submitted that the first appellant has got every right to manufacture soap with the self-same composition for which the plaintiff has obtained patent but it has not been admitted whether in fact the first appellant had been manufacturing soap with such composition or not. The admission, if any, may lead to another controversy as to whether the patentee has got any monopoly in respect of its patented composition as the basic elements are identical. Before us it has not been contended that the first appellant has infringed the patent. This is however a matter to be decided on affidavits. The first appellant has to file affidavit before the Court below dealing with the averments made in the petition, only when the real state of affairs may come to light. 5. IT appears that the appellant Godrej Soap Ltd. carries on business, inter alia, manufacture and/or selling or various soaps and detergents. The products manufactured by the said appellant are sold under different brands. The other appellant Procter and Gamble Godrej Ltd. who is the defendant No. 2 in the suit, out of which the present appeal arises, markets and sells the toilet soaps manufactured by the appellant Godrej Soaps Ltd. 6. The products manufactured by the said appellant are sold under different brands. The other appellant Procter and Gamble Godrej Ltd. who is the defendant No. 2 in the suit, out of which the present appeal arises, markets and sells the toilet soaps manufactured by the appellant Godrej Soaps Ltd. 6. TWO applications for patents tin respect of alleged inventions were filed by the first respondent under the Patents Act, 1970 - one related to the composition of detergent bars suitable for personal bathing and fabric washing (the first application) and the other was in respect of the process of manufacture of the above products (the second application). Both such applications were accepted for grant and notified in the Official Gazette in February and March 1992 respectively. The proceedings in respect of the second application are still pending before the Deputy Controller of Patents, Bombay and no patent has yet been granted therein. 7. IN respect of the first application, proceedings under Section 27 of the Patents Act. 1970 were initiated by the appellant Godrej Soaps Ltd. before the Deputy Controller of Patents, Bombay. The appellant Godrej soaps Ltd. denied the novelty of the invention and brought to the notice of the said authority matters relating to prior publications which anticipated the alleged invention claimed in the said Patent Application including extracts from Books, Papers/lectures and Articles published between 1939 and 1987. 8. BY an order dated 31st March 1993 the Deputy Controller recorded findings that the statements made by the first respondent as and by way of explanation/analysis were either incorrect or misleading. He moreover held that the explanations given on behalf of the respondent at the time of the said hearing were also not found satisfactory by the Controller and consequently some amendments were submitted to overcome the citations. He ordered that the complete specifications in respect of the said first application shall be amended and the patent application shall proceed to sealing provided it meets the other requirements of the said Act and Rules. The patent was, however, granted and sealed on April 23, 1993 and published in the Gazette of India on May 22, 1993. The period of limitation for appealing against the order dated 31st March 1993 had not expired. 9. The patent was, however, granted and sealed on April 23, 1993 and published in the Gazette of India on May 22, 1993. The period of limitation for appealing against the order dated 31st March 1993 had not expired. 9. THE appellant Godrej Soaps Ltd. has filed an appeal under Section 116 of the said Act before the Bombay High Court against the said order dated 31st March, 1993 which is pending. 10. THE question, at this stage, is, having regard to the facts and circumstances of the case, what interim order should be passed. The product, in question, is being marketed since 1987 by Godrej Soaps Ltd. where as the patent of the first respondent was granted and sealed on 23rd April, 1993 and published in the Gazette of India on 22nd May. 1993. The first respondent has not yet started manufacture of any soap in accordance with their patent. In the injunction application made before the Trial Court, the reports of various experts have been relied on, in support of the contention that the soap or the product which is being manufactured by the said appellants, in fact, is based on the patented specification and composition of the first respondent. No affidavit has yet been filed by the appellants in the Court below. The matter has not been heard on affidavit evidence as yet. It is necessary to go deeply into question as to whether the specifications and compositions as patented by the first respondent have been infringed