Dr. Aloys Wobben vs. Yogesh Mehra
Dr. Aloys Wobben vs. Yogesh Mehra
Dr. Aloys Wobben vs. Yogesh Mehra
versus
JUDGMENT
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
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
claims a position amongst the three largest manufacturers in the world. The
aforesaid manufacturing process is carried out by the appellant under the name
assignment agreement dated 05.01.2012, has acquired the right, title and
interest in all the Indian registered designs and patents (including the pending
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
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
Mehra and Ajay Mehra (aforementioned), are the directors of Enercon India
Limited.
Enercon GmbH and respondent Nos.1 and 2. Enercon India Limited, we are
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
executed between the parties from time to time, and the last such agreement
of 2000). It is also the case of the appellant, that the intellectual property licence
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
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
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
Board”) under Section 64(1) of the Patents Act, 1970 (hereinafter referred to as
the ‘Patents Act’), in January 2009. Through the aforesaid petitions, Enercon
India Limited had sought revocation of the patents held in the name of the
appellant.
the “Appellate Board”, 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. We are informed that the first such suit (bearing no. 1349
of 2009) was filed on 27.7.2009. Three other similar suits (bearing nos. 1963 of
2009, 1967 of 2009 and 1968 of 2009) were instituted on 20.10.2009. The fifth
suit (bearing no. 176 of 2010) was instituted on 28.1.2010, the sixth suit (bearing
no. 1305 of 2010) was filed on 2.7.2010. The last suit (bearing no. 1333 of 2010)
was instituted on 5.7.2010. In all 10 “patent infringement suits”, were filed after
Enercon India Limited had already instituted 19 “revocation petitions”, before the
“Appellate Board”.
filed by the appellant Dr. Aloys Wobben, before the High Court. In the above
prayer for the revocation of the patent, which constituted the basis of the “patent
of the “infringement suits”. Illustratively, in response to the first suit bearing no.
1349 of 2009, the “counter-claim” was filed on 9.9.2009; to the suit bearing no.
1963 of 2009, the “counter-claim” was filed on 30.1.2010; to the suit bearing no.
petitions” before the “Appellate Board”, after the appellant’s institution of the
filed by the respondents in 2010 and 2011. The preceding two paragraphs, as
well as the instant paragraph, depict the timing of the filing of the “revocation
petitions” (by the respondents), the “infringement suits” (by the appellant) and 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
petitions” filed by the respondents, have been settled by the “Appellate Board”,
whereas, some are still pending consideration. Despite the above, the same
issues are being re-agitated by the respondents, before the High Court, through
the “counter-claims”.
8. The main contentions advanced by the learned counsel for the appellants,
emerge from Section 64 of the Patents Act. For a complete understanding of the
(b) that the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefor;
(h) that the complete specification does not sufficiently and fairly
describe the invention and the method by which it is to be
performed, that is to say, that the description of the method or the
instructions for the working of the invention as contained in the
complete specification are not by themselves sufficient to enable a
person in India possessing average skill in, and average knowledge
of, the art to which the invention relates, to work the invention, or
that it does not disclose the best method of performing it which was
known to the applicant for the patent and for which he was entitled to
claim protection;
(i) that the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the
specification;
(m) that the applicant for the patent has failed to disclose to the
Controller the information required by section 8 or has furnished
information which in any material particular was false to his
knowledge;
(2) For the purposes of clauses (e) and (f) of sub-section (1) –
(3) For the purpose of clause (1) of sub-section (1) no account shall be
taken of any use of the invention—
(5) A notice of any petition for revocation of a patent under this section
shall be served on all persons appearing from the register to be proprietors
of that patent or to have shares or interests therein and it shall not be
necessary to serve a notice on any other person.”
patent, relied upon by the learned counsel from the Patents Act, we shall
endeavour to deal with the submissions advanced at the hands of the learned
counsel for the appellants. In our considered view, even though some of the
submissions were differently worded, they were premised on exactly the same
challenge can be determined only at the hands of the High Court, i.e., while
dealing with the “counter-claim”. And that, the “Appellate Board” would thereafter
(after the filing of the “counter-claim” in the “infringement suit”), cease to have the
submissions advanced at the hands of the learned counsel for the appellants, on
a suit for infringement of a patent in the High Court, there can be no further
proceeding in the “revocation petition” filed before the “Appellate Board”. In this
behalf it was further contended, that it would make no difference, whether such
proceedings had been instituted prior to, or after the filing of the suit for
infringement.
