In the High Court of Judicature at Madras Dated: -30.06.2008 Coram: The Hon'ble Mr.Justice P.K.MISRA AND The Hon'ble Mr.Justice M.SATHYANARAYANAN O.S.A.NOS.263 AND 283 OF 2006 O.S.A.No.263/2006 Mariappan ... Appellant Vs. 1. A.R.Safiullah 2. Mr.Daniel 3. M/s Jayam Industries, Rep. by its partnerMrs.Indira Daniel, 5/10, l Arumugam Road, Sivakasi. 4. M.A.Rajabudeen, Proprietor, trading as M/s Shalimar Traders, 35/975/210A, Parambil, Kollam 691 003. ... Respondents O.S.A.No.283/2006 A.R.Safiullah ... Appellant Vs. 1.Mr.Daniel 2. M/s Jayam Industries, Rep. by its partner Mrs.Indira Daniel 15/10, l Arumugam Road, Sivakasi. 3. M.A.Rajabudeen, Proprietor, trading as M/s Shalimar Traders, 35/975/210A, Parambil, Kollam 691 003. 4. Mariappan ... Respondents Original Side Appeals under Order XXXVI Rules 1 & 9 of O.S.Rules and Clause 15 of Letters Patent against the common order dated 10.08.2006 made in O.A.Nos.494 and 495 of 2006 in C.S.No.448 of 2006 passed by the learned single Judge of this Court. https://hcservices.ecourts.gov.in/hcservices/ Mr.Arvind P Datar Sr.Counsel..for Appellant in O.S.A.No.263 of 2006 for M/s Sivam Sivanandaraj & for 4th Respondent in O.S.A.No.283/2006 Mr.P.S.Raman, Sr.Counsel ... for Appellant in O.S.A.283 of for M/s A.A.Mohan 2006 & for first Respondent in O.S.A.263/2006 (Judgment of the Court was delivered by M.SATHYANARAYANAN, J) The orders passed herein will govern the disposal of O.S.A. Nos.263 and 283 of 2006. For the sake of convenience, the array of parties as referred in C.S.No.448 of 2006, is adopted here also. The facts which are necessary for the disposal of this Original Side Appeals are as follows:- One A.R.Safiullah, sole Proprietor and trading as S.A.Safiullah & Company having office at Chennai as well as Pudukottai, has instituted a suit in O.S.No.488 of 2006 on the file of this Court against Daniel, Proprietor of M/s. Jayam Traders-the first Defendant, M/s. Jayam Industries represented by its partner Tmt.Indira Daniel-second Defendant, M.A.Rajapudeen, Proprietor M/s. Shalimar Traders-third defendant and Mariyappan, trading as Sivagami Agencies, Sivakasi-the fourth Defendant praying for a judgment and decree for a permanent injunction restraining the defendants from in any manner infringing the plaintiff's registered patent under No.198079 in respect of "food-grade laminated paper, method and apparatus for manufacturing the laminated paper", by manufacture and sale of products identical to the plaintiff's products and in the method and apparatus by which to manufactures the said product; And restraining the defendants from in any manner passing off artificial banana leaves (food-grade laminated paper) manufactured and sold by the plaintiff as and for plaintiff's artificial banana leaves (food-grade laminated paper) by using identical or deceptively similar same colour scheme, getup and layout and for destruction of all the materials and implements used for creation of the said infringing goods and for other consequential relief. 2. The plaintiff pending disposal of the said suit, filed applications in O.A.Nos.494 and 495 of 2006 respectively, praying for an ad-interim injunction restraining the Respondents/Defendants from in any manner infringing his registered patent under patent No.198079 in respect of "food-grade laminated paper, method and apparatus for manufacturing the laminated paper", by manufacture and sale of products identical to the product and in the method and apparatus by which he manufactures the said product; And for ad- interim injunction restraining the Respondents/Defendants from in any manner passing off artificial banana leaves(food-grade https://hcservices.ecourts.gov.in/hcservices/ laminated paper) manufactured and sold by them and for applicant's artificial banana leaves (food-grade laminated paper) by using identical or deceptively similar same colour scheme, getup and layout or in any other manner. 3. The sum and substance of the averments made in both applications are as follows:- The applicant/plaintiff submitted that he is the proprietor of patent for "food-grade laminated paper, method and apparatus for manufacture the laminated paper" granted to him in patent No.198079 with effect from 29th October, 2000 and he has also got design registered in his favour under the Designs Act which is valid till date. The applicant/plaintiff has been manufacturing and selling food-grade laminated paper resembling a banana leaf ever since the year 2000. By virtue of grant of patent under patent No.189079 with effect from August 2000, he is exclusively entitled to manufacture the 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. On earlier occasions there were infringements on account of the registered designs obtained by the applicant/plaintiff and therefore, he was constrained to institute number of suits against first defendant and got interim orders in his favour. When the applicant/plaintiff