or not. Had there been any product of the first respondent in the market in accordance with their patent perhaps something could have been said in favour of granting an interim order, if prima facie, it would have appeared that there has been an infringement by the appellant of the patent of the first respondent. But in this case uptil now there is no product manufactured by the first respondent in accordance with their patented specification and composition. If the appellants are prevented from manufacturing or selling the product in question at this stage before any prima facie case is established they will suffer loss and prejudice. Whether the product of the appellant contains exactly same compositions has to be decided on evidence. There cannot be any dispute that in detergent soap, the following elements must be present, viz., detergent actives, non-soap and soap; structurant and water. Whether the product of the appellant contains exactly same compositions has to be decided on evidence. There cannot be any dispute that in detergent soap, the following elements must be present, viz., detergent actives, non-soap and soap; structurant and water. The percentage of such compositions may vary from soap to soap. Whether or not the percentage of such compositions are identical cannot be decided without evidence. In fact the learned Judge observed, in our view rightly, that "it is too early to decide the matter without affidavit." 11. RELIANCE has been placed in Smith v. Grigg Ld., reported in 41 R.P.C. 149. In that case, the plaintiff, C. R. Smith, on the 16th March, 1923, registered under the Patents and Designs Acts, 1907 and 1919, a Design in class 3, for application to roll top desks. The main object of the construction to accordance with the Design was to enlarge the writing surface of the table by a contrivance which causes the flaps or sides of the top part of the desk to all into a horizontal position, on the roll top being opened and raised. 12. ON the 5th of November 1923, the plaintiff commenced an action gainst Grigg Ld., claming damage for breach of contract, and for the infringement by them of his registered Design, and for an injunction to restrain the continuance of such infringement. On the 8th of November, the respondent took out a summons in the King's Bench Division, for an injunction, until after the trial of the action, to restrain the defendants from applying the plaintiff's registered Design to any roll top desks or from selling or advertising for sale any desks which were imitations of his said registered Design. According to the affidavit of the plaintiff, it appeared that in October, 1992, he showed to the defendants, in confidence, a sketch of his Design and informed them that he intended to register it. The plaintiff invited the defendants to manufacture for him a sample roll top desk in accordance with the Design, undertaking that, if the sample proved to be satisfactory, he would give them an order for 500 roll up top desks to be made in oak. The plaintiff invited the defendants to manufacture for him a sample roll top desk in accordance with the Design, undertaking that, if the sample proved to be satisfactory, he would give them an order for 500 roll up top desks to be made in oak. The defendants made a sample roll up top desk, and on the 5th of February 1923, the plaintiff gave them a written order for 500 roll top desks in solid oak according to the simple which had been made by the defendants and which had been accepted by the plaintiff. This order was accepted by the defendants by a letter dated the 16th of February, 1923, and the defendants made and delivered to the plaintiff, twenty roll top desks in purported pursuance of that order. The plaintiff alleged that the twenty roll top desks delivered by the defendants were not in accordance with the sample, being inferior in workmanship and quality of materials to those contracted for, and the plaintiff refused to accept them. The defendants then advertised for sale and sold in this country, roll top desks which the plaintiff alleged, infringed his registered Design. Thereupon, the writ was issued claiming damages and an injunction as stated. 13. MR. Justice Roche, at Chambers, granted an injunction until the trial of the action, restraining the defendants from applying the 'plaintiff's registered Design to any desks; or from selling or advertising for sale any desks which were imitations of the said Design. 14. THE defendants appealed to the Court of Appeal. Scrutton, L.J. observed; as follows:- "from the authorities which have been cited to us, and from my own personal enquiries from sources competent to give me information, there is in patent cases a well recognised rule of practice in the courts which deal with patent cases as to interlocutory injunctions, and it is this : That where the patent which you are seeking to enforce is a recent patent, an interlocutory injunction is not granted where there is a genuine case to be decided. Mr. Justice Parker put it very shortly in Travtner v. Patmore, reported in 29 R.P.C. 60 at page 63. 