“counter-claim” for revocation, was exclusive, and could not be taken away, by
behalf it was sought to be explained, that the proceedings before the High Court
against the same patent, on the same grounds, before the subordinate forum
(the “Appellate Board”), for the simple reason, that the inferior forum would have
Thirdly, it was submitted, that the jurisdiction vested with the High Court, to
could not be taken away by an independent petition for revocation, of the same
patent, and on the same grounds, pending before the “Appellate Board”. In this
behalf it was submitted that the “Appellate Board” was only an administrative
tribunal, which was neither superior to the High Court nor vested with a coequal
status (as that of the High Court). Accordingly it was submitted, that the
by the High Court (in an appropriate case, through writ proceeding) could not be
allowed to derail the plea of revocation raised through the “counter-claim”, before
instituted, the High Court alone would be vested with the charge for determining
the merits of the plea of revocation. Placing reliance on the proviso to Section
104 of the Patents Act, it was sought to be asserted that once a “counter-claim”
had been filed in a suit for infringement, the same was liable to be transferred to
10. Before we venture to deal with the submissions advanced at the hands of
the learned counsel for the appellants, it is important to first analyze the options
available for revocation of a patent under Section 64(1). In our considered view,
Section 64(1) vests the liberty to raise a challenge to a patent in three different
petition of the Central Government. In case of the above two options, the petition
for revocation would lie before the “Appellate Board”. Thirdly, by way of a
contained in the provisions of the Patents Act, the locus standi for revocation of a
a “counter-claim”. Depending on the specific part of the provision relied on, such
challenge is permissible before two different fora, i.e., the “Appellate Board”, or
the jurisdictional High Court. Our above determination emerges from a reading
11. A perusal of Section 64(1) of the Patents Act reveals, that more or less,
granted, despite there being a valid and genuine claim, of earlier priority
(sub-section (1)(a) of Section 64); or if the patent was granted to a person not
entitled to the same (sub-section (1)(b) of Section 64); or if the patent was
Section 64); or if the patent was granted in respect of a matter, which is not an
respect of a matter, which was not new (sub-section (1)(e) of Section 64); or if
the patent was granted in respect of a matter, which is obvious, or does not
involve any inventive step (sub-section (1)(f) of Section 64); or if the patent was
64); or if the patent is granted in respect of a matter, which does not fully explain
the description, or the working of the invention, to a person having a nexus to the
subject to which the invention relates (sub-section (1)(h) of Section 64); or if the
patent was granted in respect of a matter, which is not distinctly and definitely
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Section 64); or if the patent was granted in respect of a matter, which could not
have been granted if the matter had been fully and completely disclosed
matter, which was already secretly being used in India (sub-section (1)(l) of
Section 64); or if the patent was granted, despite the failure to disclose the
Section 64); or if the directions of secrecy, issued under the Patents Act, have
for the grant of a patent outside India (sub-section (1)(n) of Section 64); or if the
(1)(o) of Section 64); or if the details of the invention, do not disclose (or wrongly
disclose), the source or the origin of the biological material used therein
(sub-section (1)(p) of Section 64); or if the details of the invention, were available
12. We shall now briefly notice, the remedies available to a person interested
Patents Act, other than under Section 64. It is critical, in the facts and
conjunction with the other provisions of the Patents Act, whereunder, the grant of
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a patent can also be assailed. In this behalf, first and the foremost, reference
herein:
“25. Opposition to the patent— (1) Where an application for a patent has
been published but a patent has not been granted, any person may, in
writing, represent by way of opposition to the Controller against the grant
of patent on the ground-
(a) that the applicant for the patent or the person under or through
whom he claims, wrongfully obtained the invention or any part
thereof from him or from a person under or through whom he claims;
(g) that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the
information required by section 8 or has furnished the information
which in any material particular was false to his knowledge;
and the Controller shall, if requested by such person for being heard, hear
him and dispose of such representation in such manner and within such
period as may be prescribed.
(2) At any time after the grant of patent but before the expiry of a period
of one year from the date of publication of grant of a patent, any person
interested may give notice of opposition to the Controller in the prescribed
manner on any of the following grounds, namely:-
(g) that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h) that the patentee has failed to disclose to the Controller the
information required by section 8 or has furnished the information
which in any material particular was false to his knowledge;
(3) (a) Where any such notice of opposition is duly given under
sub-section (2), the Controller shall notify the patentee.
(6) In case the Controller issues an order under sub-section (4) that the
patent shall be maintained subject to amendment of the specification or
any other document, the patent shall stand amended accordingly.”
