Mariappan v. A.R.Safiullah

laminated paper) manufactured and sold by them and for applicant'sartificial banana leaves (food-grade laminated paper) by usingidentical or deceptively similar same colour scheme, getup andlayout or in any other manner. 3. The sum and substance of the averments made in bothapplications are as follows:-The applicant/plaintiff submitted that he is the proprietor ofpatent for "food-grade laminated paper, method and apparatus formanufacture the laminated paper" granted to him in patent No.198079with effect from 29th October, 2000 and he has also got designregistered in his favour under the Designs Act which is valid tilldate. The applicant/plaintiff has been manufacturing and sellingfood-grade laminated paper resembling a banana leaf ever since theyear 2000. By virtue of grant of patent under patent No.189079 witheffect from August 2000, he is exclusively entitled to manufacturethe artificial food-grade laminated paper resembling a banana leaf.The applicant/plaintiff further submitted that since 2000 onwards,he sold artificial banana leaves worth more than 3.00 Lakhs. Onearlier occasions there were infringements on account of theregistered designs obtained by the applicant/plaintiff andtherefore, he was constrained to institute number of suits againstfirst defendant and got interim orders in his favour. When theapplicant/plaintiff instituted a suit against one of the infringersat Kerala, he became aware that the 4th respondent/4th defendant hasalso manufacturing and selling artificial banana leaves andsubsequent enquiry reveal that the defendants and connected personsare infringing the applicant/plaintiff's process and product. It isfurther stated by the applicant/plaintiff that the 4threspondent/4th defendant is a beneficiary associated with the thirddefendant and in the circumstances enumerated above, he had noother option except to file the present suit against the defendantsfor the larger relief to restrain them from patent infringement aswell as passing off under the common law.4. This Court had granted ex parte orders of ad-interiminjunction in favour of the applicant/plaintiff. 5. The fourth respondent/4th defendant had filed applicationNos.2278 and 2279 of 2006 in O.A.Nos.494 and 495 of 2006 inC.S.No.448 of 2006 for vacating the ex parte orders of ad-interiminjunction granted in favour of the applicant/plaintiff. In theaffidavit filed in support of the above said applications, the 4threspondent/4th defendant has stated that the claim of theapplicant/plaintiff that he conceived idea of artificial laminatedbanana leaves for serving and storing food and it is his original,intellectual property is wholly unsustainable. It is furthersubmitted by the 4th respondent/4th defendant that the laminationis a technology well known in India for several decades and several https://hcservices.ecourts.gov.in/hcservices/ companies including M/s.Jailaxmi Engineering Corporationmanufactured machines which are used for lamination of paper andother products and the 4th respondent/4th defendant also makesnecessary dyes ready for printing and cutting paper to a particularshape. The concept of food-grade laminated paper is well known andused all over the world and both the process of manufacture offood-grade laminated paper (method and apparatus) and the productitself are well known and used in India. It is also submitted bythe 4th respondent/4th defendant that the patent obtained by theapplicant/plaintiff is only the process patent and not a productpatent and even at the time of pendency of the application forpatent, he filed application before the concerned authority forpatent pre-grant opposition and after the grant of patent also, hefiled post-grant opposition and the same are pending adjudication.It is a specific case of the 4th respondent/4th defendant that themodifications made to printing machine by the applicant/plaintiffare not novel and do not constitute an invention within the meaningof Patents Act. The manufacturing process involved is nothing butlaminated paper which is green in colour with a design and cut inthe shape of banana leaf cannot be termed as original orintellectual property of the applicant/plaintiff and the leaf of abanana plant is a product of nature and no person can haveproprietary right over such shape or even claim that he designed abanana leaf. It is also the submission of the 4th respondent/4thdefendant that mere grant of patent alone does not lead to a primafacie conclusion that the Patent is valid or that it is a novel ornew and he is not copying the method and process adopted by theplaintiff for manufacture of laminated paper. On a point of law, ithas been contended by the 4th respondent/4th defendant, that anapplication for ad-interim injunction restraining him from passingoff is not maintainable in terms of the provisions of the PatentsAct, 1970. 6. In respect of the applications filed by the 4threspondent/4th defendant, the applicant/plaintiff has filed hisreply. All the applications were dealt together and the learnedsingle Judge has ordered application No.495 of 2006 and therebygranted ad-interim injunction restraining therespondents/defendants from in any manner passing off theartificial banana leaves (food-grade laminated paper) manufacturedand sold by the respondents/defendants as and forapplicant/plaintiff's artificial banana leaves by using identicalor deceptively similar same colour scheme, getup and layout tillthe disposal of the suit.7. The learned single Judge, in so far as the applicationNo.494 of 2006 is concerned, which has been filed for the relief ofad-interim injunction restraining the respondents/defendants from https://hcservices.ecourts.gov.in/hcservices/ infringing the registered patent No.198079 in respect of food-gradelaminated paper etc., has closed the said application. 8. The applicant/plaintiff aggrieved by the order of thelearned single Judge in closing the application in O.A.No.494 of2006, has filed an appeal in O.S.A.No.283 of 2006 and the 4threspondent/4th defendant aggrieved by the order of ad-interiminjunction granted in O.A.No.495 of 2006 has filed an appeal inO.S.A.No.263 of 2006.9.Now, the points for consideration in these appeals are:-(a) Whether the application for ad-interim injunction ismaintainable in a suit filed under Patents Act,1970?(b) Whether the order of ad-interim injunction grantedin O.A.No.495 of 2006 restraining the 4th respondent/4thdefendant from in any manner passing off artificialbanana leaves (food-grade laminated paper) manufacturedand sold by him as and for applicant's artificial bananaleaves, is sustainable?(c) Whether the order passed in O.A.No.494 of 2006dismissing the application filed by theapplicant/plaintiff for ad-interim injunctionrestraining the respondents/defendants from in anymanner infringing the applicant's registered patent inrespect of food-grade laminated paper, method andapparatus for manufacture laminated paper is liable tobe set aside?10. Heard Mr.Arvind P Dattar, learned senior counsel appearingfor the appellant/4th respondent/4th defendant in O.S.A.No.263 of2006 and Mr.P.S.Raman, learned senior counsel appearing for theappellant/applicant/plaintiff in O.S.A.No.283 of 2006. 11. The learned senior counsel appearing for the 4threspondent/4th defendant had made the following submissions:-(a) The patent granted to the applicant/plaintiff is notvalid and that no prima facie case has been made out inhis favour;(b) The patent which is subject matter of the presentdispute is not a novel or patentable invention;(c) The applicant/plaintiff has merely copied prior Art;(d) The suit filed is only confined to the Patents Actand all relief including the relief of passing off is https://hcservices.ecourts.gov.in/hcservices/ only claimed vis-à-vis, the registered patent;(e) The design of banana leaf registered in favour of theapplicant/plaintiff is not a valid one;(f) The validity of new patent granted in favour of theplaintiff/applicant is questioned and therefore, noinjunction can be granted.(g) No monopoly rights no injunction can be granted:12. The patent granted to the applicant/plaintiff is notvalid and that no prima facie case has been made out inhis favour:-The learned senior counsel appearing for the 4threspondent/4th defendant has submitted that the grant of a patentdoes not guarantee its validity and he invited the attention ofthis Court to the Patent Registration Certificate dated 20.01.2006granted in favour of the applicant/plaintiff. A perusal of the saidcertificate would reveal that a patent has been granted in favourof the applicant/plaintiff to have the exclusive right to preventthird parties from making, using, offering for sale, selling orimporting for those purposes the (food-grade laminated paper,method and apparatus for manufacturing the laminated paper for aperiod of 20 years with effect from 29.08.2000 and the saidcertificate also states that the patent granted is subject to theconditions that the validity of this patent is not guaranteed andthat the fee prescribed for the continuance of this patent are dulypaid. The learned senior counsel for the 4th respondent/4thdefendant has also drawn the attention of this Court to Section 13(4) of the Patents Act, 1970. The said provision says that theexamination and investigations required under Section 12 and thisSection shall not be deemed in any way to warrant the validity ofany patent and no liability shall be incurred by the CentralGovernment or any officer thereof by reason of, or in connectionwith, any such examination or investigation or any report or otherproceedings consequent thereon. Therefore, according to the learnedsenior counsel in terms of Section 13(4), grant of patent in favourof the applicant/plaintiff does not ensure its validity. Thelearned senior counsel appearing for the 4th respondent/4thdefendant has taken this Court to the judgment reported in AIR 1982SC 1444 – M/s.Bishwanath Prasad Radhey Shyam v. M/s. HindustanMetal Industries. In paragraph No.33 of the said judgment, theHon'ble Supreme Court has referred to Section 13(4) of the PatentsAct and held that the grant and sealing of the patent, or thedecision rendered by the Controller in the case of opposition, doesnot guarantee the validity of the patent, which can be challenged https://hcservices.ecourts.gov.in/hcservices/ before the High Court on various grounds in revocation orinfringement proceedings. 