'I cannot grant an interim injunction. It is very unusual if the 'patent has not been established. Mr. Justice Parker put it very shortly in Travtner v. Patmore, reported in 29 R.P.C. 60 at page 63. 'I cannot grant an interim injunction. It is very unusual if the 'patent has not been established. It is put at greater length by this court in the case of Jackson v. Needle, (1 R. P. C. 174) which was decided just after the Patents, Designs, and Trade Marks Act, 1883, where both Lord Justice Baggallay and Lord Justice Cotton State that, where it is a new patent, or a recent patent, the Court is not in the habit of granting these injunctions until the title has been established. I take the principle that underlies that to be this : that the court leans against monopolies, where you find a respectable and old established monopoly which has been in existence for years and not challenged, there is no reason for the Court to lean too hardly against it, but when you find a recent monopoly which there has not yet been time to challenge sought to be enforced, the Court is inclined to take the view as a general rule, unless there are special circumstances to overcome it, that the title to the monopoly must be established before it interfere by interlocutory injunction. It is not a universal rule; there may easily be facts which will lead the Court in a particular case to depart from it, but as a general rule that is the practice of the Court." Atkin, L. J., observed as follows :-"in a case of a patent therefore, the mere fact that a patent has been granted does not show that those conditions have been performed which alone entitle a plaintiff to a conclusive right, and, therefore, the Courts when they are approached by a plaintiff who says : 'I am the owner of a patent and the defendant has infringed it, ' say where the patent is of recent dte : Your right is not established sufficiently by the mere fact that a patent has been granted to you. ' and unless there is some kind of substantial case evidenced before the Court that there is, in fact a valid patent then the Court refuses to grant an injunction. ' and unless there is some kind of substantial case evidenced before the Court that there is, in fact a valid patent then the Court refuses to grant an injunction. I think the same thing must apply in the case of a person who claim under the registered design." Our attention has been drawn to the decision of a Division Bench of this Court in the case of Boots Pure Drug Co. (India) Ltd. v. May and Baker. Ltd., reported in 52 C. W. N. 153. In that case May and Baker, Ltd., filed a suit against Boots Pure Drug Co. (India) Ltd. for an injunction for accounts and other reliefs. The plaint proceeded on the footing that the defendant had infringed their patent rights. The learned Single judge granted temporary injunction. An appeal, was preferred before the Division bench. There the Division Bench laid down three principles which are as follows:- "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 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. 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 purpose of considering an application for temporary injunction, presume the patent to be a valid one." 15. IN that case, an application for injunction was supported by the affidavit of an eminent Indian scientist. The Division Bench dealing with the second question viz. as to whether the plaintiffs have established a prima facie case of infringement on the part of the defendants held that it was a difficult question. After considering the affidavit evidence on the point the division Bench was not satisfied that a prima facie case of infringement on the part of the defendants was established. Mr. Justice Clough, as the learned Single Trial Judge, felt difficulty in deciding the point raised in the affidavit of Dr. After considering the affidavit evidence on the point the division Bench was not satisfied that a prima facie case of infringement on the part of the defendants was established. Mr. Justice Clough, as the learned Single Trial Judge, felt difficulty in deciding the point raised in the affidavit of Dr. Mitter and the affidavit-in-opposition of Dr. Marshall at that stage of the suit. The Division Bench also felt difficulty as the matter is of highly technical nature. The Division Bench was of the view that such a serious question could only be satisfactorily determined at the trial of the suit. Accordingly the injunction was refused. 