instituted a suit against one of the infringers at Kerala, he became aware that the 4th respondent/4th defendant has also manufacturing and selling artificial banana leaves and subsequent enquiry reveal that the defendants and connected persons are infringing the applicant/plaintiff's process and product. It is further stated by the applicant/plaintiff that the 4th respondent/4th defendant is a beneficiary associated with the third defendant and in the circumstances enumerated above, he had no other option except to file the present suit against the defendants for the larger relief to restrain them from patent infringement as well as passing off under the common law. 4. This Court had granted ex parte orders of ad-interim injunction in favour of the applicant/plaintiff. 5. The fourth respondent/4th defendant had filed application Nos.2278 and 2279 of 2006 in O.A.Nos.494 and 495 of 2006 in C.S.No.448 of 2006 for vacating the ex parte orders of ad-interim injunction granted in favour of the applicant/plaintiff. In the affidavit filed in support of the above said applications, the 4th respondent/4th defendant has stated that the claim of the applicant/plaintiff that he conceived idea of artificial laminated banana leaves for serving and storing food and it is his original, intellectual property is wholly unsustainable. It is further submitted by the 4th respondent/4th defendant that the lamination is a technology well known in India for several decades and several https://hcservices.ecourts.gov.in/hcservices/ companies including M/s.Jailaxmi Engineering Corporation manufactured machines which are used for lamination of paper and other products and the 4th respondent/4th defendant also makes necessary dyes ready for printing and cutting paper to a particular shape. The concept of food-grade laminated paper is well known and used all over the world and both the process of manufacture of food-grade laminated paper (method and apparatus) and the product itself are well known and used in India. It is also submitted by the 4th respondent/4th defendant that the patent obtained by the applicant/plaintiff is only the process patent and not a product patent and even at the time of pendency of the application for patent, he filed application before the concerned authority for patent pre-grant opposition and after the grant of patent also, he filed post-grant opposition and the same are pending adjudication. It is a specific case of the 4th respondent/4th defendant that the modifications made to printing machine by the applicant/plaintiff are not novel and do not constitute an invention within the meaning of Patents Act. The manufacturing process involved is nothing but laminated paper which is green in colour with a design and cut in the shape of banana leaf cannot be termed as original or intellectual property of the applicant/plaintiff and the leaf of a banana plant is a product of nature and no person can have proprietary right over such shape or even claim that he designed a banana leaf. It is also the submission of the 4th respondent/4th defendant that mere grant of patent alone does not lead to a prima facie conclusion that the Patent is valid or that it is a novel or new and he is not copying the method and process adopted by the plaintiff for manufacture of laminated paper. On a point of law, it has been contended by the 4th respondent/4th defendant, that an application for ad-interim injunction restraining him from passing off is not maintainable in terms of the provisions of the Patents Act, 1970. 6. In respect of the applications filed by the 4th respondent/4th defendant, the applicant/plaintiff has filed his reply. All the applications were dealt together and the learned single Judge has ordered application No.495 of 2006 and thereby granted ad-interim injunction restraining the respondents/defendants from in any manner passing off the artificial banana leaves (food-grade laminated paper) manufactured and sold by the respondents/defendants as and for applicant/plaintiff's artificial banana leaves by using identical or deceptively similar same colour scheme, getup and layout till the disposal of the suit. 7. The learned single Judge, in so far as the application No.494 of 2006 is concerned, which has been filed for the relief of ad-interim injunction restraining the respondents/defendants from https://hcservices.ecourts.gov.in/hcservices/ infringing the registered patent No.198079 in respect of food-grade laminated paper etc., has closed the said application. 8. The applicant/plaintiff aggrieved by the order of the learned single Judge in closing the application in O.A.No.494 of 2006, has filed an appeal in O.S.A.No.283 of 2006 and the 4th respondent/4th defendant aggrieved by the order of ad-interim injunction granted in O.A.No.495 of 2006 has filed an appeal in O.S.A.No.263 of 2006. 