gst 1 cra185.11.sxw IN THE HIGH COURT OF JUDICATURE OF BOMBAY CIVIL APPELLATE JURISDICTION. CIVIL REVISION APPLICATION NO. 185 OF 2011. SERGI Transformers Explosion Prevention ) Technologies Private Limited ) Having its office at: 324, Udyog Vihar ) Phase-IV, Gurgaon, Haryana - 122 016 ) ... Applicant Versus 1. CTR Manufacturing Industries Limited ) having its office at Nagar Road, ) Pune - 411 014 ) 2. Easun MR Tap Changers Private Limited ) having its registered office at 612, (233), ) C.T.H. Road, Thiruinravur, ) Chennai - 602 024 ) 3. EMCO Limited ) having its registered office at ) No.F-5, Road No. 28, ) Wagle Industrial Estate, ) Thane, Maharashtra ) ... Respondents Mr. P. S. Dani with Mr. Sanjay Khair, Ms. Rani Bozz i/by Chaitanya Chavan, Adv. for the applicants. Mr. Ravi Kadam, Advocate General with Mr. V. R. Dhond, Mr. Vishal Kanade, Mr. Himanshu Kane, Mr. Aditya and Mr. Rohan Lamba i/by M/s. Paras Kuhad & Associates, Adv. For respondent No.1. CORAM: B. R. GAVAI, J. 6th June, 2011 JUDGMENT: Admit. gst 2 cra185.11.sxw By consent taken up for final hearing. 1. The applicant challenges the order dated 18.2.2011 passed by the learned District Judge, Thane below Ex.57 and the order dated 1.3.2011 passed below Ex.133 in Civil Suit No.1/2005. 2. There have been several rounds of litigation between the parties which have not only reached to this Court, but also upto the Apex Court. 3. Bare necessary facts for adjudication of present application are as under: The respondents-plaintiffs have filed a Civil Suit bearing No.1/2010 in the Court of learned District Judge, Thane claiming infringement of patent and for an order of injunction restraining the defendant-applicant and defendant No.2 from infringing the plaintiffs’ patent by making, using, offering for sale and/or selling the impugned product. The suit was filed on 11.1.2010. The writ of summons was served on the defendant on 4.3.2010, written statement came to be filed by the present applicant on 20.3.2010. It appears that subsequently counter claim came to be filed on 8.4.2010 thereby seeking relief for revocation of patent of the plaintiff. An application was filed by the present applicant below Ex.57, for seeking leave to take defendant’s counter claim on record. An objection has been filed by the respondent-plaintiff below gst 3 cra185.11.sxw Ex.59, objecting to the counter claim under section 8 of the Court Fees Stamp Act. The learned Judge vide order dated 7.8.2010 has passed an order to the following effect: “The application regarding allow to claim the counter claim on record. amendment which is carried out and the order below Exh.5 will be considered simultaneously and also application under S.8 of Bombay Court Fee Stamp Act.” It appears that Writ Petition No.6994/2010 came to be filed before this Court. The learned Judge of this Court (Hon’ble Mr. Justice J. H. Bhatia) vide order dated 15.9.2010 disposed of the said writ petition with certain clarification. It is pertinent to note the observations made by the learned Judge while disposing of the said writ petition: “3. The learned Counsel for the petitioner contends that in view of the proviso to Section 104 of the Patents Act, since the counter- claim for revocation of the patent is made by the defendant, the suit along with the counter-claim has to be transferred to the High Court for decision and the District Court ceases to have jurisdiction. He contends that the question of jurisdiction should be decided first and then only other applications, particularly Ex.5 be considered. When the District Judge in the impugned order says that all these matters, including the application to make a counter- claim will be heard together, it is implied that he will also consider the question about jurisdiction. When the provisions of Sec.104 will be pointed out to the learned District Judge, he cannot ignore the said provisions. Whether the counter-claim is of the nature as stated in the proviso to Sec.104 will have to be heard by him before coming to the conclusion whether he has or has no jurisdiction. I see no illegality or irregularity in the impugned order that all these application shall be heard together. It is presumed that if he comes to the conclusion that he does not have jurisdiction in view of the provisions of Sec.104, naturally, he would desist from passing any order. However, if he comes to the conclusion that the case is not covered by the proviso to Sec.104 and he has jurisdiction, he gst 4 cra185.11.sxw cannot be restrained from hearing the application Exhibit 5 and from passing order on the same immediately after hearing the matter.” It is further pertinent to note that while passing order below Ex.61 dated 12.11.2010, the learned District Judge has himself observed that if simpliciter issue regarding jurisdiction is framed by this Court, all the questions pertaining to jurisdiction including pecuniary and territorial jurisdiction and as to whether the jurisdiction is barred by specific provision of law can be considered together. Thereafter, vide order dated 01.01.2011, the learned Judge has considered the issue regarding pecuniary and territorial jurisdiction and held the same in favour of the present respondent-plaintiff. 