13. A perusal of Section 25 of the Patents Act reveals, that “any person”, and
not just a “person interested” (as in the case of Section 64 of the Patents Act),
can “represent by way of opposition” against an application filed for the grant of a
patent. This opportunity, has been made available, even before a patent has
application for the grant of a patent has been published. More or less, generally
speaking, the grant of a patent can be opposed, if the applicant for the patent,
had wrongfully obtained the invention, from the representationist, who opposes
the grant of the patent (sub-section (1)(a) of Section 25); or if the application for
the patent is published, before the priority date of the claim (sub-section (1)(b) of
published, after an application for the same invention, has already been
a patent is sought, was publicly known or used before the priority date
which is obvious and does not involve any inventive step (sub-section (1)(e) of
application for a patent, has been made in a manner which does not clearly
(1)(g) of Section 25); or if the applicant for a patent, has failed to disclose
patent, is in the nature of a convention application, and the application was made
after more than one year, after the first application was made in a convention
country (sub-section (1)(i) of Section 25); or if the application for a patent does
not disclose (or wrongly discloses), the source or the origin of the biological
material used therein (sub-section (1)(j) of Section 25); or if the application for an
14. A perusal of Section 25(2) reveals that only a “person interested” and not
“any person” (as in the case of Section 25(1) of the Patents Act) may challenge
the grant of a patent, within one year of the publication of such grant, by issuing a
“notice of opposition” to the “Controller”. The above provision also reveals, more
made on the grounds depicted in sub-sections (1)(a), (b), (c), (d), (e), (f), (h), (m),
and (o) of Section 64 of the Patents Act. The remaining grounds for raising a
challenge under Section 25(2), coincide with those contained in Section 25(1) of
the grant of a patent under sub-section (1) of Section 25. There is however a
substantial difference in the locus, for raising such a challenge, after the patent
has been granted. Whereas “any person” can “represent by way of opposition”,
to an application for the grant of a patent (under Section 25(1) of the Patents
Act), only a “person interested” can challenge the grant of a patent by issuing a
“notice of opposition” (under Section 25(2) of the Patents Act). On the subject of
locus, therefore, Section 25(2) and Section 64(1), are alike, inasmuch as, the
locus to raise a challenge to a patent granted, lies with “any person interested” in
both of these provisions. A challenge to the grant of a patent can also be raised
16. When a challenge is raised at the pre-grant stage, under Section 25(1) of
the Patents Act, the same is liable to be determined at the hands of the
appeal before the “Appellate Board”. When a challenge is raised under Section
25(2), it must be raised within one year of the publication of the grant (of patent).
final order, on a notice of opposition filed under Section 25(2). Such order
“counter-claim” seeking the revocation of the concerned patent, the said process
of adjudication would lie before the jurisdictional High Court (see, the proviso to
17. Having heard learned counsel, and having examined the different
prefaced by the words “Subject to the provisions contained in this Act,…..”. And
not by the words, “Without prejudice to the provisions contained in this Act…..”,
or “Notwithstanding the provisions contained in this Act…”. The words with which
the legislature has prefaced Section 64, necessarily lead to the inference, that
the provisions contained in Section 64 are subservient to all the other provisions
contained in the Patents Act. This exordium to Section 64 of the Patents Act
mandates, that the directive contained in Section 64, would be subservient and
deferential, to the other provisions of the Patents Act. Stated simply, if there is
any provision under the Patents Act, which is in conflict with the mandate
contained in Section 64, Section 64 of the Patents Act would stand eclipsed, and
the other provision(s), would govern the field under reference. Therefore, no
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18. If any proceedings have been initiated by “any person interested”, under
Section 25(2) of the Patents Act, the same will eclipse the right of the same
person to file a “revocation petition” under Section 64(1) of the Patents Act. And
also, to invoke the right granted under Section 64(1) of the Patents Act, to file a
patent). This, in our view, would be the natural effect of the words, “Subject to
64(1) of the Patents Act. And if, the above meaning is not to be assigned to the
words “Subject to the provisions of this Act…..”, they would be redundant and
referred to above. The above situation, in our considered view, is unlikely to ever
arise. This is because, Section 25 of the Patents Act, inter alia, provides for the
procedure, for the grant of a patent. The procedure commences with the filing of
patent sought. The next step envisages, the filing of representations by way of
opposition (to the grant of the patent). This advances into a determination by the
“Controller”, to grant or refuse the patent. The decision of the “Controller”, leads
to the publication of the grant (of the patent). This process finalises the decision
of the grant of the patent. All the same, it does not finally crystalise, the right of
the patent holder. After the grant is published, “any person interested”, can issue
a notice of opposition, within one year of the date of publication of the grant of a
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patent. If and when, challenges raised to the grant of a patent are disposed of
favourably, to the advantage of the patent holder, the right to hold the patent can
opposition is preferred, within one year of the date of publication of the grant of a
patent, the grant would be deemed to have crystallized. Thus, only the
bestows the final approval to the patent. Therefore, it is unlikely and quite
under Section 25(2) are pending, or within a year of the date of publication of the
grant of a patent.