13. The learned senior counsel for the appellant inO.S.A.No.263 of 2006/4th respondent/4th defendant has referred tothe pre-grant opposition filed by the 4th respondent/4th defendantin respect of the application for patent submitted by theapplicant/plaintiff. It is further submitted by the learned seniorcounsel that after the grant of patent also, the 4th respondent/4thdefendant filed his post-grant opposition and both applications arepending adjudication. Therefore, according to the learned seniorcounsel, that merely because the applicant/plaintiff had obtainedregistration of patent, it cannot be presumed to be valid and suchregistration alone cannot be the basis for the applicant/plaintiffto claim that he has got a prima facie case in his favour. Now weare dealing with points on which, 4th respondent/4th defendant ismaking his submissions;14. The patent which is subject matter of the presentdispute is not a novel or patentable invention.The learned senior counsel appearing for the appellant inO.S.A.No.263 of 2006/4th respondent/4th defendant has submittedthat as per the patent certificate issued in favour of theapplicant/plaintiff, the patent is for food-grade laminated paper,method apparatus for manufacture of laminated paper and it is notfor a laminated banana leaf. The learned senior counsel furthersubmitted that the patent obtained is only for process and not forthe product if 'artificial banana leaf' and the applicant/plaintiffhas miserably failed to establish as to how the patent for processis new, novelty or involves an invention or how the process iseconomically beneficial. Further, according to the learned seniorcounsel for the appellant in O.S.A.No.263 of 2006, the process ofmanufacture of food-grade laminated paper are well known and usedin India for several decades and nothing new was involved inmanufacturing a laminated paper in the shape of banana leaf. It isalso submitted by the learned senior counsel that even the designof the banana leaf cannot be termed as original or the intellectualproperty of the applicant/plaintiff as it is a product of natureand no person including the applicant/plaintiff can holdproprietary right over such shape or even claim that he designed abanana leaf and that plastic, steel and even ceramic plates havebeen made in the shape and design of banana leaf for the pastseveral years. The machineries which are used for making the paperwith laminated quoting, the artificial banana leaf are made byJailaxmi Engineering Corporation and such machineries manufacturedby them have been sold all over India and therefore the manufactureof laminated paper does not involve any invention or novelty also. https://hcservices.ecourts.gov.in/hcservices/

15. The applicant/plaintiff has merely copied prior art:The learned senior counsel appearing for the appellant inO.S.A.No.263 of 2006 has invited the attention of this Court to theapplication filed by the applicant/plaintiff for grant of patentwhich verbatim reveals the methodology of manufacturing laminatedshape in United Kingdom and United States of America. According tothe learned senior counsel, there are at least five prior patentsin United Kingdom and United State of America for laminationprocess and purpose and therefore no invention or novelty isinvolved in the manufacture of artificial banana leaf on the partof the applicant/plaintiff.16. The suit filed is only confined to the Patents Actand all relief including the relief of passing off isonly claimed vis-à-vis, the registered patent:The learned senior counsel appearing for the appellant inO.S.A.No.263 of 2006/4th respondent/4th defendant has drawn theattention of this Court to the plaint filed in C.S.No.448 of 2006.A perusal of the same would reveal that the plaint is filed underSection 48, 104 and 108 of the Patents Act, 1970. it is a specificcontention of the learned senior counsel that the relief of passingoff cannot be granted under Patents Act and that the suit as framedis not maintainable in law and that the suit should have been filedcombining the cause of action under Patents and Designs Act. It isalso contended by the learned senior counsel, the relief of passingoff can be granted under common law when there is no pleadingavailable either in the plaint or in the affidavit filed in supportof O.A.Nos.494 and 495 of 2006 claiming relief under common law andtherefore the order of injunction granted in O.A.No.495 of 2006against the appellant restraining him from passing off a product isper se unsustainable in law. The learned senior counsel alsosubmitted that there is no mention of even the registration numbersof the design or even the features of the design on which theapplicant/plaintiff claims copyright in the plaint as well as inthe affidavit filed in support of the injunction applications andtherefore no relief should have been granted in his favour. 17. The design of banana leaf registered in favour of theapplicant/plaintiff is not a valid one:The learned senior counsel appearing for the appellant inO.S.A.No.263 of 2006 submitted that there is nothing new ororiginal in the same for shape and configuration of banana leaf asthe banana leaf is nature's creation and the applicant/plaintiffcannot claim that he conceived the design, shape, colour andparallel nerves. The design of banana leaf on plates for consumingfood is well known and such plates have been made for decades outof silver, stainless steel, glass and ceramic and there is nonovelty or innovation in the design of the artificial banana leaf https://hcservices.ecourts.gov.in/hcservices/ on the part of the applicant/plaintiff and therefore, according tothe learned senior counsel the grant of such patent in favour ofthe applicant/plaintiff is against the provisions of the PatentsAct. Moreover the 4th respondent/4th defendant had also filedpre/post grant opposition of the patent and those applications arepending adjudication and no finality has been reached and since nofinality has been reached, in view of the same, injunctionregarding passing off should not have been granted in favour of theapplicant/plaintiff. 18. The validity of new patent granted in favour of theplaintiff/applicant is questioned and therefore, noinjunction can be granted.Mr.Aravind. P Dattar, learned senior counsel appearing for theappellant in O.S.A.No.263 of 2006 has invited the attention of thisCourt to the judgment reported in AIR 1965 Madras 327- V.ManickaThevar vs. Messrs. Star Plough Works, Melur. In paragraph 5 of thesaid judgment it has been stated that an interim injunction willnot be granted if the patent which has been obtained by theplaintiff is a recent one and there is a serious controversy aboutthe validity of grant of the patent itself.... In such case, Courtswill not grant an interim injunction restraining the defendant frompursuing his normal business activity. In paragraph 6 of the saidjudgment it has been stated that the patent is a very recent oneand the earlier decisions have uniformly taken a view that anypatent which is less than 6 year old is regarded as a recent one.In the said decision, reliance was placed upon the Statement of thelaw in Terrell on Patent, 9th Edition pages 318 to 320 and thedecision reported in 52 Calcutta Weekly Notes 253.19. The learned senior counsel for the 4th respondent/4thdefendant also drawn to the attention of the Court to the decisionreported in AIR 1985 Delhi 136 - M/s.Niky Tasha India Private Ltd.,v. M/s.Faridabad Gas Gadgets Private Ltd. wherein the same questionhas been reiterated and so also the decision reported in AIR 1996Calcutta page 367 Hindusthan Lever Limited vs. Godrej Soaps Limitedand others. The learned senior counsel also placed reliance uponthe judgment reported in AIR 2000 Delhi page 23 – M/s. StandipackPvt. Ltd. and another vs. M/s. Oswal Trading Co., Ltd. wherein ithas been laid down that when an application filed for revocation ofpatent and questioning the validity of patent is pending,injunction cannot be granted. It is also submitted by the learnedsenior counsel that as per Section 23 of the Designs Act, 2000,provisions of Patent Act pertaining to validity of patents apply tothe Designs Act and consequently the provisions therein had caselaws on that subject can be applied to the Design registered by theapplicant/plaintiff. https://hcservices.ecourts.gov.in/hcservices/

20. No monopoly rights no injunction can be granted:The learned senior counsel appearing for the appellant inO.S.A.No.263 of 2006 reiterated the submissions that since 4threspondent/4th defendant had already filed necessary applicationspre-grant as well as post-grant oppositions to the patent and thereis serious doubt regarding the grant of patent in favour of theapplicant/plaintiff, the learned single Judge ought not to havegranted ad-interim injunction restraining the 4th respondent/4thdefendant from passing off his product namely artificial bananaleaves. The learned senior counsel further submitted that there areprima facie materials to show that patent and designs are notvalidly registered. The order of ad-interim injunction granted infavour of the applicant/plaintiff created a monopoly in favour ofthe applicant/plaintiff and the same is unsustainable in law and onfacts. The learned senior counsel further submitted that in theabsence of any pleadings claiming equitable relief of injunctionunder common law, the grant of ad-interim injunction under PatentsAct in favour of the applicant/plaintiff is prima facieunsustainable in law. It is also submitted by the learned seniorcounsel that the applicant/plaintiff miserably failed to establishthe ingredients for grant of ad-interim injunction in his favourand therefore the interim order granted in O.A.No.495 of 2006 isliable to be set aside and consequently the O.S.A.No.263 of 2006 isto be allowed. 21. Per contra, Mr.P.S.Raman learned senior counsel appearingfor the appellant in O.S.A No.283 of2006/Applicant/Plaintiff hassubmitted that patent has been granted to the applicant/plaintiffand it should be protected. It is further submitted that once aninvention is made, it is easier to state that it is very obviousbut until such, the present invention is made by theapplicant/plaintiff, nobody has thought to incorporate the food-grade laminated paper in the form of banana leaf and moreimportantly incorporate its natural features of temperatureretention and flavour through artificial means.22. The learned senior counsel for the applicant/plaintifffurther submitted that ever since the year 2000, he has beenmanufacturing and selling food-grade laminated paper resemblingbanana leaf and a design was also registered in his favour underthe Designs Act, which is valid till date. Afterwards, patent wasgranted to him with effect from 29th August, 2000 and thereby, theapplicant/plaintiff is exclusively entitled to manufactureartificial food-grade laminated paper resembling banana leaf.Moreover, the applicant/plaintiff had sold artificial banana leafand earned 3.00 Crores of rupees right from the year 2000. The https://hcservices.ecourts.gov.in/hcservices/ applicant/plaintiff regularly taken action against the infringerson account of their registered designs and one such suit was filedagainst the first respondent/first defendant at Pudukottai, whichwas ultimately transferred to this Court and an order of ad-interiminjunction was granted in favour of the applicant/plaintiff. Theapplicant/plaintiff became aware when he took action againstanother infringer at Kerala that the 4th respondent/4th defendantis also manufacturing and selling identical artificial laminatedbanana leaves and all the respondents/defendants were colludingwith each other in the manufacture of artificial banana leaf. 23. As regards the contention put-forth by the 4threspondent/4th defendant the applicant/plaintiff is using themachinery supplied by M/s. Jailaxmi Engineering Corporation, usedby Jayam Industries, the learned senior counsel appearing for theapplicant/plaintiff submitted that the applicant's firm has alreadymanufacturing betel nut and the said machinery is used for thepurpose of packing the betel nut in sachets. It is furthersubmitted that merely because the results of the patent examinersare not to be concluded conclusive, it cannot be said that thepatent can be infringed. As long as the patent is in existence,nobody can use the same except without the permission of theapplicant/plaintiff. 