16. WE are, therefore, of the view that in a case like this where the matter is of highly technical nature, it has to be decided on affidavit evidence as to whether the plaintiffs have been able to establish in a prima facie way that the defendants have infringed their patient rights. This has not yet been done. Such a serious question may only be satisfactorily determined at the trial of the suit, if it cannot be determined on the affidavit evidence. The next decision cited is in the case of V. Maniola Thevar v. Messrs, star Plough Works, Melur, reported in AIR 1965 Madras 327. In that case, the plaintiff/appellant filed a suit stating that the defendant had been slavishly imitating the plaintiffs pattern by manufacturing plough and selling the same in the market. The defendant resisted the claim on the ground that the plaintiff cannot claim any inventive genius or special research in the particular pattern of plough which the Plaintiff was manufacturing. The plaintiff obtained an interim injunction which was ultimately vacated in the appeal. There are learned Single Judge observed as follows : "principles regulating the grant of an interim injunction in a suit complaining of infringment of a patent are: fairly well settled. The plaintiff must make out a strong prima facie case for the issue of a temporary injunction. An interim injunction will not be granted if the patent which has been obtained by the plaintiff is a recent one and there is a serious controversy about the validity of the grant of the patent it. The plaintiff must make out a strong prima facie case for the issue of a temporary injunction. An interim injunction will not be granted if the patent which has been obtained by the plaintiff is a recent one and there is a serious controversy about the validity of the grant of the patent it. In other words, if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention claimed by the plaintiff is a new one or a new manufacture or whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent courts will not grant an interim injunction restraining the defendant from pursuing his normal business activity. An interim injunction will not be granted if the defendant disputes the validity of the grant the facts of the instant case disclose a bona fide triable issue as regards the inventive genius claimed by the plaintiff. If the patent is ?y new and its validity has not been established in a judicial proceeding till then and if it is endeavoured to be, shown that the patent ought not to have been granted under the provisions of Section 26 of the patents and Designs Act, 1911 the court will not interfere by issuing a temporary injunction. . Vide Kerr on Injunction, 6th Edn. p. 320. In the instant case, every circumstance that has been made out is definitely against the grant of a temporary injunction. The plaintiff' has not made out the important condition of a strong prima facie case of sufficient actual user of his patent. Even though the defendant raised this particular objection, the plaintiff has not placed any, prima facie material or any evidence by production of account books, bill books etc. to show the date of his commencement of the production and the nature of the sales, (extensive or otherwise. On his own showing he commenced production only in October 1962, and ' the suit is filed in 1964 April. Yet no materials have been placed." 17. OUR attention has been drawn to a decision in M/s. National Research Development Corporation of India, Mew Delhi v. M/s. The Delhi Cloth and General Mills Co. Ltd. and Others, reported in AIR 1980 Delhi 132. Yet no materials have been placed." 17. OUR attention has been drawn to a decision in M/s. National Research Development Corporation of India, Mew Delhi v. M/s. The Delhi Cloth and General Mills Co. Ltd. and Others, reported in AIR 1980 Delhi 132. In that case, the plaintiff filed an application for the issue of a temporary injunction restraining the defendant from violating the plaintiffs patent in a suit for permanent injunction, rendition of accounts and damages in that case, an affidavit was filed to the application. Written; statement was also filed. There the learned Single Judge of Delhi High Court held that for the grant of temporary injunction, principles applicable to the infringement of Patent actions are, that there is a prima facie case that the patent is valid and infringed, that the balance of convenience is in favour of the injunction being granted and that the plaintiff will suffer an irreperable loss. It is also a rule of practice that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would, for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than 6 years old and there has been actual user it would be safe for the Court to proceed upon this presumption. Where, from the prior correspondence between the defendant on the one side and the plaintiff, the assignee of a patentee and the original inventors on the other showed that they admitted the validity of the patent, their defence that they developed their own technology and were working the process successfully was disbelieved and a temporary injunction restraining them from violating the plaintiff's patent was granted pending suit for permanent injunction, rendition of accounts and damages for infringement of the patent. 