9.Now, the points for consideration in these appeals are:- (a) Whether the application for ad-interim injunction is maintainable in a suit filed under Patents Act,1970? (b) Whether the order of ad-interim injunction granted in O.A.No.495 of 2006 restraining the 4th respondent/4th defendant from in any manner passing off artificial banana leaves (food-grade laminated paper) manufactured and sold by him as and for applicant's artificial banana leaves, is sustainable? (c) Whether the order passed in O.A.No.494 of 2006 dismissing the application filed by the applicant/plaintiff for ad-interim injunction restraining the respondents/defendants from in any manner infringing the applicant's registered patent in respect of food-grade laminated paper, method and apparatus for manufacture laminated paper is liable to be set aside? 10. Heard Mr.Arvind P Dattar, learned senior counsel appearing for the appellant/4th respondent/4th defendant in O.S.A.No.263 of 2006 and Mr.P.S.Raman, learned senior counsel appearing for the appellant/applicant/plaintiff in O.S.A.No.283 of 2006. 11. The learned senior counsel appearing for the 4th respondent/4th defendant had made the following submissions:- (a) The patent granted to the applicant/plaintiff is not valid and that no prima facie case has been made out in his favour; (b) The patent which is subject matter of the present dispute 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 Act and 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 the applicant/plaintiff is not a valid one; (f) The validity of new patent granted in favour of the plaintiff/applicant is questioned and therefore, no injunction can be granted. (g) No monopoly rights no injunction can be granted: 12. The patent granted to the applicant/plaintiff is not valid and that no prima facie case has been made out in his favour:- The learned senior counsel appearing for the 4th respondent/4th defendant has submitted that the grant of a patent does not guarantee its validity and he invited the attention of this Court to the Patent Registration Certificate dated 20.01.2006 granted in favour of the applicant/plaintiff. A perusal of the said certificate would reveal that a patent has been granted in favour of the applicant/plaintiff to have the exclusive right to prevent third parties from making, using, offering for sale, selling or importing for those purposes the (food-grade laminated paper, method and apparatus for manufacturing the laminated paper for a period of 20 years with effect from 29.08.2000 and the said certificate also states that the patent granted is subject to the conditions that the validity of this patent is not guaranteed and that the fee prescribed for the continuance of this patent are duly paid. The learned senior counsel for the 4th respondent/4th defendant has also drawn the attention of this Court to Section 13 (4) of the Patents Act, 1970. The said provision says that the examination and investigations required under Section 12 and this Section shall not be deemed in any way to warrant the validity of any patent and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon. Therefore, according to the learned senior counsel in terms of Section 13(4), grant of patent in favour of the applicant/plaintiff does not ensure its validity. The learned senior counsel appearing for the 4th respondent/4th defendant has taken this Court to the judgment reported in AIR 1982 SC 1444 – M/s.Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries. In paragraph No.33 of the said judgment, the Hon'ble Supreme Court has referred to Section 13(4) of the Patents Act and held that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not 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 or infringement proceedings. 13. The learned senior counsel for the appellant in O.S.A.No.263 of 2006/4th respondent/4th defendant has referred to the pre-grant opposition filed by the 4th respondent/4th defendant in respect of the application for patent submitted by the applicant/plaintiff. It is further submitted by the learned senior counsel that after the grant of patent also, the 4th respondent/4th defendant filed his post-grant opposition and both applications are pending adjudication. Therefore, according to the learned senior counsel, that merely because the applicant/plaintiff had obtained registration of patent, it cannot be presumed to be valid and such registration alone cannot be the basis for the applicant/plaintiff to claim that he has got a prima facie case in his favour. Now we are dealing with points on which, 4th respondent/4th defendant is making his submissions; 14. The patent which is subject matter of the present dispute is not a novel or patentable invention. The learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006/4th respondent/4th defendant has submitted that as per the patent certificate issued in favour of the applicant/plaintiff, the patent is for food-grade laminated paper, method apparatus for manufacture of