24. The learned senior counsel further submitted that thepatent obtained by the applicant/plaintiff is both for process andproduct and it is a new, novel and is having economic significanceand it is an inventive step. As regards the contentions raised bythe 4th respondent/4th defendant that in a suit instituted underthe Patents Act, no interim order can be granted regarding passingoff, it is submitted by the learned counsel appearing for theapplicant/plaintiff that Section 48 of the Patents Act, 1970 speaksabout the rights of patentees. As per the Section 48(a),"where the subject matter of the patent is a product, theexclusive right to prevent third parties, who do not havehis consent, from the act of making, using, offering forsale, selling or importing for those purposes thatproduct in India";Section 48(b) says that"where the subject-matter of the patent is a process, theexclusive right to prevent third parties, who do not havehis consent, from the act of using that process, and fromthe act of using, offering for sale, selling or importingfor those purposes the product obtained directly by theprocess in India".Therefore, the interim order granted by this Court in O.A.No.495 of2006 restraining the respondents/defendants from in any manner https://hcservices.ecourts.gov.in/hcservices/ passing off the artificial banana leaves manufactured and sold bythe applicant/plaintiff, is sustainable as it was passed to protectthe right of the patent holder. The learned senior counselappearing for the applicant/plaintiff in support of his submissionshas placed reliance upon (i)1886 Vol.III. RPC page 379 - Rothwell v. King(ii)AIR 1929 Privy Council 38 - Pope ApplianceCorporation vs. Spanish River Pulp and Paper Mills Ltd.(iii)AIR 1930 Privy Council 1- Canadian General ElectricCo. Ltd., vs. Fada Radio Ltd.(iv)AIR 1936 Bombay 99 - Lallubhai Chakubhai Jariwala vs.Chimanlal Chunilal and Co.(v)AIR 1953 Nagpur 154 - The Bombay Agarwal Co., Akolavs. Ramchand Diwanchand and another.(vi)AIR 1969 Bombay 255 - Farbwerke HoechstAktiengesellschaft vormals Meister Lucius & Bruning aCorporation etc., vs. Unichem Laboratories and others.(vii)AIR 1978 Delhi 1 - Raj Prakash vs. Mangat RamChoudhary and others.(viii)AIR 1985 Delhi 244 - Tobu Enterprises (P) Ltd., vs.M/s.Joginder Metal Works and another.(ix)(2000)3 MLJ .85 (DB) - Gandhimathi AppliancesLimited, Kelambakkam, Kancheepuram District, Tamil Naduv. L.G.Varadaraju and others,(x)2002(24) PTC 632 (Del) (DB) - Telemecanique & Controls(I) Limited vs. Schneider Electric Industries SA.(xi)2006(32) PTC 65 (Mad.) (DB) - Wockhardt Limited vs.Hetero Drugs Ltd., & Ors.(xii)2007(34) PTC 668 (Del) (DB) - Time WarnerEntertainment Company, L.p. & Others vs. RPG Netcom.(xiii)2007(2) 907 - K.Ramu vs. Adyar Ananda Bhavan,Chennai.(xiv) MIPR 2008(1) 0217 - Bajaj Auto Ltd., State ofMaharashtra rep. by S.Ravikumar vs. TVS Motor CompanyLtd. https://hcservices.ecourts.gov.in/hcservices/

25. The learned senior counsel appearing for the 4threspondent/4th defendant/appellant in O.S.A.No.263 of 2006 in thecourse of his arguments, invited the attention of this Court to thevarious judgments.26. In AIR 1965 Madras 627 V.Manicka Thevar vs. Star PloughWorks, it has been held that "an interim injunction will not begranted if the patent which has been obtained by the plaintiff is arecent one and there is a serious controversy about the validity ofgrant of the patent itself. In other words, Courts will not grantan order of interim injunction if the defendant disputes validityof the grant". It has been further held that "any patent which isless than six year old is regarded as a recent one". The learnedsenior counsel appearing for the 4th respondent/4th defendantsubmitted that already objections in the form of pre-grantopposition and post-grant opposition had been filed and that thepatent granted in favour of the applicant/plaintiff is a seriousone, learned single Judge has committed an error in grantinginterim injunction restraining the 4th respondent/4th defendantfrom passing off the product. 27. In AIR 1982 Supreme Court 1144 - M/s.Bishwanath PrasadRadhey Shyam v. M/s. Hindustan Metal Industries it has been heldthat for granting of patent, it must have novelty and utility andthe fact that controller has granted patent does not give rise tothe presumption in view of the validity of the patent. The learnedsenior counsel based on the said decision, submitted that theapplicant/plaintiff has merely copied the prior art of manufactureof laminated paper which is in existence for several decades andthat the design of artificial banana leaf cannot be termed as a newdesign as it is nature's creation. It was also submitted that thepatent granted in favour of the applicant/plaintiff is less than 6years old and in view of the pre and post grant oppositions raisedby the 4th respondent/4th defendant, which is pending adjudicationbefore the competent authority injunction should not have beengranted. 28. As regards the submissions made by the learned seniorcounsel appearing for the 4th respondent/4th defendant that if thedesign is of a recent one, no injunction should be granted and thata serious question as to the validity of the patent is also pendingadjudication, preclude the Court from granting injunction, reliancewas placed upon in the judgment reported in AIR 1985 Delhi 136. InAIR 1996 Calcutta 367 relied upon by the learned counsel appearingfor the 4th respondent/4th defendant, it has been held that Courtswill not grant interlocutory injunction unless it satisfied thatthere is a real probability of plaintiff succeeding the trial of https://hcservices.ecourts.gov.in/hcservices/ the suit especially when the design is of a recent one. Similarview has been taken in the judgment reported in AIR 2000 Delhi 23,wherein it has been held that when an application is filed forrevocation of patent and questioning the validity of patent,injunction cannot be granted. In the said judgment it has beenfurther held that pillow pouch of engine oil is merely anarrangement and rearrangement of mixture of material and it cannotbe termed as a novel concept and therefore it cannot becomeinvention as it is only improvement. As far as the case on hand,the learned senior counsel for the 4th respondent/4th defendantsubmitted that the patent obtained by the applicant/plaintiff is aprocess patent and the artificial banana leaf was made by using thelaminated paper and that the design of artificial banana leaf isbased upon the banana leaf which is natures creation and therefore,there is no invention involved. Therefore, according to the learnedsenior counsel appearing for the 4th respondent/4th defendant thatin view of the above said legal principles enunciated in thevarious judicial pronouncements, the interim injunction granted infavour of the applicant/plaintiff restraining the 4threspondent/4th defendant from passing off of the product namelyartificial banana leaf is unsustainable in law and on facts andthat the applicant/plaintiff has not established any prima faciecase or balance of convenience to grant such an order.29. Mr.P.S.Raman, learned senior counsel appearing for theapplicant/plaintiff also placed reliance upon number of judgmentsas stated above. According to the learned senior counsel appearingfor the applicant/plaintiff, that the dictum land down in thejudgment reported in AIR 1965 Madras 327- V.Manicka Thevar vs.Messrs. Star Plough Works, Melur which says that a patent can beconsidered as a recent one if it is less than 6 years old, requiresreconsideration in view of the present context. The learned counselinvited the attention of this Court to the judgment reported in1886 RPC 379 - MOSS v. MALINGS; it has been referred to in thejudgment reported in AIR 1965 Madras 327. In the said judgment, the6 years period for the age of the patent came to be fixed on thefacts and circumstances of the said case. It is further submittedthat in view of Section 48(b) of the Patents Act,1970 if it is aprocess patent, the patent holder is having right to prevent thirdparties who do not have his consent and using that process and fromoffering for sale, importing for those process, the productobtained by that process in India directly. 30. In AIR 1929 Privy Council 38 - Pop Appliance Corporationv. Spanish River Pulp and Paper Mills Ltd. a test for patentinfringement has been stated and the same is extracted below:- "Test is would a man who was grappling with the problemsolved by the patent attacked and having no knowledge of https://hcservices.ecourts.gov.in/hcservices/ that patent if he had the alleged anticipation in hishand, have said, "that gives me what I wish"? BritishThompson Houston Co. v. Metropolitan Cickers ElectricalCo. 