18. IN M/s. Niky Tasha India Private Ltd. v. M/s Faridabad Gas Gadgets private Ltd. . reported in AIR 1985 Delhi 136, the plaintiffs made an application for temporary injunction in the suit restraining the defendants from selling, manufacturing and advertising their product Navoyoti. The learned judge refused the injunction on the ground that the defendants' product is provided with a lid which makes it totally distinguishable from the product of the plaintiffs. reported in AIR 1985 Delhi 136, the plaintiffs made an application for temporary injunction in the suit restraining the defendants from selling, manufacturing and advertising their product Navoyoti. The learned judge refused the injunction on the ground that the defendants' product is provided with a lid which makes it totally distinguishable from the product of the plaintiffs. He also noticed one other difference in the two products. There the learned Single Judge after considering the various decisions cited from the Bar observed as follows:- "I take it to be well settled both in India and in England, that an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed. Furthermore, I have always understood the rule to be that the court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date, as in this case, no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made, where a person is entered as a proprietor of a registered design, that is under the Act, no conclusive proof that the plaintiff is the proprietor of the design, but only a prima facie evidence that he is the proprietor. The plaintiff has this advantage that if no evidence at all is given then the certificate is sufficient evidence that he is the proprietor. (Mohd. Abdul Kerim v. Mohd. Yasin, AIR 1934 AIR 798). I think, every ground on which a registered design may be cancelled under the Act should be available by way of defence to a suit for infringement. It will be odd to hold that on the strength of a recent registered design, the plaintiff can claim an absolute right to restrain everyone else front carrying on his business unless and until the registered design of the plaintiff is cancelled in appropriate proceedings by a competent court of Law. I would once again emphasise that the principles regarding the grant of injunction in India and in England are essentially similar. And these principles are as old as the hills. With other British Specialities of the Act of 1949 we are not concerned. I would once again emphasise that the principles regarding the grant of injunction in India and in England are essentially similar. And these principles are as old as the hills. With other British Specialities of the Act of 1949 we are not concerned. But injunction was a well known remedy under the English Act of 1949. Our Act is of 1911. That there are bound to be differences in the law, I don't deny. The draftsman generally incorporates the changes which experience has shown to be necessary and updates the law. The principles are clear. The difficulty lies in their application. On the recent design in this case the plaintiffs cannot be granted an injunction where there is a serious question to be tried in the suit. If there is any real dispute on the questions as to infringement or validity of the registered design the court will, as a general rule, refuse an interim injunction. Damages will afford a sufficient remedy. The defendants are prepared to give an undertaking as to damages. I cannot accept the argument that the plaintiffs on the strength of the registration certificate have an absolute right, a right which is good even against independent designers. The Court is not in the habit of granting injunctrions until the title has been established, the Court leans against monopolies. The certificate does not establish a conclusive right. It has to be tried and tested in the laboratory of courts. We must not forget that the registered design of the plaintiffs is of a very recent date. In case of a recent monopoly which is seriously disputed on various grounds such as prior publication, lack of originality, trade variation etc, it will not be proper to grant an injunction. There is a serious question to be argued as to whether the design is valid or not, and on the facts I am not satisfied that the balance of convenience requires an interim injunction, particularly in view of the undertaking which the defendants are prepared to give." In that case, the Division Bench refused the injunction and dismissed the appeal. Heavy reliance was placed on the decision of the Supreme Court in the case of M/s. Biswanath Prasad Radhay Shyam v. M/s. Hindustan Metal industries, reported in AIR 1982 SC 1444 . In that case, the plaintiffs instituted a suit for injunction. Heavy reliance was placed on the decision of the Supreme Court in the case of M/s. Biswanath Prasad Radhay Shyam v. M/s. Hindustan Metal industries, reported