4. Being aggrieved thereby, Civil Revision Application No.62/2011 was filed before this Court. This Court vide its order dated 2.2.2011 allowed the civil revision application. This Court in paragraphs 9, 10 and 11 while allowing the revision application observed thus: “9. Undisputedly, the present applicant has filed its counter claim seeking relief of revocation of patent. Undisputedly, the present applicant has also raised issue regarding the jurisdiction of the learned District Judge in view of the provisions of section 104 and 64 of the Patents Act. Undisputedly, the learned Judge himself vide order dated 7.8.2010 and 12.11.2010 has directed all these applications to be heard together. Undisputedly, this Court vide its order dated 15.9.2010 has also observed that once the provisions of section 104 are brought to the notice of the learned District Judge he cannot ignore the said provisions. It has further been observed that if the learned Judge comes to a conclusion that he does not have jurisdiction under section 104 of gst 5 cra185.11.sxw the Act, naturally he would desist from passing any other order. It has been observed that if he comes to the conclusion that the case is not covered by the provisions of section 104 and he has jurisdiction, he cannot be restrained from hearing the application below Ex.5. 14. It could thus be clearly seen that learned Judge has overruled the objections of present petitioners regarding the jurisdiction of the learned Judge to entertain the suit in view of specific provisions under Section 104 of the Patents Act, 1970. In that view of the matter, I find that since the petitioners have a remedy under Section 115 to prefer the Civil Revision Application against the order impugned herein, it would be appropriate that the petitioners are permitted to covert the present writ petition into CRA. 10. It will be necessary to refer to section 104 of the Patents Act which reads thus: “104. Jurisdiction.___ No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any Court inferior to a district Court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter- claim, shall be transferred to the High Court for decision.” A perusal of the said provision would clearly show that where a counter claim for revocation of patent is made by the defendant, the suit along with counter claim shall be transferred to the High Court for decision. It is thus clear that issue of applicability of section 104 of the Patents Act goes to very root of the matter. As has already been observed by my brother Hon’ble Shri Justice Bhatia in earlier round of litigation that the learned District Judge is required to consider as to whether counter claim is in the nature of as stated in proviso to section 104 before he comes to the conclusion, whether he has or he has no jurisdiction. In that view of the matter, I find that the piecemeal decisions by the learned Judge in the present case are totally not only unwarranted but are in total defiance of the orders passed by this Court in earlier round of litigation and also in ignorance of his own observations in the orders dated 7.8.2010 and 12.11.2010. The learned Judge has himself in para 4 of the order dated 12.11.2010 observed as under: gst 6 cra185.11.sxw “4. Elaborate submissions from both sides heard by this Court and it has been made clear to both the parties that once the question of jurisdiction of this Court is being challenged, it is to be considered as a preliminary issue and by framing a relevant issue to that effect. Therefore, in my opinion, instead of indulging into the submissions advanced before the Court challenging the jurisdiction of this Court and thereby to frame verbose issues, it will be appropriate to this Court to frame issues simpliciter raising a question regarding the jurisdiction of this Court. For this purpose, the word `jurisdiction’ shall implicate the territorial, pecuniary jurisdictions. Besides that, if the jurisdiction of this Court is barred by a specific provision of law, the same also can be discussed and decided under the same issue of jurisdiction of this Court. For this reason it has to be made clear to both the sides that this Court is going to consider all those points which have been raised for the purpose of setting the jurisdiction of this