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2011 (4) ALLMR 573
High Court of Judicature at Bombay
MR. JUSTICE B.R. GAVAI
SERGI Transformers Explosion Prevention Technologies Private Limited
Versus
CTR Manufacturing Industries Limited
CIVIL REVISION APPLICATION NO. 185 OF 2011
Decided On: 06-06-2011
Patents Act, 1970 - Sections 104, 105 and 106-Counter claim-For revocation of patent- Suit for declaration under Section 105 or for any relief under Section 106 of Act to be instituted in District Court-Once counter claim made by defendant before District Court-Suit and counter claim to be transferred to High Court for decision.-Though a suit for declaration under Section 105 or for any relief under Section 106 has to be instituted in the District Court, where a counter claim for revocation is made by the defendant, the suit along with counter claim has to be transferred to the High Court for decision. When the Legislature has specifically provided that once counter claim is made by the defendant for revocation of patent the suit shall be transferred to the High Court, can a party be permitted to make a grievance that counter claim should not be permitted only on the ground that if the suit is decided by District Court, it would be decided expeditiously and if it is transferred to High Court, the decision would be delayed. When the Legislature has specifically provided that once counter claim for revocation of patent is made, the suit and the counter claim are to be transferred to the High Court, can a question of prejudice be permitted to be raised. It is settled law, that when the law requires a particular thing to be done in a particular manner, it has to be done in that manner alone. The question is when the Legislature has specifically provided that the suit and counter claim to be transferred to the High Court once a counter claim is made for revocation of patent, can an application for permission to place counter claim on record be rejected, only because the plaintiffs desire that the suit should be decided by the District Court and not the High Court. In Court’s respectful view, the answer will have to be No.
Civil Procedure Code, 1908 - Order VI, Rule 17-Amendment of written statement-Trial yet to commence -Issues also not framed-Trial Court ought to have allowed application for amendment-Courts required to take liberal view in matter of amendment-In matters of written statement Courts required to be more liberal-It is settled principle of law that the Courts are required to take liberal view in the matter of amendment. Insofar as the written statements are concerned, Courts are required to be more liberal. The only rider is in view of proviso to Order VI, Rule 17 of CPC which requires that amendment should not be granted if a party seeks to bring on record, a matter which with exercise of due diligence, it could have brought on record prior to commencement of trial. In that view of the matter, since the trial is yet to commence, even if an application for amendment of written statement incorporating counter-claim is filed today, the same would have been allowed as it would not be hit by the proviso to Order VI, Rule 17. Apart from that even according to the respondents-plaintiffs, the facts pleaded in the counter-claim are identical with the facts pleaded in the written statement. If that be so, there was no question of any prejudice being caused to the respondents-plaintiffs. In considered view, since the application in question was filed at the stage, when the issues are also not framed, the trial Court ought to have allowed the same.
By consent taken up for final hearing.
1. The applicant challenges the order dated 18.2.2011 passed by the learned District Judge, Thane below Ex.57 and the order dated 1.3.2011 passed below Ex.133 in Civil Suit No.1/2005.
2. There have been several rounds of litigation between the parties which have not only reached to this Court, but also upto the Apex Court.
3. Bare necessary facts for adjudication of present application are as under:
The respondents-plaintiffs have filed a Civil Suit bearing No.1/2010 in the Court of learned District Judge, Thane claiming infringement of patent and for an order of injunction restraining the defendant-applicant and defendant No.2 from infringing the plaintiffs’ patent by making, using, offering for sale and/or selling the impugned product. The suit was filed on 11.1.2010. The writ of summons was served on the defendant on 4.3.2010, written statement came to be filed by the present applicant on 20.3.2010. It appears that subsequently counter claim came to be filed on 8.4.2010 thereby seeking relief for revocation of patent of the plaintiff. An application was filed by the present applicant below Ex.57, for seeking leave to take defendant’s counter claim on record. An objection has been filed by the respondent-plaintiff below Ex.59, objecting to the counter claim under section 8 of the Court Fees Stamp Act. The learned Judge vide order dated 7.8.2010 has passed an order to the following effect:
“The application regarding allow to claim the counter claim on record amendment which is carried out and the order below Exh.5 will be considered simultaneously and also application under S.8 of Bombay Court Fee Stamp Act.”
It appears that Writ Petition No.6994/2010 came to be filed before this Court. The learned Judge of this Court (Hon’ble Mr. Justice J. H. Bhatia) vide order dated 15.9.2010 disposed of the said writ petition with certain clarification. It is pertinent to note the observations made by the learned Judge while disposing of the said writ petition:
“3. The learned Counsel for the petitioner contends that in view of the proviso to Section 104 of the Patents Act, since the counterclaim for revocation of the patent is made by the defendant, the suit along with the counter-claim has to be transferred to the High Court for decision and the District Court ceases to have jurisdiction. He contends that the question of jurisdiction should be decided first and then only other applications, particularly Ex.5 be considered. When the District Judge in the impugned order says that all these matters, including the application to make a counterclaim will be heard together, it is implied that he will also consider the question about jurisdiction. When the provisions of Sec.104 will be pointed out to the learned District Judge, he cannot ignore the said provisions. Whether the counter-claim is of the nature as stated in the proviso to Sec.104 will have to be heard by him before coming to the conclusion whether he has or has no jurisdiction. I see no illegality or irregularity in the impugned order that all these application shall be heard together. It is presumed that if he comes to the conclusion that he does not have jurisdiction in view of the provisions of Sec.104, naturally, he would desist from passing any order. However, if he comes to the conclusion that the case is not covered by the proviso to Sec.104 and he has jurisdiction, he cannot be restrained from hearing the application Exhibit 5 and from passing order on the same immediately after hearing the matter.”
It is further pertinent to note that while passing order below Ex.61 dated 12.11.2010, the learned District Judge has himself observed that if simpliciter issue regarding jurisdiction is framed by this Court, all the questions pertaining to jurisdiction including pecuniary and territorial jurisdiction and as to whether the jurisdiction is barred by specific provision of law can be considered together. Thereafter, vide order
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