laminated paper and it is not for a laminated banana leaf. The learned senior counsel further submitted that the patent obtained is only for process and not for the product if 'artificial banana leaf' and the applicant/plaintiff has miserably failed to establish as to how the patent for process is new, novelty or involves an invention or how the process is economically beneficial. Further, according to the learned senior counsel for the appellant in O.S.A.No.263 of 2006, the process of manufacture of food-grade laminated paper are well known and used in India for several decades and nothing new was involved in manufacturing a laminated paper in the shape of banana leaf. It is also submitted by the learned senior counsel that even the design of the banana leaf cannot be termed as original or the intellectual property of the applicant/plaintiff as it is a product of nature and no person including the applicant/plaintiff can hold proprietary right over such shape or even claim that he designed a banana leaf and that plastic, steel and even ceramic plates have been made in the shape and design of banana leaf for the past several years. The machineries which are used for making the paper with laminated quoting, the artificial banana leaf are made by Jailaxmi Engineering Corporation and such machineries manufactured by them have been sold all over India and therefore the manufacture of 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 in O.S.A.No.263 of 2006 has invited the attention of this Court to the application filed by the applicant/plaintiff for grant of patent which verbatim reveals the methodology of manufacturing laminated shape in United Kingdom and United States of America. According to the learned senior counsel, there are at least five prior patents in United Kingdom and United State of America for lamination process and purpose and therefore no invention or novelty is involved in the manufacture of artificial banana leaf on the part of the applicant/plaintiff. 16. The suit filed is only confined to the Patents Act and all relief including the relief of passing off is only claimed vis-à-vis, the registered patent: The learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006/4th respondent/4th defendant has drawn the attention 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 under Section 48, 104 and 108 of the Patents Act, 1970. it is a specific contention of the learned senior counsel that the relief of passing off cannot be granted under Patents Act and that the suit as framed is not maintainable in law and that the suit should have been filed combining the cause of action under Patents and Designs Act. It is also contended by the learned senior counsel, the relief of passing off can be granted under common law when there is no pleading available either in the plaint or in the affidavit filed in support of O.A.Nos.494 and 495 of 2006 claiming relief under common law and therefore the order of injunction granted in O.A.No.495 of 2006 against the appellant restraining him from passing off a product is per se unsustainable in law. The learned senior counsel also submitted that there is no mention of even the registration numbers of the design or even the features of the design on which the applicant/plaintiff claims copyright in the plaint as well as in the affidavit filed in support of the injunction applications and therefore no relief should have been granted in his favour. 17. The design of banana leaf registered in favour of the applicant/plaintiff is not a valid one: The learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006 submitted that there is nothing new or original in the same for shape and configuration of banana leaf as the banana leaf is nature's creation and the applicant/plaintiff cannot claim that he conceived the design, shape, colour and parallel nerves. The design of banana leaf on plates for consuming food is well known and such plates have been made for decades out of silver, stainless steel, glass and ceramic and there is no novelty 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 to the learned senior counsel the grant of such patent in favour of the applicant/plaintiff is against the provisions of the Patents Act. Moreover the 4th respondent/4th defendant had also filed pre/post grant opposition of the patent and those applications are pending adjudication and no finality has been reached and since no finality has been reached, in view of the same, injunction regarding passing off should not have been granted in favour of the applicant/plaintiff. 