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Madras High Court · body

2010 DIGILAW 1003 (MAD)

TVS Motor Company v. Bajaj Auto Limited

2010-03-10

CHITRA VENKATARAMAN

body2010
Judgment : 1. The plaintiff in C.S. No.979 of 2007 is the defendant in C.S. No.1111 of 2007. The defendant in C.S. No.979 of 2007 is the plaintiff in C.S.No.1111 of 2007. For the sake of convenience, the parties are referred to as arrayed in C.S.No.979 of 2007. 2. The plaintiff in C.S.No.979 of 2007 places its claim principally on Section 106 of the Patent Act, 1970 seeking a declaration that the threats is infringing the defendant’s Patent No.195904; that the defendant is proposing to take infringement action against the plaintiff is unjustified. The plaintiff also seeks a declaration that their product does not infringe the Patent No.195905 of the defendant. The Plaintiff has also asked for other consequential reliefs. 3. The defendant is the plaintiff in C.S.No.1111 of 2007. The relief sought for in C.S.No.1111 of 2007 is one for a permanent injunction to restrain the defendant from in any manner infringing the defendant’s Patent No.195904 and their using the technology described in the said patent and manufacturing, marketing, selling, offering for sale or exporting 2/3 wheelers, including the proposed 125 cc FLAME motorcycle containing an internal combustion engine or any internal combustion engine or product which infringes the plaintiff’s patent No.195904. The defendant also seeks a preliminary decree to direct the plaintiff to render accounts of profits made by sale or offering for sale export of 125 cc FLAME motorcycle or any other motorcycle of 100 cc to 225 cc range with twin spark plug technology infringing plaintiff’s patent No.195904 and other consequential reliefs. 4. Issues were framed in both the Suits s early as 24.11.2009. The question that had come up for consideration today is as to who should be in evidence first. Learned counsel appearing on either side, hence, sought for an order on this aspect, treating it as the preliminary issue to be settled first, Argument by the respective Senior Counsel were made in detail as to the scope of the Suits, provisions of the Patent Act, in particular, Section 106b and 101-A as well as Order 18, Rules 1 and 3 of the C.P.C. 5. Mr. A.L. Somayaji and Mr. P.S. Raman, learned Senior Counsel appearing for the plaintiff referred to the scope of Order 18, Rule 3 of the Civil Procedure Code as well as Section 106 of the patents Act, 1970. Mr. A.L. Somayaji and Mr. P.S. Raman, learned Senior Counsel appearing for the plaintiff referred to the scope of Order 18, Rule 3 of the Civil Procedure Code as well as Section 106 of the patents Act, 1970. They placed reliance on the decision reported in Lewis Falk Limited v. Jacobwitz, 1944 Chancery Division 64, that considering the infringement alleged and going by sub-Section (2) to Section 106 of the Parties Act, the defendant herein he directed to lead the evidence first. 6. Per contra, Mr. T.V. Ramanujam and Mrs. Nalini Chidambaram, learned Senior Counsel appearing for the defendant submitted that the claim made by the plaintiff rests on the footing that the defendant has a valid patent. Going by Section 106(1) of the Patent Act, the plaintiff have to begin the hearing; that the plaintiff has to prove first that there is a threat which is unjustifiable. Going by the nature of allegation made by the plaintiff and the plaintiff’s Suit being the first in the order, the plaintiff alone have to let in evidence first. Further since the defendant has a valid patent, it is but necessary that the plaintiff be directed to lead the evidence first. 7. In this connection, they pointed out that considering the nature of the issues raised in both the Suits, the comprehensive manner by which the issues have to be resolved, the plaintiff be directed to start first. They also pointed out to Section 104-A of the Patent Act and emphasized the need for the plaintiff to substantiate first by letting in evidence. Mr. T.V. Ramanujam, learned Senior Counsel appearing for the defendant referred to a decision reported in State Bank of India v. Ranjan Chemicals Ltd. and another, 2007 (1) SCC 97 , on the issue of holding a joint trial and submitted that going by Section 106 of the Patent Act, particularly, explanation in Section 106 read with Section 106(1) of the Patent Act, fairness required that the plaintiff has to begin the case. He also stressed on Order 18, Rule 1 of the Code of Civil Procedure that considering the allegations in paragraph 39 of the Plaint as well as to the relief sought for, the plaintiff herein must begin the Suit to substantiate that there was a threat, which led them to file a Suit. 8. He also stressed on Order 18, Rule 1 of the Code of Civil Procedure that considering the allegations in paragraph 39 of the Plaint as well as to the relief sought for, the plaintiff herein must begin the Suit to substantiate that there was a threat, which led them to file a Suit. 8. Heard the learned Senior Counsel appearing for the plaintiff and the learned Senior Counsel appearing for the defendant. 9. A prima facie reading of the Plaint, contention of the parties herein and the issues raised in the context of Section 106 of the Patent Act, shows that the relief sought for in both the Suits are so intertwined that one cannot go by the concept of one filed first must lead the evidence. Therefore, it is difficult to go strictly as per Order 18, Rule 1 of the Civil procedure Code that the plaintiff in C.S.No.979 of 2007, who has filed the Suit first based on Section 106(1) of the Patent Act has to first satisfy the first limb of the Section 106(1) of the Patent Act has to first satisfy the first limb of the Section to lead the evidence first. Given the fact that the defendant refutes the claim of the plaintiff as to the threat and Section 106 of the Patent Act rests on the premise that there is a valid patent in favour of the defendant, in the context of the requirement of Section 106(2) of the Patent Act and the contention taken in C.S.No.1111 of 2007, the issues need to be started from the question as to whether there was a breach of the patent rights or not. 10. Explanation to Section 106 of the Patent Act states that a mere notification of the existence of patent does not constitute a threat of proceeding within the meaning of the Section. Section 106(2) of the Patent Act requires that the defendant has to prove that the acts in respect of which proceedings were threatened would constitute infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid. It is not denied by the learned counsel herein that the relief sought for in these Suits rests on facts and allegations common to both the Suits. It is not denied by the learned counsel herein that the relief sought for in these Suits rests on facts and allegations common to both the Suits. The relief to the one or the other depends upon the ascertainment of the rights and the violations alleged. Hence, the claim made in the two Suits are interlinked and the consequences arising out of the respective claims are referable to the same set of facts viz., the patent infringement. The basic evidence to be taken in both the proceedings has to begin from the defendant as to the issue of infringement of patent right. 11. Hence on a concise view of the claim of the plaintiff and the claim made by the defendants, going by the decision of the Supreme Court reported in State Bank of India v. Ranjan Chemicals Ltd. and another, 2007 (1) SCC 97 , this Court feels that the issues have to necessarily begin from the angle of the infringement of a patent. The validity or otherwise of a patent claim and other consequences that flow therefrom are questions that have to follow from the initial aspect of an infringement. 12. Mr. T.V. Ramanujam, learned Senior Counsel appearing for the defendant referred to Section 104-A of the Patent Act, 1970 and submitted that the burden is on the plaintiff to begin the evidence. He also expressed his apprehension that directing the defendant to start first would prejudice his stand in his Suit. I do not find such objection could be sustained in the context of Section 104-A(2) of the Patent Act. 13. In thee circumstances, given the nature of dispute thus raised in both the Suits, the infringement being the center theme in both the Suits and even though the first Suit proceeds on the premise of a validity of a patent, to arrive at a proper decision, it is but necessary that the defendant, namely, plaintiff in C.S.No.1111 of 2007 has to start with the letting in of the evidence.