in AIR 1982 SC 1444 . In that case, the plaintiffs instituted a suit for injunction. The plaintiffs prayed for a permanent injunction restraining the defendant from adopting, imitating, employing or in any manner infringing the device of the plaintiffs', patent. The plaintiffs also prayed for a mandatory injunction. The defendant resisted the suit on various grounds. The defendant also filed counter-claim praying for revocation of the patent on the same grounds which he had set out in the written statement. The learned Judge dismissed the plaintiffs' suit but allowed the petition for revocation. The plaintiffs thereupon preferred two appeals to a division Bench of the High Court. The Division Bench allowed plaintiffs' suit and set aside the decree of the learned Trial judge and decreed the plaintiffs suit. The matter then want up to the Supreme Court. There are supreme Court observed as follows:- "The fundamental principle of Patent law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventory own discovery as opposed to mere verification of what was already known before the date of the patent. It is noteworthy that the grant and sealing of the patent or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of patent is not guaranteed toy the grant, is now expressly provided in Section 13 (4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is a pre-emption in favour of the validity of the patent cannot be accepted." 19. OUR attention has been drawn to a decision of the Supreme Court in monsanto Company v. Coromandal India Products (P) Ltd. reported in AIR 1986 SC 712 . There a close scrutiny of the plaint and a reference to the evidence of the witnesses for the plaintiff at once exposed the hollowness of the suit. OUR attention has been drawn to a decision of the Supreme Court in monsanto Company v. Coromandal India Products (P) Ltd. reported in AIR 1986 SC 712 . There a close scrutiny of the plaint and a reference to the evidence of the witnesses for the plaintiff at once exposed the hollowness of the suit. The Supreme Court observed as follows:- "we, therefore, see that Butachlor which was the common name for cp 53619 was discovered, even prior to 1968 as a Herbicide possessing the property of non-toxic effect on rice. The formula for the herbicide was published in the report the International Rice Research Institute for the year 1968 and its common name Butachlor was also mentioned in the report of the International Rice Research institute for the year 1969. No one patented the invention Butachlor and it was the property of the population of the world. Before Butachlor came for that matter any Herbicide could be used for killing would it had to be converted into an emulsion by dissolving it in suitable solvent and by mixing the solution with an emulsifying agent. Emulsification is a well-known process and is no one's discovery. In the face of the now undisputable fact that there is no patent for or any secrecy attached to Butachlor, the solvent or the emulsifying agent and the further fact that the process of emulsification is no now discovery, the present suit based on the secrecy claimed in respect of the active agent Butachlor and the claim for the process of emulsification must necessarily fail. Under Section 61 (1) (d) a patent may be revoked on the ground that the subject of any claim of the complete specification is not an invention within the meaning of the Act. Under Section 64 (e), a patent may be revoked if the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the date of the claim etc. Under Section 64 (e), a patent may be revoked if the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the date of the claim etc. Under Section 64 (1) (f), a patent may be revoked if the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step having regard to what was publicly known or publicly used in India or what was published in India before the priority date of the claim (the words 'or elsewhere' are omitted by us as the patents In the present case were granted under the Indian patents and Designs Act, 1911, i.e., before the Patent Act 1970), 'invention' has been defined by Section 2 (j) as follows :-"invention" means any new and useful - (i) art, process, method or manner of manufacture : (ii) machine, apperatus or other article : (iii) substance produced by manufacture, and includes any new and useful, improvement of any of them, and an alleged invention." It is clear from the facts narrated by us that the Herbicide and CP 51619 (Butachlor) was publicly known before Patent Number 125381 was granted. Its formula and use had already been made known to the public by the report of the International Rice Research Institute for the year 1968. No one claimed any patent or any other exclusive right in Butachlor. To satisfy the requirement of being publicly known as used in clauses (e) and (f) of Section 64 (1), it is not necessary that it should be widely used