45 R.P.C. at p.23, Otto v. Linford, (1882) 46L.T.N.S.35; Flour Oxidising Co. v. Car & Co., 25 R.P.C.at p.457; and Armstrong Whitworth & Co. v. Hard Castle,42 R.P.. 543; Foll.It cannot be too carefully kept in mind in patent lawthat in order to render a document a prior publication ofan invention it must be shown that it publishes to theworld the whole invention, i.e., all that is material toinstruct the public how to put the invention in practice.It is not enough that there should be suggestions which,taken with suggestions derived from other and independentdocuments, may be shown to foreshadow the invention orimportant steps in it. British Ore ConcentrationSyndicate Ltd. v. Minerals Separation Ltd: 26 R.P.C. 147Foll.In almost every patent for mechanical combinations theelements are old. It must also be considered that theremay be inventions in what, after all, is onlysimplification. After all, invention is finding outsomething which has not been found by other people. Thequid to the patentee is the monopoly; the qua is that itpresents to the public the knowledge which they have notgot. The real invention often may be and is just the lastelement of the combination. In every case arises aquestion of fact, whether the contrivance before in usewas so similar to that which the patentee claims thatthere is no invention in the difference. The contrivancemust be a contrivance in use, not one merely describedbut the analogous use is not one merely described but theapplication of well known things to an analogous use isnot the proper subject for a patent. Harwood v. GreatNorthern Ry. Co., 11 H.L.C. 654 and Margan & Coov. WinDover & Co., the C.Spring case, 7 R.P.C. 131, Foll."31. In AIR 1930 Privy Council 1 - Canadian General ElectricCo. Ltd. v. Fada Radio Ltd., the judgment of Maclean, J., in hisjudgment at page 393 of the Record has been extracted, which runsas follows:-"There must be a substantial exercise of the inventivepower or inventive genius, though it may in cases be veryslight. Slight alterations or improvements may produceimportant results, and may disclose great ingenuity.Sometimes it is a combination that is the invention; ifthe invention requires independent thought ingenuity andskill, producing in a distinctive form a more efficient https://hcservices.ecourts.gov.in/hcservices/ result, converting a comparatively detective apparatusinto a useful and efficient one, rejecting what is badand useless in former attempts and retaining what isuseful, and uniting them all into an apparatus which,taken as a whole, is novel, there is subject matter. Anew combination of well known devices, and theapplication thereof to new and useful purpose, mayrequire invention to produce it and may be good subjectmatter for a patent."32. In AIR 1936 Bombay 99 - Lallubhai Chakubhai Jariwala vs.Chimanlal Chunilal and Co. it has been held as follows: “The subject-matter of a patent must be a new manufactureor art, for, if there is no new manufacture or art, thereis no subject-matter and therefore no invention. Thequestion whether there is an invention is a question offact in each case. A new and useful application of an oldprinciple may be good subject-matter. An improvement onsomething known may also afford subject-matter; so also anew combination of different matters already known. Apatentable combination is one in which the componentelements are so combined as to produce a new result or toarrive at an old result in a better or more expeditiousor more economical manner. If the result produced by thecombination is either a new article or a better or acheaper article than before, the combination may affordsubject-matter for a patent. The mere collocation of twoor more things however without some exercise of theinventive factually in combining them is not subject-matter for a patent. In the case of a combination theinventor may have taken a great many things which arecommon knowledge and acted on a number of principleswhich are well known." 33. In AIR 1953 Nagpur 54 - The Bombay Agarwal Co., Akola vs.Ramchand Diwanchand and another, it has held that:"Accordingly to the claim, which is not so adequatelydescribed except in the preamble, it is an "improvedpowder composition for cold and hot drink from grainhusk" and in the specifications it is stated:"The invention relates to the preparation of an improvedpowder composition used for cold or hot drink, forconsumption by poor people. This powder is mainlyprepared from corn husk. The most suitable grain huskused of gram and Tur (pulse)."It is to be stated that the subject-matter of the patentwas not attacked on the ground of insufficiency. At thestage of this appeal we questioned the learned counsel https://hcservices.ecourts.gov.in/hcservices/ for the respondents about the clauses under which heimpugned the patent, and he confined himself to cls. (d)and (e) of S. 26(1), Patents and Designs Act. Theseclauses read as follows:"(d) that the invention was not, at the date of thepatent, a manner of new manufacture or improvement; (e) that the invention does not involve any inventivestep, having regard to what was known or used prior tothe date of the patent."Similarly, it is obvious that the utility of theinvention, which is the subject-matter of cl. (f) is notquestioned. Indeed, the greatest proof of the utility ofthe invention (if upheld) would be the proof of directimitation by others."34. Further in para 50-51 it has been held that once thesubject matter, utility and novelty are to be found, the Courtsshould do everything to uphold a patent and not defeat it. 35. In AIR 1969 Bombay 255 - Farwerke HoechstAktiengesellschaft vormals Meister Lucius & Bruning a Corporationetc., vs. Unichem Laboratories and others, it has been stated whatis meant by novelty and invention as extracted herein:"From what is discussed in the preceding paragraph itwill therefore, be clear that the main heads of thealleged invalidity of the plaintiffs' patent on whichthe defendants rely by way of defence are only fourviz., (1) insufficiency of description; (2) want ofnovelty; (3) no inventive step and (4) want of utility.It may be stated that the onus in regard to allobjections to validity lies on the defendant. (Halsbury,(3rd Ed.) Vol.29 p. 106 paragraph 218). I shall nowproceed to deal with each of those grounds.15. That brings me to the next ground of allegedinvalidity of the plaintiffs' patent viz., want ofnovelty. The test of novelty as formulated by Halsbury,(3rd edn.) Vol.29 p. 27 Para 58) is in the followingterms: "To anticipate a patent, a prior publication oractivity must contain the whole of the inventionimpugned; i.e., all the features by which the particularclaim attacked is limited. In other words, theanticipation must be such as to describe, or be aninfringement of the claim attacked." The startingmaterials for the purpose of claim No.11 were thethioureas corresponding to the ureas invented and claimNo.11 itself states in specific terms that the radicalsR and R. 1 in the formula of the thioureas set outtherein must have the meanings given to them in claim https://hcservices.ecourts.gov.in/hcservices/ No.1. That would mean that the radical R must be limitedin regard to the number of Carbon atoms in the mannerstated in claim No.1, and the radical R. 1 must also belimited in regard to the number of Carbon atoms, in themanner stated in claim No.1. Dr.Aumuller was asked inexamination-in-chief a question as to why the radicals Rand R1 in the specification (Ex.) are limited in themanner therein stated, and his answer was "because onlysuch products had been taken into the patent which lowerthe blood-sugar", or in other words for obtaining ahypoglycaemic effect particular radicals were selectedby a process of testing on animals. It would follow thatif the Carbon atoms in R. or R.1 were more or less thanthe number specified in claim No.1, hypoglycaemicproperty would not be obtained, and that has been statedexplicitly by Dr.Bander in the course of hisexamination-in-chief. The evidence on record shows thatit was known that amino-sulphonamides had anti-diabeticproperties. Many sulphoylureas were also known, but theywere all with the wrong radicals at either end and itwas known that they could have anti-diabetic propertiesif they were activated by certain radicals. That was theprior art and, in that state of knowledge, it was notpossible for a skilled chemist to predict that thecombining of the two starting materials mentioned in theplaintiffs' patent would produce compounds which wouldhave hypoglycaemic properties. The idea which is new inthe plaintiffs' patent is the discovery that a usefulanti-diabetic preparation could be obtained byconstructing a molecule with a sulphonylurea in themiddle and carefully planned lumps of radicals at eitherend. The novelty in the plaintiffs' patent lies entirelyin the R and R.1. What is new in the plaintiffs' patentis that it was discovered that it was possible to havethe desired anti-diabetic properties, without producingundesirable toxic or anti-bacterial effects of knownsulphonamides like I.P. T.D., by modifying the structureof the sulphonylurea in a particular way. The way inwhich that new idea was sought to be applied was (1) toselect proper material having certain characteristics;(2) to react them together and (3) to obtain theproduct, directly or indirectly. I therefore hold thatthe objection to the validity of the plaintiffs' patenton the ground of want of novelty must stand rejected.The principles on which, and limits within which, aninvention consisting of the production of new substancesby known methods from known materials can be supportedfrom the point of view of subject-matter, which are:-(i) An invention consisting of the production of new https://hcservices.ecourts.gov.in/hcservices/ substance from known materials by known methods cannotbe held to possess subject-matter merely on the groundthat the substances produced are new, for the substancesproduced may serve no useful purpose, in which case theinventor will have contributed nothing to the commonstock of useful knowledge (the methods and materialsemployed being already known) or of useful materials(the substances produced being, ex hypothesis, useless).(ii) Such an invention may, however be held to possesssubject-matter provided the substances produced are notonly new but useful, though this is subject to thequalification that the substances produced must be trulynew, as opposed to being merely additional members of aknown series (such as the homologues) and that theiruseful qualities must be the inventor's own discovery asopposed to mere verification by him of previouspredictions. (iii) Even where an invention consists of the productionof further members of a known series whose usefulattributes have already been described or predicted, itmay possess sufficient subject-matter to support a validpatent provided the somewhat stringent conditionsprescribed by Maugham J., as he then was, in I.G.Farbenindustrie A. G.'s Patents, (1930) 47 RPC 289 asessential to the validity of a selection patent aresatisfied, i.e. the patent must be based on somesubstantial advantage to be gained from the use of theselected members of the known series or family ofsubstances, the whole (or substantially the whole) ofthe selected members must possess this advantage, andthis advantage must be peculiar (or substantiallypeculiar) to the selected group."36. In AIR 1978 Delhi 1 - Raj Prakash vs. Mangat Ram Choudharyand others. the effect of grant of patent has been discussed, whichruns as follows:-"The effect of the grant of a patent is quid proquo, quid is the knowledge disclosed to the public andquo is the monopoly granted for the term of the patent.S.12 of the Patents and Designs Act, 1911 sets out that apatent once granted confers on the patentee the exclusiveprivilege of making, selling and using the inventionthroughout India and of authorising others so to do. Thisis the quo. The quid is compliance with the variousprovisions resulting in the grant of the patent. The verysimple device upheld in John Lord Hinde v. OsborneGarrett, and Co., 1884 (1) R.P.C. 221 and an infringinghair-pin was held as piracy of the plaintiff's inventionwith the following observations:- https://hcservices.ecourts.gov.in/hcservices/ "The inventor says, I ask you, the public, or