2008 Supreme(Mad) 2107

High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE P.K. MISRA & THE HONOURABLE MR. JUSTICE M. SATHYANARAYANAN
Mariappan & Another
Versus
A.R. Safiullah & Others
Case No : O.S.A.Nos.263 of 2006 and 283 of 2006
Decided On :30-06-2008

The grant of patent does not guarantee its validity and that no presumption of the validity of the patent can be drawn.

Headnote:

Whether the application for ad-interim injunction is maintainable in a suit filed under Patents Act, 1970? Whether the order of ad-interim injunction granted in O.A.No.495 of 2006 restraining the 4th respondent/4th defendant from in any manner passing off artificial banana leaves (food-grade laminated paper) manufactured and sold by him as and for applicants artificial banana leaves, is sustainable? Whether the order passed in O.A.No.494 of 2006 dismissing the application filed by the applicant/plaintiff for ad-interim injunction restraining the respondents/defendants from infringing the registered patent No.198079 in respect of food-grade laminated paper, method and apparatus for manufacture laminated paper is liable to be set aside?

Fact of the Case:

The applicant/plaintiff submitted that he is the proprietor of patent for "food-grade laminated paper, method and apparatus for manufacturing the laminated paper" granted to him in patent No.198079 with effect from 29th October, 2000 and he has also got design registered in his favour under the Designs Act which is valid till date. The applicant/plaintiff further submitted that since 2000 onwards, he sold artificial banana leaves worth more than 3.00 Lakhs. On earlier occasions there were infringements on account of the registered designs obtained by the applicant/plaintiff and therefore, he was constrained to institute number of suits against first defendant and got interim orders in his favour. When the applicant/plaintiff instituted a suit against one of the infringers at Kerala, he became aware that the 4th respondent/4th defendant has also manufacturing and selling artificial banana leaves and subsequent enquiry reveal that the defendants and connected persons are infringing the applicant/plaintiffs process and product. It is further stated by the applicant/plaintiff that the 4th respondent/4th defendant is a beneficiary associated with the third defendant and in the circumstances enumerated above, he had no other option except to file the present suit against the defendants for the larger relief to restrain them from patent infringement as well as passing off under the common law.

Finding of the Court:

We hold that even though the banana leaf is a natural product, the invention on the part of the applicant/plaintiff to use artificial laminated food-grade shape in the form of banana leaf with its colour with artificial scented smell is prima facie innovative and that in view of the Patent granted in his favour for the said product, he is entitled for protection pending disposal of the suit. We further hold that under Section 108 of the Patents Act, the applicant/plaintiff is entitled to maintain the suit under Patents Act. As regards the maintainability of application under Order 39 Rule 1 and 2 C.P.C. even without invoking the said provision, the Court in appropriate cases by invoking Section of 151 C.P.C. can grant such reliefs. Now, coming to the question of sustainability of the order passed in O.A.No.495 of 2006, we hold that even prior to the grant of patent, the applicant/plaintiff got a registered Design in respect of artificial laminated paper and the 4th respondent/4th defendant has not denied the fact that he is also manufacturing and marketing the similar kind of artificial laminated banana leaf though according to him it is of very small quantity. The applicant/plaintiff has not given the details of process under which he is manufacturing the laminated artificial banana leaf. Admittedly, even prior to the year 2000, the applicant/plaintiff is manufacturing the said product and marketing it and therefore, is having goodwill and trade name for his product and unless the 4th respondent/4th defendant is restrained by way of an interim measure from selling or marketing the said product, the applicant/plaintiff is bound to suffer irreparable loss and grave hardship and also financial loss. Therefore, prima facie appears that the balance of convenience is in favour of the applicant/plaintiff. Therefore, the interim order granted by the learned single Judge in O.A.No.495 of 2006 is sustained and accordingly, O.S.A.No.263 of 2006 filed by the 4th respondent/4th defendant challenging the vires of the said order, is dismissed. However, in the circumstances, there will be no order as to costs. In so far as non-granting of interim order in O.A.No.494 of 2006 is concerned, in the earlier portion of the judgment we hold that the protection of artificial banana leaf prima facie appears to be of not an invention but can be termed only as an innovation. Admittedly, as per the Patent Certificate dated 20.01.2006 patent was granted in favour of the applicant/plaintiff subject to the condition that the validity of the patent is not guarantee. In terms of Section 13(4) of the Patents Act, the grant of patent itself cannot be deemed to be prima facie case on the side of the patentee and it is a duty of the patentee to prove prima facie case as any other case of application for injunction. Since applications for opposition of grant of patent are pending adjudication before the appropriate authority, and that we are of the prima facie view that the concept of artificial banana leaf prima facie appears to be innovative only, we are not inclined to interfere with the order passed by the learned single Judge in O.A.No.494 of 2006. Accordingly, O.S.A.No.283 of 2006 filed by the applicant/plaintiff is dismissed and the orders passed by the learned single Judge in O.A.No.494 of 2006 are confirmed. However, in the circumstances, there will be no order as to costs. It is made clear that the observations made/findings given in these appeals are only for the purpose of adjudicating the issues involved and for deciding of these appeals and need not influence the mind of the appropriate authority at the time of deciding the pre and post grant oppositions of Patent granted in favour of the applicant/plaintiff.

Issues: Whether the application for ad-interim injunction is maintainable in a suit filed under Patents Act, 1970? Whether the order of ad-interim injunction granted in O.A.No.495 of 2006 restraining the 4th respondent/4th defendant from in any manner passing off artificial banana leaves (food-grade laminated paper) manufactured and sold by him as and for applicants artificial banana leaves, is sustainable? Whether the order passed in O.A.No.494 of 2006 dismissing the application filed by the applicant/plaintiff for ad-interim injunction restraining the respondents/defendants from infringing the registered patent No.198079 in respect of food-grade laminated paper, method and apparatus for manufacture laminated paper is liable to be set aside?

Ratio Decidendi: The grant of patent does not guarantee its validity and that no presumption of the validity of the patent can be drawn. The patent obtained by the applicant/plaintiff is only a process patent and not a product patent. The artificial banana leaf manufactured by the applicant/plaintiff is not an invention but an innovation. The applicant/plaintiff is entitled to maintain the suit under Patents Act. The application under Order 39 Rule 1 and 2 C.P.C. is maintainable even without invoking the said provision. The Court can grant such reliefs by invoking Section of 151 C.P.C. The order of ad-interim injunction granted in O.A.No.495 of 2006 restraining the 4th respondent/4th defendant from passing off artificial banana leaves is sustainable. The order passed in O.A.No.494 of 2006 dismissing the application filed by the applicant/plaintiff for ad-interim injunction restraining the respondents/defendants from infringing the registered patent No.198079 is not liable to be set aside.

Final Decision: O.S.A.No.263 of 2006 filed by the 4th respondent/4th defendant challenging the vires of the order passed in O.A.No.495 of 2006 is dismissed. O.S.A.No.283 of 2006 filed by the applicant/plaintiff is dismissed.