to the knowledge of the consumer public. It is sufficient if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of science or men of commerce or consumers. The section of the public, who, as men of science or men of commerce, were interested in knowing about Herbicides which would destroy weeds but not rice, must have been aware of the discovery of Butachlor. There was no secret about the active agent Butachlor as claimed by the plaintiffs since there was no patent for Butachlor, as admitted by the plaintiffs. Emulsification was the well-known and common process by which any Herbicide could be used. There was no secret about the active agent Butachlor as claimed by the plaintiffs since there was no patent for Butachlor, as admitted by the plaintiffs. Emulsification was the well-known and common process by which any Herbicide could be used. Neither Butachlor nor the process of Emulsification was capable of being claimed by the plaintiffs as their exclusive property. The solvent and the emulsifier were not secrets and they were admittedly not secrets and they were ordinary market products. From the beginning to the end, there was no secret arid there was no invention by the plaintiffs. The ingredients, the active ingredients the solvent and the emulsifier, were known : the process was known, the product was known and the use was known The plaintiffs were merely camouflaging a substance whose discovery was known throughout the world and ting to enfold it in their specification relating to Patent Number 125381, the pain is therefore, liable to be revoked. We do not think that it is necessary for us to go into the various questions of law so carefully an meticulously argued by Mr. Challaswamy. The questions were no doubt interesting and arose for the first time. But we desire to keep our Interest purely academic and within bounds. So we do not pronounce upon those questions. The appeal is dismissed with. . . . . . . . . 20. THE principles are by now well-settled. As indicated, the patent of the respondent is a new and recent one. The first respondent has not yet started manufacture of any product according to the patented composition. In order to get an interim injunction, it is necessary that the patentee. firstly should prove that they have prima facie right, secondly they must prove by prima facie evidence that there is an infringement on the part of the defendants and thirdly the balance of convenience is in their favour may be that by reason of the grant of patent which is under challenge or which may be challenged even in this suit the first respondent has been able to establish a prima facie light. But since it is a new and recent patent which has not been worked out as yet, the Court has to consider this aspect before allowing any interim injunction. But since it is a new and recent patent which has not been worked out as yet, the Court has to consider this aspect before allowing any interim injunction. The next question which is of utmost importance is whether the plaintiff patantee has established by prima facie evidence that there is an infringement of their patent by the appellants/defendants. The case of the plaintiff is that recently the personal washing bar Vigil' (also called a toilet soap) with manufacturing dates of January and February and April 1990 were analysed at it's laboratories and the plaintiff came to know that the com-position of the said bathing soap of the respondents bearing the name vigil' was within the scope and/or range of all or some of the claims of patent No. 170131 of the plaintiff which stands sealed and granted as mentioned hereinbefore. 21. ACCORDING to the plaintiff, the analysis of the said product procured from the market (being samples packed tin 1/93, 2/93 and 4/93 bearing the trademark VIGIL) reveal the following basic composition:- (i) 40 to 50% detergent of which 75 to 80% soap based on total detergent. (ii) 44 to 50% water insolubles, including starch and having particle size of 6 to 19 um (micron). (iii) 10 to 13% by wt. water. 22. ACCORDING to the plaintiff, claims 1, 4, 6 and 7 of the patent Specification no. 170131 of the plaintiff, as amended, read as under:- (1) A detergent bar containing - (a) 25 to 69% by weight of detergent, of which at least 50% by weight is soap. (b). 