rather Iask the Crown, to give me a monopoly for a certain numberof years, and in consideration of their giving me thatmonopoly I will tell them in my specification the natureand manner of using the invention. I claim, and thereforeat the expiration of the time that is guaranteed for mymonopoly the public will be the gainers because they willlearn how to do this. If a man obtains a patent, and thusobtains a monopoly, it makes no difference that somebodyelse who has not got a patent has thought of the samething and has used it. He is not permitted to do thatwhere the monopoly has been secured to an inventor." This law is codified in India by the provisions, alreadyreferred to.The patented article or where there is a process, thenthe process, has to be compared with the infringingarticle or process to find out whether the patent hasbeen infringed. This is the simplest way and indeed theonly sure way to find out whether there is piracy. Thisis what was done in the hair-pin case, above-referred to,and is indeed, always done. Unessential features in aninfringing article or process are of no account. If theinfringing goods are made with the same object in viewwhich is attained by the patented article them a minorvariation does not mean that there is no piracy. A personis guilty of infringement if he makes what is insubstance the equivalent of the patented article. Sometrifling or unessential variation has to be ignored.There is a catena of authority in support of this view.We need not cite all those cases which were brought toour notice at the Bar. Suffice it to quote the words ofLord. Denning, M.R. in Beecham Group Ltd. v. BristolLaboratories Ltd. 1967 R.P.C. 406:-"The evidence here shows that in marking hetacillin inthe United States the defendants use a principal part ofthe processes which are protected here by the Englishpatents. The importation and sale here is prima facie aninfringement.There is a further point. A person is guilty ofinfringement if he makes what is in substance theequivalent of the patented article. He cannot get out ofit by some trifling or unessential variation..... On theevidence as it stands, there is ground for saying thathetacillin is medically equivalent "to ampicillin. Assoon as it is put into the human body, it does, after aninterval, by delayed action, have the same effect asampicillin. In these circumstances, I think there is aprima facie case for saying there was an infringement.The process is so similar and the product so equivalent https://hcservices.ecourts.gov.in/hcservices/ that it is in substance the same as ampicillin."37. In AIR 1985 Delhi 244 - Tobu Enterprises (P) Ltd., vs.M/s.Joginder Metal Works and another, it has been held that aperson complaining infringement of his design can certainly ask foraccounts from the defendant to show the profits earned by thedefendant by unlawful using the design as a registered proprietorand the plaintiff might say that the profit earned by the defendantwould be loss sustained by him which he could claim damages. It wasfurther held that a suit for permanent injunction restraining theinfringement of a registered design and for rendition of accountsis maintainable. 38. In (2000)3 MLJ .85 (DB)- Gandhimathi Appliances Limited,Kelambakkam, Kancheepuram District, Tamil Nadu v. L.G.Varadarajuand others, the effect of grant of patent in respect of table topwet grinder and its infringement has been discussed in detail andit has been held as follows:-"The prior law in England on this aspect of thepresumption of the validity of the patent as set out inthe case of Smith v. Grigg Ltd., 41 R.P.C. 149, by LordJustice Atkins who along with - Scrutton, L.J. decidedthat case and who observed that, "I think the reason for the principle which has beenadopted in respect of a person claiming an interlocutoryinjunction restraining the infringement of a patent, is,that the plaintiff has always to establish at any rate aprima facie case of having a right which has beeninfringed by the defendant, and according to our patentlaw, which in this respect I think differs from that ofsome other countries, the mere fact of the granting of apatent is not in itself an indication that the plaintiffhas established to the satisfaction of any authority thathe has the right to the monopoly which he claims. In acase of a patent therefore the mere fact that a patenthas been granted does not show that those conditions havebeen performed which alone entitle a plaintiff to aconclusive right, and therefore the courts when they areapproached by a plaintiff who says: "I am the owner of apatent, and the defendant has infringed it, "say wherethe patent is of recent date: "Your right is notestablished sufficiently by the mere fact that a patenthas been granted to you"; and unless there is some kindof substantial case evidenced before the Court that thereis in fact a valid patent, then the Court refuses togrant an injunction". Though some of the High Courts in India have referred toand relied on the case of Smith v. Gregg, 41 R.P.C. 149, https://hcservices.ecourts.gov.in/hcservices/ we must, having regard to the development of the law inEngland where that case is no longer regarded as havinglaid down a right principle with regard to the value tobe attached to the patent already granted to a plaintiff,hold that the grant of patent is indeed a factor to betaken note of while considering the plaintiffs' right toan interlocutory injunction".Ultimately in the said decision it was held that having regard tothe fact that such a product had never been on the market, and thefact that ingenuity and skill have in fact been displayed by theplaintiffs in manufacturing the product, the further fact it hasachieved commercial success, is yet another factor which must beheld to be in favour of the plaintiffs while considering the grantof discretionary relief of temporary injunction. It was also heldthat the success that had been achieved by the defendant byinfringing the patent within the short span of one year alsoindicates the need of protecting the interest of the plaintiffs andtherefore, plaintiffs are entitled, so long as it's patent to beupheld to a monopoly for its invention. Ultimately in the saiddecision the Court has granted an order of injunction against thedefendant for infringement of the patents of the plaintiffs and thedefendants therein was restrained from manufacturing and marketingthe product similar to the plaintiffs'. The order of interiminjunction was granted in favour of the plaintiffs subject to thecondition that the plaintiffs shall give undertaking to compensatethe defendant in damages in the event of the plaintiffs notsucceeding at the trial of the action. Therefore, the sum andsubstance of the said decision is that if there is an infringementof a patent, interim measure by way of an order of interiminjunction can be granted against the party who infringes thepatent. 39. In 2002 (24) PTC 632 Delhi (DB) - Telemecanique & Controls(I) Limited vs. Schneider Electric Industries SA, it has been heldthat undoubtedly, patent creates a statutory monopoly preventingthe patentee against any unlicensed user of the patent device. Thusonce a violation is established in case of a registered patent,subject of course, to the patent being used, it will not bepermissible to contend that the said patentee is not entitled to aninjunction. A monopoly to the patent is the reward of the inventorand therefore in the said decision, the order of the learned singleJudge in granting interim injunction has been upheld. 40. In 2006(32) PTC 65 Madras (DB) - Wockhardt Limited vs.Hetero Drugs Ltd., & Ors. , Messrs. Wockhardt limited apharmaceutical company is the holder of the process patent,Exclusive Market Rights and Drug Licence for the manufacture ofpharmaceutical preparation, namely, Nadifloxacin 1% Cream. The https://hcservices.ecourts.gov.in/hcservices/ first respondent in the said case namely Hetero Drugs Limited hadinfringed the patent and exclusive marketing right granted to theappellant namely Wockhardt Limited and started manufacturing thesame product and selling in the market. Messrs.Wockhardt Limitedhas filed a suit for permanent injunction restraining Messrs.Hetero Drugs Limited from infringing the patent, EMR and frommanufacturing the said pharmaceutical preparation and pendingdisposal of the same, orders of interim injunction were prayed forand the said petitions were dismissed. 41. Messrs.Wockhardt Limited challenging the vires of thedismissal of the said applications preferred O.S. appeals. TheDivision Bench which heard the matter had decided has held that theappellant namely Messrs. Wockhardt Limited is the only company inIndia got exclusively market right patent which are for limitedperiod of 5 years and, unless the same are exercised in the saidperiod, it will be render useless. When this period of short tenureis sought to be disturbed over the rights by any other party, whichhas no prima facie right by virtue of process patent and EMRgranted to the appellant, then the Court has to necessarily preventthe other party, by affording appropriate relief in favour of theplaintiff by granting the injunction sought for. 42. Mr.P.S.Raman learned senior counsel appearing for theappellant in O.S.A.No.283 of 2006/applicant/plaintiff has submittedthat as per Section 53 of the Patents Act, the term of the patentis for 20 years. As far as the patent granted in favour of theapplicant/plaintiff for artificial banana leaf is concerned, he wasgranted patent vide Letters Patent No.198079 with effect from 29thAugust 2000 the date on which the application for patent was madeand already nearly 8 years had elapsed from the date of grant ofpatent. If the decision reported in AIR 1965 Madras 327 V.ManickaThevar's case is applied, the patent which is less than 6 years oldis regarded as a recent one. Therefore, according to the learnedsenior counsel appearing for the appellant in O.S.A.No.283 of 2006the said decision requires reconsideration in view of the Patents(amendment) Act 2005 under which, major amendments were effected tothe Patents Act, 1970. The learned counsel further invited theattention of this Court to Section 48 of the Patents Act, whichcame to be substituted by Act 38 of 2002 with effect from20.05.2003 under which, sufficient protection is granted forproduct patent as well as process patent. Therefore, according tothe learned senior counsel by applying the said provision, and thejudgment of this Court reported in 2006 (32) PRC 36 Madras (DB)Wockhardt Limited vs. Hetero Drugs Ltd., period of 6 years fixed inManicka Thevar's case – AIR 1965 Madras 327, cannot be termed as agood law as the said 6 years lost its span. Moreover, in moderndays, the patent life is very short in view of new innovations and https://hcservices.ecourts.gov.in/hcservices/ inventions and therefore, the right of the patent holder namely theapplicant/plaintiff is to be protected by upholding the order ofad-interim injunction regarding passing off and also to restrainthe 4th respondent/4th defendant from infringing the patent. 