Court and it is not necessary to frame distinct issues on each point as has been suggested vide Ex.64 and Ex.65.” (emphasis supplied) It is thus clear that the learned Judge himself was mindful of the fact that issue of jurisdiction will go to the root of the matter and has therefore framed preliminary issue. He has also directed the parties to lead oral or documentary evidence on the preliminary issue. In that view of the matter I find that the learned trial Judge ought to have decided the issue pertaining to the applicability of section 104 of the Patents Act also. 11. It is also difficult to understand as to what prevented the learned Judge from deciding the applications below Exs.57 and 59 inasmuch as no complicated issues are involved while deciding the said applications. In my considered view, unless the issue regarding as to whether counter claim is to be taken on record, as to whether objection of the respondent-plaintiff under section 8 of the Court Fees & Stamps Act is to be entertained or not and unless the issue regarding applicability of section 104 to the proceedings before the Court is decided, the decision on further proceedings including Ex.5 would not be in the interests of justice. In the event the learned Judge holds that he has no jurisdiction under section 104 of the Patents Act then naturally he would not have the jurisdiction to entertain any further proceedings including application below Ex.5. In that view of the matter, though vide gst 7 cra185.11.sxw earlier order of this Court, it had directed all the applications to be considered simultaneously and though their Lordships of Apex Court vide order dated 20.1.2011 passed in above referred SLP challenging earlier order have observed thus: “Since we are informed that there are other pending applications, the same may also be disposed of along with the application for interim order.” This Court further observed in paragraphs 16 and 17 thus: “16. Revision Application is therefore allowed. Learned Judge is directed to decide the applications below Ex.57 and 59 and issue regarding jurisdiction in view of section 104 of the Patents Act on or before 11.02.2011. 17. In the event if the learned Judge holds that he has jurisdiction and that provisions of section 104 are not applicable the learned Judge shall decide the application below Ex.5 on or prior to 25.2.2011.” 5. Said order passed by this Court was challenged before the Apex Court. The Apex Court disposed of the said Special Leave Petition on 15.2.2011 with following observations: “Since we are informed that there are other pending applications, the same may also be disposed of along with the application for interim order.” 6. In this background, the impugned order is passed on 18.2.2011. Vide the said order, learned Judge has rejected the application filed by the present applicants below Ex.57, for leave to file counter claim. By the same order, the learned Judge has also rejected the application below Ex.59, filed by the respondents-plaintiffs contending that the counter claim was not correctly gst 8 cra185.11.sxw valued. The learned Judge has observed that, the objection was raised at a premature stage. It has been further held that, if at a later stage it is found that the court-fees paid are deficient, the same can be directed to be paid. The applicants have approached this Court being aggrieved by rejection of their application below Ex.57. It is the contention of the applicants that only operative part of the order was dictated on the said date and it was informed that the detailed order would be furnished within a period of 4/5 days. There are certain allegations made against the respondents. However, I do not find it necessary to go into those allegations. The applicants, therefore, challenged the operative part of the aforesaid order dated 18.2.2011 by filing Writ Petition No.1608/2011. When said writ petition came up for hearing before this Court on 21.2.2011, it was pointed out to the petitioners that since the District Judge had rejected the objection regarding jurisdiction, a revision would be tenable under section 115 of CPC, inasmuch as, had the objection of the petitioners been upheld the proceedings would have come to an end before the learned trial Court. As such, the petitioners withdrew the writ petition, with liberty to file civil revision application. When civil revision application was mentioned before the Bench which was assigned to hear the same i.e. Hon’ble Mr. Justice A. S. Oka, the learned Judge observed that revision application was not maintainable, and as such, dismissed the same. However, the learned Judge kept open the remedy of revision applicant of challenging the impugned order. As a result of the said order, petitioners filed