30 to 60% by weight of solid, water insoluble particulate structurant having an average particle size in the range of 0.2 and 30 m (micron), which includes water insoluble polysaccharide, and (c) 8 to 15% by weight water, said, bar having been prepared by the method of plodding. (4) A personal washing bar according to claim I containing 8 to 15% by weight of water. (6) A detergent bar according to any one of the preceding claims wherein the structurant content is 40 to 55% by weight. (7) A detergent bar according to any one of the preceding claims wherein the water insoluble polysaccharide is a starch or a cellulose or is deprived from starch or cellulose. (6) A detergent bar according to any one of the preceding claims wherein the structurant content is 40 to 55% by weight. (7) A detergent bar according to any one of the preceding claims wherein the water insoluble polysaccharide is a starch or a cellulose or is deprived from starch or cellulose. It is the case of the plaintiff that by reason of the aforesaid, the plaintiff as the patentee, enjoys exclusive right and monopoly in respect of the aforesaid composition consisting of - (i) 25 to 60% by wt. detergent of which at least 50% by wt. is soap. (ii) 40 to 55% water insoluble structurant including starch and having a particle size of between 0.2 to 30 urn, and (iii) 8 to 15% by wt. water. 23. THE plaintiff has further stated that no one else has any right to use the aforesaid composition and/or to use a composition which comes within the scope and/or range of the said Patent No. 170131 of the plaintiff. 24. IT has also been alleged that the composition of the aforesaid patent of the plaintiff according to claim 7 (when dependent on claims 1, 4 and 6) and that of the impugned toilet soap of the first appellant bearing the trade mark VIGIL are set out side by slide for ready comparison -Composition according to claim 7 (when dependent on claims 1, 4 and 6) of Patent No. 170131 (i) 25 to 60% by wt. detergent of least 50% by wt, is soap. (ii) 40 to 55% water insoluble structurant including starch and haying a particle size of between 0. 2 to 30 m (micron) (iii) 8 to 15% by wt. water composition of the impugned toilet soaps bearing the 2/93 and 4/93) of the defendants. (i) 44 to 52% detergent to which at 75 to 80% by wt. is soap. (iii) 44 to 50% water insoluble including starch and having particle size between 6 to 19 m (micron) (iii) 10 to 13% by wt. water. The plaintiff/first respondent had also relied on several expert opinions and other scientific date in support of the contentions raised in the petition before the Court below. It appears that the matter is of highly technical nature. Whether the appellants have copied and materially utilised and reproduced the composition of the patent in question is a matter to be decided on evidence. It appears that the matter is of highly technical nature. Whether the appellants have copied and materially utilised and reproduced the composition of the patent in question is a matter to be decided on evidence. The appellants have not yet filed affidavits. Directions have already been given for filing affidavits before the Court below. When the matter is of highly technical nature, as is the case here, it has to be decided by affidavit evidence, if possible, whether the plaintiff/patentee has been able to establish by prima facie evidence that there is an infringement on the part of the defendants. If it is not possible to decide the issue of infringement by affidavit evidence, such issue has to be decided at the trial. 25. THAT apart, at this stage, there is another factor to be taken into account that is to say, the balance of convenience. The first respondent has not yet started manufacture of any product on the basis of patented composition, whereas the appellants have been producing and marketing the product since 1987 long before any patent was granted and sealed in favour of the plaintiff. At this stage, abrupt stoppage of manufacture and sale of the product of the appellants will tell heavily on the financial structure and consequent employment potentiality of the appellants. Accordingly, no temporary injunction should be granted until the issue of infringement is decided one way or the other. 26. WE, therefore, allow this appeal and set aside the orders under appeal. However, we direct that the appellants shall keep separate accounts of the manufacture and sale of the impugned product and furnish monthly statements of such manufacture and sale to the Advocate- on- Record of the plaintiff. We make it quite clear that we have not expressed any opinion on the merits of the contentions. We were only concerned to decide whether at this stage any temporary injunction should be granted or not The Court of the first instance will decide the issue raised after completion of the affidavits. This order disposes of the appeals and applications. There will be no order as to costs. Filing of paper books is dispensed with and undertakings are discharged. 40. As no affidavit-in-opposition to the stay applications has been filed by the first respondent, allegations made therein are not admitted by the first respondent. This order disposes of the appeals and applications. There will be no order as to costs. Filing of paper books is dispensed with and undertakings are discharged. 40. As no affidavit-in-opposition to the stay applications has been filed by the first respondent, allegations made therein are not admitted by the first respondent. It is recorded that the appellants have filed an affidavit as directed by this Court. Appeals allowed.