43. In 2007(34) PTC 668 Delhi (DB) - Time Warner EntertainmentCompany , L.p. & Others vs. RPG Netcom, the principle regardingaction of passing off are enunciated. The learned senior counselappearing for the appellant in O.S.A.No.283 of 2006 submitted thatthough the said decision is arising out of the Copyright Act of1967 ,the principles enunciated in the said judgment can be verywell applied to the facts of the present case. In paragraph No.18of the said judgment it has been held as follows:-"Action of passing off is maintainable if the action ofthe defendant is calculated to injure business reputationand goodwill of another trader. This action is alsomaintainable if damage to reputation and goodwill is seenas a reasonable foreseeable consequence of the action ofthe defendant. Passing off action can be in the form ofquia timed action. Foundation of passing off action isprotection of goodwill and reputation. It is not a remedyfor invasion of the market name or get up. It is a remedyfor invasion of right to property in form of businessreputation and goodwill. Goodwill and business reputationis a proprietary right capable of protection. Secondly,deception or deceit on the part of the defendant is anessential ingredient for inviting action of passing off.The objective of passing off action is to restrain aparty from passing off his goods etc. as those belongingto another trader, viz, the one who has the reputation orgoodwill. The property which is sought to be protected isthe business reputation and goodwill that is injured bythe said misrepresentation. Action for passing off can beinitiated, where interest of an author or owner of acopyright work in his business reputation and goodwill isdamaged by misrepresentation that falls outside thecopyright law, i.e. the Act. Passing off action will bemaintainable, when the claim is not based on infringementof copyright but damage to reputation and goodwill of theproprietor and the said damage is caused by deceit ormisrepresentation by the defendant. In Copinger and SkoneJames on Copyright, on passing off claims by authors andowners, it has been observed that legal recourse to tortof passing off can be initiated when no substantialreproduction of work has taken place or when reference isonly made to names or the work of the author/owner asthere is no copyright as such in a name or work". https://hcservices.ecourts.gov.in/hcservices/

44. Therefore, according to the learned senior counselappearing for the applicant/ plaintiff not only infringed thepatent right of the applicant in respect of artificial bananaleaves but also manufacturing similar kind of product of inferiorquality and thereby harming the plaintiff's reputation and goodwilland hence, his interest is to be protected by granting appropriateinterim orders pending disposal of the suit. 45 . The learned senior counsel also relied upon the judgmentreported in (2007)2 MLJ 907 - K.Ramu vs. Adyar Ananda Bhavan,Chennai. In the said case, it has been held that when the thirdparties infringe the rights granted under the Patents Act, then,Section 108 of the Patents Act will come into operation, accordingto which, in case of infringement, the Court may grant the relief’sincluding injunction and ordering the goods to be seized, forfeitedor destroyed and ultimately interim injunction was grantedrestraining the defendants, therein from infringing both processand product patent. 46. The learned senior counsel appearing for the appellant inO.S.A.No.283 of 2006 laid thrust upon judgment reported in MIPR2008(1) 0217 Madras, in the matter of Bajaj Auto Limited vs. TVSMotor Company. According to the learned senior counsel, though thesaid judgment is a subject matter of challenge in Original SideAppeals, reliance can be placed upon as in the said judgment entirecase laws on Patent had been discussed in detail. The facts of thesaid case are that the applicant namely Bajaj Auto claimed that itwas granted Indian Patent in respect of patent application titled "An improved International combustion engine working on four strokeprinciple" and the said invention relates to the use of a twinspark plugs for efficient combustion of clean air fuel mixture insmall bore ranging from 45mm to 70mm. The respondent therein namelyMessrs.TVS Motor Company has launched Motor bikes of 125-CCcapacity under the trademark of "FLAME" powered with a lean burninternal combustion engine of bore size of 54.5 mm with a twinspark plug configuration, which according to the applicant,infringes its patent rights. Therefore, Messrs.Bajaj Auto filed asuit and pending disposal of the suit filed applications forinterim injunction. The learned judge has granted ad-interiminjunction in favour of Messrs.Bajaj Auto Limited. While discussingthe entire case laws on that subject it was held as follows:-"(1) Now coming to the question of infringement, it isnot in much dispute that except the use of three valves,the product which is attempted to be marketed by theRespondent is prima facie similar to the Applicant'spatented product.(2) The effect of patent granted under the Act and itsconsequential user apart from a third person using thepatented product in the substance equivalent to the https://hcservices.ecourts.gov.in/hcservices/ patented article has been dealt with by the DivisionBench of Delhi High Court in Raj Prakash v. Mangat RamChoudhary and Ors. (AIR 1978 Delhi 1), which is asfollows, A person is guilty of infringement if he makeswhat is in substance the equivalent of the patentedarticle. Some trifling or unessential variation has to beignored. Therefore, it is clear that the Applicant hasmade out a prima facie case for injunction against theRespondent. (3) It is true that in cases where the use of theApplicant's patent is recent in origin or the patenteehas not even used or commenced to release its product,then such patentee is not entitled for the grant ofinjunction. (4) Moreover, on the factual position in this case, theApplicant has come up in the world market by sale of itsproduct as stated above and its period is only for 20years and there is every possibility for a new inventionin the field by bringing the new product even before thetime of expiry of patent granted to the Applicant andsuch invention may be brought by the Applicant itself andhence, these quantum of damages which the Applicant maysuffer in not granting injunction cannot be ascertainedin monetary sense. On the other hand, the Respondentclaiming itself to be a licensor of AVL products has noteven marked its product. (5) Therefore, the second aspect of grant of interiminjunction, viz., and the balance of convenience is alsoin favour of the Applicant for granting an Order ofinjunction. (6) A similar contention was rejected by the Court ofAppeal in Netlon v. Bridport Gundry Ltd. (1979 FSR 530).While granting injunction at the appellate stage, theCourt of Appeal has answered as follows: - I must nowproceed to consider the question of damages. Therespondents say that any damage that the appellants wouldsuffer by not obtaining an injunction, if they ultimatelyprove right at the trial, is capable of being calculatedwith reasonable certainty and so damages are an adequateremedy. They say that the amount of the respondent'ssales will be known, so also will those of Netlon inprevious years, so that the measure of the diminution ofbusiness as the result of their activities can beascertained and the damages quantified by calculation ona royalty basis. For my part, I am unable to accept thisargument. The first year would be a building-up one sothat one would have to look at least to the second, butthen, I think, it would be impossible to distinguishsales due to the early start with the assistance of the https://hcservices.ecourts.gov.in/hcservices/ patented material and sales which the respondents wouldhave made anyway. The truth, in my Judgment, is that itis quite impossible to calculate the adverse effect uponthe Appellants of their having to face competition a yearearlier than they would have to do if the respondents hadto wait for supplies of unquestionably unoffendingmaterial. (7) While dealing about the concept of "Inventive step"the Supreme Court held that it is a mixed question of lawand fact to decide about the novelty or subject matter.It also explained the concept of "obvious" and held thata patented invention may be a combination of differentmatters already known, but it must be something more thana mere workshop improvement. (8) In any event, the test of "obviousness" which formspart of the term "inventive step" under Section 2(a) ofthe Patents Act, 1970 will have to be decided only in anappropriate manner in a full-fledged trial. Suffice it tosay now at this stage, prima facie there is novelty whichmeans an invention and the same has been registered underthe Patents Act with priority date and the enablement ofnovelty has been on the face of it proved by theApplicant by marketing the product in such large extentand also without objection fairly for long 5 years and itis not proved that so far the product of the Applicant is"obvious".Therefore, according to Mr.P.S.Raman, learned senior counselappearing for the appellant in O.S.A.No.283 of 2006, theapplicant/plaintiff's product of artificial laminated banana leafis innovative as the artificial laminated banana leaf which is offood-grade colour manufactured by the applicant/plaintiff and thesaid leaf is not having inherent defects involved in natural bananaleaf. It is further submitted by the learned senior counsel, priorto the obtaining of patent ,there were infringement who had beenprevented successfully by filing suits and obtaining interimorders. The patent in respect of the said product was granted on20.01.2006 with effect from the date of application namely 29thAugust, 2000 and therefore, the applicant/plaintiff exclusivelyentitled to manufacture artificial food-grade laminated banana leafand by selling that product, he earned more than 3 Crores ofrupees. Further according to the learned senior counsel for theapplicant/plaintiff, the 4th respondent/4th defendant is the dealerof defendants 1 and 2 and since there are interim orders operatingagainst the said defendants, in connivance with them, the 4threspondent/4th defendant has started selling of spurious artificiallaminated banana leaves. https://hcservices.ecourts.gov.in/hcservices/