19. The defendant party to a suit for infringement, who seeks to repudiate the
to raise a challenge, to the validity of the patent assigned to the author of the suit
(under Section 64 of the Patents Act). This is so, because a “counter-claim” can
be filed only by such person, against whom a suit for infringement has been filed
(by the patent-holder). The grounds of such challenge have already been
enumerated above.
assail the grant of a patent under Section 64(1) of the Patents Act. This is in
25(2) of the Patents Act. In the above scenario, it is necessary to first appreciate
the true purport of the words “any person interested”. The term “person
interested” has been defined in Section 2(1)(t) of the Patents Act. Unless the
same field as that to which the invention relates”. Simply stated, a “person
interested” would include a person who has a direct, present and tangible interest
with a patent, and the grant of the patent, adversely affects his above rights. A
independent use of either the invention itself (which has been patented), or
desires to exploit the process (which has been patented) in his individual
production activity. Therefore, the term “any person interested” is not static. The
same person, may not be a “person interested” when the grant of the concerned
patent was published, and yet on account of his activities at a later point in time,
of the Patents Act additionally vests in “any person interested”, the liberty to
assail the grant of a patent, by seeking its revocation. The grounds of such
21. Based on the two remedies contemplated under Section 64 of the Patents
Act, the fifth contention of the learned counsel for the appellants was, that the
use of the word “or” in Section 64(1) demonstrates, that the liberty granted to any
counsel for the appellants, that the word “or” is clearly disjunctive, and cannot be
must choose one of the above remedies. It is the pointed assertion of the
learned counsel for the appellants, that in the present case the respondents, by
assuming the position and posture of “any person interested”, have filed
“revocation petition(s)” to assail the same patent, which have at the same time
submission of the learned counsel for the appellants, that the respondents must
choose only one, of the above remedies. The course of action adopted by the
respondents, according to the learned counsel for the appellants, could lead to
“counter-claim”.
22. We do not have the slightest hesitation in accepting the above contention
(fifth in the series of contentions), that even though more than one remedies are
available to the respondents in Section 64 of the Patents Act, the word “or” used
therein separating the different remedies provided therein, would disentitle them,
to avail of both the remedies, for the same purpose, simultaneously. On principle
23. Keeping in view the submissions advanced at the hands of the learned
counsel for the appellants (as have been noticed in the foregoing paragraphs),
the question which arises for determination is, that having chosen both the above
remedies, which one of the two, should the respondents, be permitted to pursue.
The answer to the above query, will, if possible, have to be determined from the
provisions of the Patents Act itself. In this behalf we may at the outset record,
that learned counsel for the rival parties, did not invite our attention to any
provision from the Patents Act, which would provide a clear pointer, to the course
to be adopted. Whilst it was undoubtedly submitted, on the one hand, that the
choice should fall in favour of the superior forum. Details about the locus, in
would be with the superior forum, i.e., the jurisdictional High Court (Sections
64(1) and 104 of the Patents Act). The above submission was sought to be
countered, on the other hand, by pointing out, that the opportunities provided by
the legislature to assail the order(s) passed under the Patents Act, could not be
reduced. In this behalf, it was submitted, that the remedies provided by the
legitimate inference derived from the former submission, was thus equally
could emerge from the provisions of the Patents Act, it would be essential, to rely
jointly, with the suit filed by the plaintiff, and has the same effect as a cross-suit.
and is governed by the rules applicable to plaints. The court trying a suit, as well
as, the “counter-claim”, has to pronounce its judgment on the prayer(s) made in
the suit, and also, those made in the “counter-claim”. Since a “counter-claim” is
proceed, where the defendant has already instituted a suit against the plaintiff, on
the same cause of action. The above conclusion is drawn on the basis of the
Procedure, 1908 (hereinafter referred to as, the CPC) read with Section 151 of
the CPC. Both the above provisions are being extracted hereunder:-
“10. Stay of suit.- No Court shall proceed with the trial of any suit in
which the matter in issue is also directly and substantially in issue in
a previously instituted suit between the same parties, or between
parties under whom they or any of them claim litigating under the
same title where such suit is pending in the same or any other Court
in India having jurisdiction to grant the relief claimed, or in any Court
beyond the limits of India established or continued by the Central
Government and having like jurisdiction, or before the Supreme
Court.