writ Petition No.1712/2011 before gst 9 cra185.11.sxw this Court. However, when the petition was heard on 3.3.2011, the learned counsel for the respondents objected to the tenability of writ petition, on the ground that the petitioners have equally efficacious remedy under section 115 of the CPC. This Court while granting liberty to the applicants to convert the said writ petition into civil revision application observed thus: “14. It could thus be clearly seen that learned Judge has overruled the objections of present petitioners regarding the jurisdiction of the learned Judge to entertain the suit in view of specific provisions under Section 104 of the Patents Act, 1970. In that view of the matter, I find that since the petitioners have a remedy under Section 115 to prefer the Civil Revision Application against the order impugned herein, it would be appropriate that the petitioners are permitted to covert the present writ petition into CRA. 15. In ordinary circumstances, this Court would not have granted such a leave to the petitioners. However, since on account of the technical objections, the petitioners have been made to run from this Bench to that Bench, I find that it is in the interest of justice to permit the petitioners to convert the present petition into Civil Revision Application. 16. At this stage Shri Kamdar, the learned senior counsel graciously states that respondents would not object to the tenability of CRA when the same is listed before Bench hearing Civil Revision Applications.” 7. Subsequently, when a reasoned order was made available, the applicant was granted leave to place the same on record. It appears that subsequently respondents-plaintiffs filed an application under section 151 and 152 of CPC seeking clarifications/corrections in terms of the order dated 18.2.2011. The learned Judge allowed the said application below Ex.133 by an gst 10 cra185.11.sxw order dated 1.3.2011 and clarified the earlier order as under: “a) The defendant had brought the counter claim and placed it before the Registry for registration and numbering. It was there with the Registry for the purpose of getting the objections corrected or clarified to the Registry. b) The claim was never placed on record of this Court in this proceedings. c) This Court never intended to observe that on 8.4.2010 the counter claim was filed on record of this Court i.e. was brought on record of this Court.” 8. It is also the contention of the applicants, that even before passing of the said order, an opportunity was not given to the applicants. However, I do not find it necessary to go into the said allegation. Said order is also challenged, by way of amendment which was allowed by this Court vide order dated 20.4.2011. Thereafter, on various dates, the learned counsel for both the parties have been heard extensively. 9. Mr. Dani, learned counsel appearing on behalf of applicants, submits that the suit summons were received by the defendants on 4.3.2010. Written statement is filed on 20.3.2010. He submits that however since inadvertently counter claim remained to be made in the written statement, counter claim is physically filed on 8.3.2010. He submitted that on 9.6.2010 office raised objection on counter claim. On 1.7.2010, an application was filed for removing office objections. It is submitted that, on the said date, office gst 11 cra185.11.sxw objections were removed. Learned counsel submits that, since counter claim was made by filing additional pleadings, an application for leave to take the same as required under Order 8 Rule 9 was filed on 3.7.2010. He submits that not only this, but the plaintiffs have filed an objection to the counter claim, on the ground that the court-fees is not paid below Ex.59. It was, therefore, submitted that the counter claim is physically on record of the trial Court on 8.4.2010. It is submitted that even after the amendment to the provisions to Order 8 Rule 1, the defendants could have filed written statement within 90 days without any difficulty. It is submitted that if there was some delay, in view of interpretation as placed by the Apex Court on the provisions of Order 8 Rule 1 of CPC, in a judgment in the case of Kailash Vs. Nanhku (2005) 4 SCC 480, the same could have been condoned by the learned trial Court. He submits that the application below Ex.57 was only to comply with the technical requirement of Order 8 Rule 1. 