47. It was further submitted by the learned senior counsel forthe appellant in O.S.A.No.283 of 2006 that Section 48 of thePatents Act grants sufficient protection to the rights of patenteesin respect of both product and process patent. Since theapplicant/plaintiff is a patent holder in respect of the saidproduct, in view of the factual aspects narrated in detail and alsobased on the judgments cited by him, the learned single Judge oughtto have granted interim orders regarding his patent right also andhas committed error in dismissing the application in O.A.No.494 of2006 regarding infringement of his registered patent. 48. In reply to the submissions made by Mr.P.S.Raman, learnedsenior counsel appearing for the appellant in O.S.A.No.283 of2006/applicant/plaintiff, Mr.Arvind P.Datar, learned senior counselappearing for the appellant in O.S.A.No.263 of 2006/4threspondent/4th defendant has submitted that the applicant/plaintiffof course can claim right under Designs Act for the banana shapedlaminated paper and since there is no novelty or invention involvedin manufacturing the artificial banana leaf, patent ought not tohave been granted by the concerned authority. The learned seniorcounsel further submitted that in view of the objections raised bythe 4th respondent/4th defendant in the form of pre-grant and post-grant oppositions of the patent, it cannot be said that an absoluteright has been inured in favour of the applicant/plaintiff so as toenable him to manufacture and sell artificial laminated banana leafexclusively. It is further submitted that by grant of interim orderagainst 4th respondent/4th defendant restraining him from passingoff the said product, virtually monopoly has been granted in favourof the applicant/plaintiff, which is impermissible on publicinterest and also unsustainable in law and on facts. 49. The learned senior counsel Mr.Arvind P.Datar furthersubmitted that no comprehensive suit for Designs and Patents Acthas been filed, but the present suit has been filed only underPatents Act. Therefore, no interim orders can be granted pendingdisposal of the suit filed under Patents Act. It is furthersubmitted that once an applicant/plaintiff elected his remedy underPatents Act, he has to succeed or perish based on the provisions ofthe said Act and he cannot fall back upon his alleged rights underDesigns or Copyrights Act.50. It is also submitted by the learned senior counselMr.Arvind P.Datar that even though the applicant/plaintiff claimsboth product and process patent, a cursory perusal of the pleadingswould disclose only a process patent, which according to the 4threspondent/4th defendant, it is not involved in any novelty orinvention. https://hcservices.ecourts.gov.in/hcservices/

51. Lastly, the learned senior counsel Mr.Arvind P.Datarsubmitted that the discretionary relief of order of ad-interiminjunction can be granted only under common law in the absence ofany provisions in the Patents Act, but no such pleadings areavailable in the plaint and no such averments are available in theaffidavit filed in support of the applications for ad-interiminjunction. Therefore, according to the learned senior counsel, theorder of ad-interim injunction granted in O.A.No.495 of 2006 is perse unsustainable and is liable to be set aside and the appeal filedby him in O.S.A.No.263 of 2006 is to be allowed with costs. 52. We have carefully considered the rival submissions made byMr.Arvind P.Datar, learned senior counsel appearing for theappellant in O.S.A.No.263 of 2006/4th respondent/4th defendant andMr.P.S.Raman, learned senior counsel appearing for the appellant inO.S.A.No.283 of 2006/applicant/plaintiff and also keeping it inmind, the principles laid down in the decisions relied on by therespective senior counsel appearing for the parties.53. It is a settled position of law for granting an order ofad-interim injunction including the infringement of Designs,Copyrights and Patent, the applicant/plaintiff must prima facieestablish that balance of convenience lies clearly in his favourand irreparable loss that may be caused to him on account of nongranting of an order of ad-interim injunction. 54. Admittedly, the applicant/plaintiff prior to obtaining thepatent for his product, has got the design registered in his favourunder Designs Act which is valid till date. As per the patentgranted in favour of the applicant/plaintiff in respect of theapplication made by him on 29th August 2000, he has been grantedpatent to have the exclusive right to prevent third parties frommaking, using, offering for sale, selling or importing for thosepurpose, the food-grade laminated paper method and apparatus formanufacturing the laminated paper subject to the conditions thatthe validity of the patent is not guarantee and that the feeprescribed for the continuance of the patent as duly paid. Earlierwhen there were infringements of its designs prior to obtaining ofthe patent, applicant/plaintiff launched proceedings in the form ofcivil suits and obtained interim orders against the persons whoinfringed his product.55. As per Section 48 of the Patents Act which came to beamended with effect from 20th May 2003, while deciding about theprima facie case, even though no presumption of the validity of thepatent can be drawn, certainly the patent obtained after theamendment is having more significant. Therefore, the patentobtained by the patentee can be given more weight for deciding the https://hcservices.ecourts.gov.in/hcservices/ prima facie case, however, the ones of proving the prima facie caseabout the validity of the patent and its infringement is very muchon the applicant/plaintiff. 56. The main objection raised by the learned senior counselappearing for the appellant in O.S.A.No.263 of 2006/4threspondent/4th defendant is that the product of the applicantnamely artificial laminated banana leaf for which, the patent hasbeen granted is not an invention at all as the banana leaf is abiological and natural product and as regards the shape and colour,no invention or innovation is involved. It is further submitted byMr.Arvind P.Datar learned senior counsel appearing for theappellant in O.S.A.No.263 of 2006 that in view of the pre and postgrant oppositions, to the patent, the grant of patent itself willnot certify the validity of the same as found in Section 13(4) ofthe Patents Act, 1970. 57. The learned senior counsel Mr.Arvind P.Datar furtherinvited the attention of this Court to US patents for makinglaminated paper and learned senior counsel further submitted thatby comparing the application for patent with that of the USpatents, it is telltale that the entire process of manufacture oflaminated paper as found in US patents has been verbatim extractedin the application for patent submitted by the applicant/plaintiffand therefore according to the learned senior counsel, absolutelyno innovation or novelty is involved at all in the process ofmanufacturing artificial laminated banana leaf. In this connection,the learned senior counsel also invited the attention of this Courtto the judgment reported in 2000 PTC 1 (FB) (Delhi) - Metro PlasticIndustries vs. M/s. Galaxy Footwear New Delhi, which arose out of acase of infringement of design. It has been held in that decisionthat once an application for cancellation has been made then itwould not be open for the Court trying the suit under Section 53 ofthe Designs Act, to turn a blind eye to the pendency of suchapplication. While deciding the said application. In that case theCourt must take into consideration all relevant facts which wouldinclude the grounds raised in the application for cancellation. TheCourt must then decide whether or not to grant an injunction infavour of registered owner. Such a decision must be madejudicially. In such cases Court would apply the principles whichgovern grant of injunction under Order 39 Rule 1 and 2 C.P.C. andthat the grant or refusal of injunction must then be based upon allrelevant factors. As regards his submissions that no innovations orinvention is involved, the learned senior counsel has invited theattention of this Court to the judgment reported in 2008(36) PTC123 (DB) Himachal Pradesh - Dhanpat Seth & others vs. Nil KamalPlastic Creates Ltd, wherein grant of patent in respect of product"KILTA" was the subject matter. In the said case, an old devicepurely known as "KILTA" which was originally made of bamboo is now https://hcservices.ecourts.gov.in/hcservices/ produced in plastic and development of detachable nylon straps withbuckles. It was ultimately held in the said decision that theproduct developed should be a totally new product and a mere grantof patent in favour of the plaintiff by itself does not mean thatthe plaintiffs are entitled to any injunction. It was further heldin the said decision that the device developed by the plaintiffs isin fact, the result of traditional knowledge andaggregation/duplication of known products such as polymers and,therefore, is not an invention. 58. As regards the submission made on behalf of the 4threspondent/4th defendant that there is no pleadings of common lawright are available in the plaint and the averments filed insupport of the affidavit for grant of ad interim injunction, it issubmitted by Mr.Arvind P.Datar learned senior counsel, that in theabsence of any such pleadings or averments, learned Judge ought notto have granted order of ad-interim injunction regarding passingoff the product. 59. We also perused the typed set of documents filed in theseappeals. A comparison in US patent Nos. (document Nos. 1 to 5) inO.S.A.No.263 of 2006 and the application filed for patent by theapplicant/plaintiff would reveal that the process involved in themanufacture of food-grade laminated paper the contents are almostverbatim similar to that of the manufacture of layers of plasticfilm laminated but one and another has found in US patent. Thoughthe applicant/plaintiff claims that it is a product as well asprocess patent, materials available on record in the form ofprocess patent and the applicant/plaintiff's application for patentwould clearly establish that the patent granted in his favour on20.01.2006 is only a process patent. The art of making laminatedfood-grade paper is very well known in India as well as in otherparts of the world and therefore, it is prima facie opinion of theCourt that no invention is involved. But at the same time,innovation in the form of making banana leaf with artificialstructure of food-grade quality and artificial scented smell ofbanana leaf is found in the said product and therefore, it could betermed as innovation and some novelty is also involved in the saidproduct. 