18. The validity of new patent granted in favour of the plaintiff/applicant is questioned and therefore, no injunction can be granted. Mr.Aravind. P Dattar, learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006 has invited the attention of this Court to the judgment reported in AIR 1965 Madras 327- V.Manicka Thevar vs. Messrs. Star Plough Works, Melur. In paragraph 5 of the said judgment it has been stated that an interim injunction will not be granted if the patent which has been obtained by the plaintiff is a recent one and there is a serious controversy about the validity of grant of the patent itself.... In such case, Courts will not grant an interim injunction restraining the defendant from pursuing his normal business activity. In paragraph 6 of the said judgment it has been stated that the patent is a very recent one and the earlier decisions have uniformly taken a view that any patent which is less than 6 year old is regarded as a recent one. In the said decision, reliance was placed upon the Statement of the law in Terrell on Patent, 9th Edition pages 318 to 320 and the decision reported in 52 Calcutta Weekly Notes 253. 19. The learned senior counsel for the 4th respondent/4th defendant also drawn to the attention of the Court to the decision reported in AIR 1985 Delhi 136 - M/s.Niky Tasha India Private Ltd., v. M/s.Faridabad Gas Gadgets Private Ltd. wherein the same question has been reiterated and so also the decision reported in AIR 1996 Calcutta page 367 Hindusthan Lever Limited vs. Godrej Soaps Limited and others. The learned senior counsel also placed reliance upon the judgment reported in AIR 2000 Delhi page 23 – M/s. Standipack Pvt. Ltd. and another vs. M/s. Oswal Trading Co., Ltd. wherein it has been laid down that when an application filed for revocation of patent and questioning the validity of patent is pending, injunction cannot be granted. It is also submitted by the learned senior counsel that as per Section 23 of the Designs Act, 2000, provisions of Patent Act pertaining to validity of patents apply to the Designs Act and consequently the provisions therein had case laws on that subject can be applied to the Design registered by the applicant/plaintiff. https://hcservices.ecourts.gov.in/hcservices/ 20. No monopoly rights no injunction can be granted: The learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006 reiterated the submissions that since 4th respondent/4th defendant had already filed necessary applications pre-grant as well as post-grant oppositions to the patent and there is serious doubt regarding the grant of patent in favour of the applicant/plaintiff, the learned single Judge ought not to have granted ad-interim injunction restraining the 4th respondent/4th defendant from passing off his product namely artificial banana leaves. The learned senior counsel further submitted that there are prima facie materials to show that patent and designs are not validly registered. The order of ad-interim injunction granted in favour of the applicant/plaintiff created a monopoly in favour of the applicant/plaintiff and the same is unsustainable in law and on facts. The learned senior counsel further submitted that in the absence of any pleadings claiming equitable relief of injunction under common law, the grant of ad-interim injunction under Patents Act in favour of the applicant/plaintiff is prima facie unsustainable in law. It is also submitted by the learned senior counsel that the applicant/plaintiff miserably failed to establish the ingredients for grant of ad-interim injunction in his favour and therefore the interim order granted in O.A.No.495 of 2006 is liable to be set aside and consequently the O.S.A.No.263 of 2006 is to be allowed. 21. Per contra, Mr.P.S.Raman learned senior counsel appearing for the appellant in O.S.A No.283 of2006/Applicant/Plaintiff has submitted that patent has been granted to the applicant/plaintiff and it should be protected. It is further submitted that once an invention is made, it is easier to state that it is very obvious but until such, the present invention is made by the applicant/plaintiff, nobody has thought to incorporate the food- grade laminated paper in the form of banana leaf and more importantly incorporate its natural features of temperature retention and flavour through artificial means. 22. The learned senior counsel for the applicant/plaintiff further submitted that ever since the year 2000, he has been manufacturing and selling food-grade laminated paper resembling banana leaf and a design was also registered in his favour under the Designs Act, which is valid till date. Afterwards, patent was granted to him with effect from 29th August, 2000 and thereby, the applicant/plaintiff is exclusively entitled to manufacture artificial food-grade laminated paper resembling banana leaf. Moreover, the applicant/plaintiff had sold artificial banana leaf and 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 infringers on account of their registered designs and one such suit was filed against the first respondent/first defendant at Pudukottai, which was ultimately transferred to this Court and an order of ad-interim injunction was granted in favour of the applicant/plaintiff. The applicant/plaintiff became aware when he took