10. Learned counsel further submits that, while considering the application for leave to take counter claim on record, the learned trial Court could not have gone into the merits of the matter. It is further submitted that since the grounds regarding counter claim are already on record in the written statement, no prejudice would have been caused to the defendants, if counter claim was allowed. Learned counsel further submits that the purpose of counter claim is to avoid multiplicity of litigation. Learned counsel relies on gst 12 cra185.11.sxw the judgment of the Apex Court in the case of Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508. Learned counsel submits that the learned trial Court has only referred to some extracts of the judgment of the Apex Court in the said case without considering the ratio laid down by the Apex Court. Learned counsel also relies on the judgments of the Apex Court in the case of Shanti Ranidas Dewanjee Vs. Dineschandra Day, 1997 (8) SCC 174 and Mahendra Kumar & Anr. Vs. State of Madhya Pradesh & Ors., (1987) 3 SCC 265. Learned counsel also relies on a judgment of the Apex Court in the case of Bollepanda P. Poonacha & Anr., Vs. K.M.Madapa, (2008) 13 SCC 179. Insofar as the contention of respondents-plaintiffs, that the applicants must elect a remedy and that they cannot be permitted to simultaneously prosecute different remedies for the same cause, by way of writ petition, by way of post grant opposition and by way of counter claim is concerned, learned counsel submits that the grounds available under section 64 are more than section 25. Relying on the judgment of the learned Single Judge of Nagpur High Court delivered by Justice Hidayatullah (as His Lordship then was) in the case of Surajmal Rambux & Ors. Vs. Laxminarayan Raghunath, AIR (38) 1951 Nagpur 284, the learned counsel submits that grounds for revocation of patent and opposition to grant are different and that simultaneous proceedings are not barred in law. Learned counsel also relies on a judgment of the Delhi High Court in the case of Dr.Aloys Wobben Vs. Yogesh Mehra & Ors., (IA No.12638/2010 in CS (OS)NO.1963/2009 decided on 6.12.2010) in support of gst 13 cra185.11.sxw the said proposition. 11. Mr. Dhond and Mr. Kanade who have advanced arguments in part on behalf of the respondents, submit that the petitioners have also filed Writ Petition (St.) No.1136/2010 before this Court. They have also filed an application for post grant opposition before the Competent Authority and also a counter claim seeking revocation. It is submitted that the applicants are required to elect a remedy and since the applicants have already filed other two proceedings, no error could be noticed with the impugned order. Learned counsel in this respect relies on a judgment of the Apex Court, in the case of A.P.State Financial Corporation Vs.M/s.Gar Re-Rolling Mills & Anr., (1994) 2 SCC 647. Learned counsel submits that the application below Ex.57, would be referable only to the jurisdiction under Order 8 Rule 9. He submits that since there was inordinate delay in making the application, the learned Judge has rightly exercised the jurisdiction while rejecting the application which warrants no interference. Learned counsel in this respect relies on the judgments of the learned Single Judge of this Court, in the case of Shailaja A. Sawant (Dr.) & Ors., Vs. Sayajirao Ganpat Patil & Ors., 2004 (5) Bom.C.R 548, of the Division Bench of this Court in the case of Chintaman Sukhdeo Kaklij & Ors., Vs. Shivaji Bhausaheb Gadhe & Ors., 2004 (5) Bom.C.R. 573 and of the Apex Court in the case of Ramesh Chand Ardawatiya (supra). Learned counsel further submits that, the applicants have resorted to forum gst 14 cra185.11.sxw hunting and on this count also they are not entitled to any relief. Reliance in this respect is placed on the judgments of the Apex Court in the case of Dalip Singh Vs. State of Uttar Pradesh & Ors., (2010) 2 SCC 114, M/s.Chetak Construction Ltd. Vs. Om Prakash & Ors., JT 1998(3) SC 269 and Tamilnad Mercantile Bank Shareholders Welfare Association (2) Vs. S.C.Sekar & Ors., (2009) 2 SCC 784. 12. It is a further specific contention of the respondents, that as a matter of fact on 8.4.2010, no counter claim, as alleged, has been filed by the present applicants. Learned counsel further submits that, though the written statement contains every ground regarding counter claim, still applicant chose not to make counter claim in the written statement. It is submitted that, in such circumstances, an application below Ex.57, after the order was passed in writ petition filed by present petitioners, has been rightly rejected by the learned trial Court. Learned counsel further submits that, even applying the principle of prejudice, no interference would be warranted with the impugned order. It is submitted that, if the counter claim is permitted to be placed on record, in view of provisions of section 104 of the Patents Act, 1970, suit will have to be transferred to the Original Side of this Court. It is submitted that, if the suit is tried by the learned District Judge,