60. The patent relates to invention or otherwise and as perHalsburys Law of England, the word 'Patent' is used denoting amonopoly right in respect of an invention. Section 2(m) of the Patents Act, 1970 defines "patent" means apatent for any invention granted under this Act.The term "invention" is defined under Section 2(j) of Patents Act,1970 as, "invention", means a new product or process involving aninventive step and capable of industrial application. https://hcservices.ecourts.gov.in/hcservices/ The said definition of "invention" itself was substituted by Act 38of 2002 and before that the said Section 2(j) stood as follows:-"Invention" means any new and useful-(i) Art, process, method or manner of manufacture, (ii) Machine, apparatus or other article,(iii) Substance produced by manufacture, and includes anynew and useful improvement of any of them and an allegedinvention.The term "inventive step" came to be defined under Act 15of 2005 with effect from 1st January, 2005 under Section2(ja), which is as follows:2(ja). "Inventive step" means a feature of an inventionthat involves technical advance as compared to theexisting knowledge or having economic significance orboth and that makes the invention not obvious to a personskilled in the art. Therefore, an "inventive step" which is a necessary ingredient ofinvention in order to make an Applicant eligible for grant ofpatent under the Act, must be relating to an invention involvingtechnical advance or having economic significance or both alongwith a necessary factor that such invention should make it notobvious to a person skilled in the art. Therefore, a patent musthave characters of novelty, non-obviousness and enablement, out ofwhich, enablement being the concept of putting the novelty intoaction and all the above said ingredients must consecutively bepresent to have a valid patent. Admittedly, in the case on hand,pre and post grant oppositions had been raised in respect of thepatent granted to the applicant/plaintiff and under Section 43 ofthe Patents Act 1970, it is open to a party who is opposing thepatent to prove that there are no inventive steps in the inventionof the patent and therefore, the patent granted need not be takeninto consideration at least at the time of granting order ofinterim injunction.61. Section 48 of the Patents Act, 1970 as amended by thePatents (amended Act 2002) with effect from 20th May, 2003)protects the rights of patentees. Since we earlier held that thepatent granted to the applicant/plaintiff is only a process patent,in terms of sub-section (b) of Section 48, the exclusive right toprevent third parties, who do not have his consent, from the act ofusing that product, and from the act of using, offering for sale,selling or importing for those purposes, the product obtaineddirectly by that process in India is available to theapplicant/plaintiff. 62. It is an admitted fact that the application for patent wassubmitted by the applicant/plaintiff on 29.8.2000 and the latterpatent No.198079 was granted to him on 20th January, 2006 with https://hcservices.ecourts.gov.in/hcservices/ effect from 29th August 2000 in terms of Section 45(1) of thePatents Act of course is a subject matter of challenge in pre andpost grant oppositions filed by the 4th respondent/4th defendant.Therefore, prima facie, and as on date, patent is in force infavour of the applicant/plaintiff. On earlier occasions prior togrant of patent, the applicant/plaintiff got registered the designof artificial laminated banana paper under Designs Act there wereinfringers. Hence, the applicant/plaintiff instituted suits againstthe defendants 1 to 3 in various courts and got interim orders andlater on he came to know that the 4th respondent/4th defendant is adealer of defendants 1 to 3 and according to him, he is sellingspurious artificial banana leaves manufactured by defendants 1 and2. 63. Admittedly, the 4th respondent/4th defendant is not aregistered design holder in respect of artificial banana leaf andmoreover his pre and post grant oppositions to the grant of patentare pending adjudication before the appropriate authorities and aslong as the patent is in force, the applicant/plaintiff who is thepatent holder is entitled to some protection. Therefore, it is notdifficult to come to the conclusion that prima facie, the productof the applicant/plaintiff namely artificial banana leaf for whichpatent was granted as found a special place in the market and isalso evidenced by the fact of much volume of business conducted byhim. In the judgment reported in (2007)2 MLJ 907 - K.Ramu vs.Adayar Ananda Bhavan, Chennai, all the earlier decisions werereferred to on that point and it has been held that issuance ofpatent right is an admitted fact and the same is valid for a periodof 20 years, the plaintiff is deemed to have discharged his initialresponsibility of proving that they are protected by thecertificate issued by the competent authorities under the PatentsAct and therefore, it should be presumed to be a prima facie caseon the strength of a certificate. 64. Under Section 108 of the Patents Act, when third partiesinfringe the right granted under the Patents Act, Court may grantrelief’s including injunction and ordering the goods to be seized,forfeited or destroyed. 65. As regards the contention raised by the learned seniorcounsel Mr.Arvind P.Datar, appearing for the appellant inO.S.A.No.263 of 2006/4th respondent/4th defendant in the absence ofpleadings regarding common law right, the applicant/plaintiff isnot entitled to invoke Order 39 Rules 1 and 2 of C.P.C., we holdthat such an application is maintainable. In the judgment reportedin (2008)4 MLJ 252 (SC) - Tanusree Basu and others vs. IshaniPrasad Basu and others, the grant of ad-interim injunction againstco-owner came for consideration. Though there are various decisionsto the effect that the co-owner cannot claim an order of injunction https://hcservices.ecourts.gov.in/hcservices/ against any co-owner with regard to the property owned jointly, inview of the facts of the case, it has been held that Order 39 Rule1 of C.P.C. is not the sole repository of the power of the Court togrant injunction and that Section 151 of the Code confers power onthe Court to grant injunction if the matter is not covered by Rules1 and 2 of Order 39 of the Code. Therefore, by applying theproposition laid down in the said decision even assuming that theapplication under Order 39 Rule 1 and 2 of C.P.C. is notmaintainable in the absence of pleadings regarding common lawright, the Court can very well invoke Section 151 of C.P.C. andgrant an order of interim injunction. 66. As regards the submissions made by the learned seniorcounsel appearing for the appellant in O.S.A.No.263 of 2006 that apatent which is less than 6 years old can be regarded as a recentone, as held in Manicka Thevar's case reported in AIR 1965 Madras327, the said view has lost its significance in view of the latestdevelopment in the field of science and technology. Now, the patentlife is very short in view of new innovations and inventions whichare frequently taking place, wherein a new product is using itssignificance and market very quickly. We are not dealing with thequestion of invention or novelty involved in respect of the productnamely the artificial banana leaf for which patent was given infavour of the plaintiff, as pre and post grant oppositions to thesaid patent are pending adjudication before the concerned authorityat the behest of the 4th respondent/4th defendant and it is for theconcerned authority to take a decision on that aspect and if anyparty aggrieved by such decision, may invoke appropriate remedybefore the appropriate forum in terms of the Patents Act.Therefore, applying the principles laid down in the above citeddecisions, we hold that even though the banana leaf is a naturalproduct, the invention on the part of the applicant/plaintiff touse artificial laminated food-grade shape in the form of bananaleaf with its colour with artificial scented smell is prima facieinnovative and that in view of the Patent granted in his favour forthe said product, he is entitled for protection pending disposal ofthe suit. 67. We further hold that under Section 108 of the Patents Act,the applicant/plaintiff is entitled to maintain the suit underPatents Act.68. As regards the maintainability of application under Order39 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. https://hcservices.ecourts.gov.in/hcservices/

69. Now, coming to the question of sustainability of the orderpassed in O.A.No.495 of 2006, we hold that even prior to the grantof patent, the applicant/plaintiff got a registered Design inrespect of artificial laminated paper and the 4th respondent/4thdefendant has not denied the fact that he is also manufacturing andmarketing the similar kind of artificial laminated banana leafthough according to him it is of very small quantity. 70. The applicant/plaintiff has not given the details ofprocess under which he is manufacturing the laminated artificialbanana leaf. Admittedly, even prior to the year 2000, theapplicant/plaintiff is manufacturing the said product and marketingit and therefore, is having goodwill and trade name for his productand unless the 4th respondent/4th defendant is restrained by way ofan interim measure from selling or marketing the said product, theapplicant/plaintiff is bound to suffer irreparable loss and gravehardship and also financial loss. Therefore, prima facie appearsthat the balance of convenience is in favour of theapplicant/plaintiff. Therefore, the interim order granted by thelearned single Judge in O.A.No.495 of 2006 is sustained andaccordingly, O.S.A.No.263 of 2006 filed by the 4th respondent/4thdefendant challenging the vires of the said order, is dismissed.However, in the circumstances, there will be no order as to costs. 71. In so far as non-granting of interim order in O.A.No.494of 2006 is concerned, in the earlier portion of the judgment wehold that the protection of artificial banana leaf prima facieappears to be of not an invention but can be termed only as aninnovation. Admittedly, as per the Patent Certificate dated20.01.2006 patent was granted in favour of the applicant/plaintiffsubject to the condition that the validity of the patent is notguarantee. In terms of Section 13(4) of the Patents Act, the grantof patent itself cannot be deemed to be prima facie case on theside of the patentee and it is a duty of the patentee to proveprima facie case as any other case of application for injunction.Since applications for opposition of grant of patent are pendingadjudication before the appropriate authority, and that we are ofthe prima facie view that the concept of artificial banana leafprima facie appears to be innovative only, we are not inclined tointerfere with the order passed by the learned single Judge inO.A.No.494 of 2006. Accordingly, O.S.A.No.283 of 2006 filed by theapplicant/plaintiff is dismissed and the orders passed by thelearned single Judge in O.A.No.494 of 2006 are confirmed. However,in the circumstances, there will be no order as to costs. It ismade clear that the observations made/findings given in theseappeals are only for the purpose of adjudicating the issuesinvolved and for deciding of these appeals and need not influence https://hcservices.ecourts.gov.in/hcservices/ the mind of the appropriate authority at the time of deciding thepre and post grant oppositions of Patent granted in favour of theapplicant/plaintiff. Sd/-Asst. Registrar./true copy/Sub Asst. Registrar.gr.To1. The sub Assistant RegistrarOriginal Side, High Court, Madras1 cc to Mr.A.A. Mohan, advocate, Sr. 331541 cc to Mr.Sivam sivandraj, Advocate, Sr. 33426O.S.A.NOS.263 AND 283 OF 2006MDR (CO)kk 12/7Date: 30.06.2008