Back
SUPREME COURT OF INDIA
A.K. Patnaik, Jagdish Singh Khehar, JJ.
Dr. Aloys Wobben and another – Appellants
Versus
Yogesh Mehra and others – Respondents
CIVIL APPEAL NO. 6718 OF 2013
Decided On : 02-06-2014
(b) Patents Act, 1970 – Section 64 and 25 – Provisions of section 64 are subservient to all the other provisions of the Act – Thus if any other provision of the Act is in conflict with section 64, it will override section 64 – Therefore any person interested initiating proceeding u/s 25(2) will be precluded from filing revocation petition or counter-claim u/s 64(1). (Para 17, 18)
(c) Patents Act, 1970 – Section 64 – Remedy of filing revocation petition ‘or’ counter claim – Use of word ‘or’ – Both remedies cannot be availed simultaneously – Revocation petition filed by respondents before filing of infringement petition by appellant – Not open to respondents to file counter-claim in infringement petition. (Para 21, 22, 24)
(d) Patents Act, 1970 – Section 64 – Counter-claim – In effect a cross-suit, a plaint – Has to be adjudicated along with the main plaint – “Counter-claim” cannot be allowed to proceed, where a suit against the plaintiff has been instituted on the same cause of action – Section 10 r/w section 151, CPC – Similarly where an infringement petition was filed before filing of revocation petition and defendant filed counter-claim, he would be precluded from filing revocation petition. (Para 24, 25, 26)
(e) Administration of Justice – Consent proceedings – Consent order passed by High Court to alleviate multiplicity of litigation and to resolve the issues expeditiously – Approved. (Para 28)
(f) Patents Act, 1970 – Section 64 r/w 25 and section 124, Trade Marks Act, 1999 – Selecting and opting for one remedy under Patents Act excludes all remedies including section 124, Trade Marks Act, 1999. (Para 30)
Facts of the case:
Dr. Aloys Wobben has been carrying on manufacturing process through a joint venture partnership with Yogesh Mehra and Ajay Mehra, (respondent nos.1 and 2 herein). The Indian enterprise is carried on in the trade name of Enercon India Limited (respondent no.3 herein). Yogesh Mehra and Ajay Mehra (aforementioned), are the directors of Enercon India Limited.
the intellectual property licence agreement dated 29.9.2006, was terminated by Enercon GmbH, on 8.12.2008. It is submitted, that non-fulfillment of the obligations contained in the intellectual property licence agreement dated 29.9.2006, was the reason for such termination.
3. According to the appellant, Dr. Aloys Wobben, despite the termination of all intellectual property licence agreements with Enercon India Limited, respondent nos.1 to 3 herein, continued the use of the appellant’s patents, and as such, the intellectual property rights belonging to the appellant, without due authority. This action by respondent nos. 1 to 3 has been of extreme detriment to the appellant, as his technical know-how was being exploited by the respondents, without consideration or authorisation. Enercon India Limited, had filed 19 “revocation petitions” before the Intellectual Property Appellate Board under Section 64(1) of the Patents Act, 1970, in January 2009. Through the aforesaid petitions, Enercon India Limited had sought revocation of the patents held in the name of the appellant.
Dr. Aloys Wobben filed a number of “patent infringement suits”. In these suits, he impleaded, inter alia, Yogesh Mehra, Ajay Mehra and Enercon India Limited.
Enercon India Limited also filed 4 further “revocation petitions” before the “Appellate Board”, after the appellant’s institution of the “patent infringement suits”. These “revocation petitions” were filed by the respondents in 2010 and 2011.
The contesting respondents filed 23 “revocation petitions” before the “Appellate Board”, praying for the revocation of the patents held in the name of the appellant. Exactly the same prayer has been made by the contesting respondents, by way of the “counter-claims”, filed in response to the “patent infringement suits”. It is not a matter of dispute, that a number of “revocation petitions” filed by the respondents, have been settled by the “Appellate Board”,
Finding of the Court:
While the “counter-claim” will have to be permitted to be pursued, the “revocation petition” cannot be permitted to be continued.
Result: Appeal disposed of.
JUDGMENT
Jagdish Singh Khehar, J. –
1. We are informed that Dr. Aloys Wobben (appellant no.1, hereinafter referred to as, ‘the appellant’) is a scientist-engineer. It is also the case of the appellant, that he has to his credit several inventions in the field of wind turbine generators, and wind energy converters. The appellant claims to be owner and holder of various intellectual property rights, including approximately 2,700 patents (in more than 60 countries). Out of the aforesaid patents, we are informed, that the appellant has about 100 patents in India. The appellant is also engaged in the manufacture of wind-turbines. In the field of wind turbines, he claims a position amongst the three largest manufacturers in the world. The aforesaid manufacturing process is carried out by the appellant under the name of Enercon GmbH. Wobben Properties GmbH, appellant no.2, through an assignment agreement dated 05.01.2012, has acquired the right, title and interest in all the Indian registered designs and patents (including the pending registrations), belonging to Dr. Aloys Wobben. The appellant’s manufacturing process, is allegedly, carried out in about 27 countries. The Enercon Group claims to employ more than 8,000 people, worldwide. Insofar as India is concerned, Dr. Aloys Wobben has been carrying on the aforesaid manufacturing process, through a joint venture partnership with Yogesh Mehra and Ajay Mehra, (respondent nos.1 and 2 herein). The Indian enterprise is carried on in the trade name of Enercon India Limited (respondent no.3 herein). The name of respondent No.3, we are informed, has since been changed to Wind World (India) Limited. However, while dealing with the controversy in hand, we shall continue to refer to respondent No.3 as Enercon India Limited. In fact, Yogesh Mehra and Ajay Mehra (aforementioned), are the directors of Enercon India Limited.
2. Enercon India Limited was formed in 1994 as a joint venture, between Enercon GmbH and respondent Nos.1 and 2. Enercon India Limited, we are told, was originally carrying on its manufacturing process, in furtherance of licences granted by the appellant Dr. Aloys Wobben. According to the appellant, the licences to use technical know-how, were vested by the appellant with Enercon India Limited, through written agreements. These agreements were executed between the parties from time to time, and the last such agreement was executed on 29.9.2006. These agreements, according to the appellant, were intellectual property licence agreements. The last agreement dated 29.9.2006, we are informed, superseded all previous agreements (including the technical know-how agreement of 1994, and the technical know-how agreement of 2000). It is also the case of the appellant, that the intellectual property licence agreement dated 29.9.2006, was terminated by Enercon GmbH, on 8.12.2008. It is submitted, that non-fulfillment of the obligations contained in the intellectual property licence agreement dated 29.9.2006, was the reason for such termination.
3. According to the appellant, Dr. Aloys Wobben, despite the termination of all intellectual property licence agreements with Enercon India Limited, respondent nos.1 to 3 herein, continued the use of the appellant’s patents, and as such, the intellectual property rights belonging to the appellant, without due authority. This action by respondent nos. 1 to 3 has been of extreme detriment to the appellant, as his technical know-how was being exploited by the respondents, without consideration or authorisation. According to the factual position depicted in the impugned order, passed by the High Court of Delhi (hereinafter referred to as, the High Court), Enercon India Limited, had filed 19 “revocation petitions” before the Intellectual Property Appellate Board (hereinafter referred to as the “Appellate Board”) under Section 64(1) of the Patents Act, 1970 (hereinafter referred to as the ‘Patents Act’), in January 2009. Through the aforesaid petitions, Ene
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