Explanation- The pendency of a suit in a foreign Court does not
preclude the Courts in India from trying a suit founded on the same
cause of action.
subsequently instituted suit on the same issue between the same parties, cannot
cause of action. The natural conclusion in the above situation would be, the
validity of the grant of the patent would have to be determined in the “revocation
petition”. Therefore, in the above situation, while the “revocation petition” will
cross-suits filed by the rival parties, before different jurisdictional courts. In our
25. In cases where the “infringement suit(s)” was/were filed by the appellant
herein (as plaintiff in the “infringement suit”), before the “revocation petition(s)”
was/were filed by the respondents (as defendants in the “infringement suit”), the
patent, under the strength and authority emerging from Section 64(1) of the
suit(s)”, on the same analogy as has been recorded above, it would not be open
judicata. As such, “revocation petitions” filed later in point of time, than the
cases, the prayer for revocation of the patent shall be adjudicated, while
26. Having examined the four contentions advanced at the hands of the
therefrom:
Firstly, if “any person interested” has filed proceedings under Section 25(2) of the
Patents Act, the same would eclipse all similar rights available to the very same
person under Section 64(1) of the Patents Act. This would include the right to file
64(1) of the Patents Act), as also, the right to seek the revocation of a patent in
of the liberty vested in him under Section 64(1) of the Patents Act, prior to the
from seeking the revocation of the patent (on the basis whereof an “infringement
suit” has been filed against him) through a “counter-claim”. This denial of the
sought the revocation of a patent (on the basis whereof the “infringement suit”
has been filed) through a “counter-claim”, the defendant cannot thereafter, in his
“revocation petition” under Section 64(1) of the Patents Act, is also based on the
27. The sixth contention advanced at the hands of the learned counsel for the
appellants was, that insofar as the present controversy is concerned, the same
was liable to be governed by the consent order, which was passed by the High
Court on 1.9.2010, wherein the respondents (as defendants) had agreed, that the
and should be heard by the High Court itself. The above consent order is being
extracted hereunder:-
(a) Dr. Aloys Wobben v. Enercon India Limited, C.S. (O.S.) 1967
of 2009;
(b) Enercon GmbH v. Enercon (India) Ltd. & Anr., C.S. (O.S.)
1968 of 2009;
(c) Aloys Wobben v. Yogesh Mehra & Ors., C.S. (O.S.) 1349 of
2009;
(d) Aloys Wobben v. Yogesh Mehra & Ors., C.S. (O.S.) 1963 of
2009;
(e) Aloys Wobben v. Savita Oil Technologies Limited & Ors., C.S.
(O.S.) 1333 of 2010;
(f) Aloys Wobben v. KS Oils Limited & Ors., C.S. (O.S.) 1335 of
2010;
(g) Aloys Wobben v. Amtech (India) Electronics Ltd. & Ors., C.S.
(O.S.) 176 of 2010;
(h) Aloys Wobben v. Vayu (India) Power Corporation Limited, C.S.
(O.S.) 1501 of 2010.
(a) I.A. no. 9431 of 2009 in C.S. (O.S.) no. 1349 of 2009
(b) I.A. no. 13460 of 2009 in C.S. (O.S.) no. 1967 of 2009
(c) I.A. no. 13463 of 2009 in C.S. (O.S.) no. 1968 of 2009
(d) I.A. no. 13448 of 2009 in C.S. (O.S.) no. 1963 of 2009
(e) I.A. no. 8368 of 2010 in C.S. (O.S.) no. 1333 of 2010
(f) I.A. no. 8467 of 2010 in C.S. (O.S.) no. 1335 of 2010
(g) I.A. no. 9753 of 2010 in C.S. (O.S.) no. 1501 of 2010
(b) I.A. no. 4096 of 2010 (filed under Order 39 Rule 2A of the
Code of Civil Procedure) in C.S. (O.S.) 1968 of 2010.
The parties further state that the issues that arise in the above applications
be treated as issues in the main suit.
(j) The suits shall be listed for final arguments before the Court,
after the completion of the above procedure.
5. The parties agree that the schedule as mutually set above will be
complied with to enable expedited trial in the above suits.
6. This Court directs that the parties shall follow the procedure
indicated in para 5 above and adhere to the schedule outlined therein.
The Court also directs disposal of the applications mentioned in paras 2
and 3 above, with appropriate liberty, mentioned in para 2.
7. List all the suits for directions on 16 th November, 2010 and again on
24th December, 2010.”
It was also the submission of the learned counsel for the appellants, that the
above consent order was given effect to, inasmuch as, the High Court had
was submitted, that even after the above consent order dated 1.9.2010 was
passed by the High Court, the respondents had continued to pursue their
aforesaid course having been adopted by the respondents, it was submitted, that
orders of revocation had been passed in respect of six patents granted to the
appellant. It was submitted, that all the above patents were also subject to
consideration in “counter-claims”, pending before the High Court. It was also the
contention of the learned counsel for the appellants, that the course adopted by
submitted, that the above course adopted by the respondents being wrong and
illegal, should not be permitted. In this behalf, it was also the contention of the
respect of the same cause of action, between the same parties, was
impermissible in law.
advanced on behalf of the learned counsel for the appellants. It is now well
settled, that rules of procedure are meant to ensure justice to the concerned
parties, based on their substantive rights. It is therefore commonly said, that all
rules of procedure, are nothing but handmaids of justice. In a matter as the one
in hand, if the dispute has to be settled stricto sensu, according to the procedure
which will have to be adopted by the concerned parties, depending upon the date
of institution of proceedings under Section 25(2) of the Patents Act, the date of
Chapter XVIII of the Patents Act. Based on the factual position noticed at the
beginning of the instant order, it is apparent, that the appellant has filed at least
infringement suits” filed by the appellant. In the present facts and circumstances,
even though the challenge to the same patent, by our above determination, has
present, yet the same are to be pursued before different fora. In the instant case,
the disputation is of the same nature, and between the same parties, even
for the parties concerned, to agree to resolve the same, before a singular
would be open for them by consent, to accept one of the remedies, out of the
plural remedies, which they would have to pursue in the different cases, pending
between them, to settle their dispute. Having consented to one of the available
remedies postulated under law, it would not be open to either of the consenting
parties, to seek redressal from a forum in addition to the consented forum. We,
therefore hereby affirm, that the consent order passed by the High Court on
1.9.2010, being on the subject of procedure, and being before a forum which had
the statutory jurisdiction to deal with the same, was fully justified in the facts and
29. The next and the last contention advanced at the hands of the learned
counsel for the appellants, was based on Section 124 of the Trade Marks Act,
1999 (hereinafter referred to as, ‘the Trade Marks Act’). Section 124
the court trying the suit (hereinafter referred to as the court), shall,—
Registrar or the Appellate Board, stay the suit pending the final
disposal of such proceedings;
(2) If the party concerned proves to the court that he has made any
such application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand stayed until the final
disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall proceed with the suit
in regard to the other issues in the case.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory order
(including any order granting an injunction directing account to be kept,
appointing a receiver or attaching any property), during the period of the
stay of the suit.”
It was the vehement contention of the learned counsel for the appellants, that a
similar situation, as the one which has arisen in the present controversy, has
been dealt with by the legislature under the Trade Marks Act, inasmuch as,
Section 124 gives power to the concerned court to stay the proceedings in a suit
rectification of the trade mark, initiated by the defendants before the “Appellate
Board”. It was accordingly the contention of the learned counsel for the
appellants, that even though a similar situation, as the one catered to under the
Trade Marks Act, could arise out of a disputed grant of a patent under the
Patents Act, no such protective measure has been provided for by the legislature
30. It is necessary to keep in mind, that the instant submission was advanced
at the hands of the learned counsel for the reason, that the appellants did not
dealing with the submission advanced by the learned counsel for the appellants,
we have accepted the contention advanced at the hands of the learned counsel
for the appellants, that only one out of two remedies available under Section 64
of the Patents Act, can be availed of, so as to assail the grant of a patent.
Accordingly the said remedy may be availed of in the capacity of either “any
have already concluded hereinabove, that having availed of any one of the above
remedies, it is not open to the same person to assail the grant of a patent by
conclusion, the instant submission advanced by the learned counsel for the
31. The impugned order is therefore set aside, in the terms recorded
…..…………………………….J.
(A.K. Patnaik)
..………………………………..J.
(Jagdish Singh Khehar)
New Delhi;
June 2, 2014.