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TMI Blog2020 (11) TMI 1074X X X X Extracts X X X X X X X X Extracts X X X X ..... is received for being numbered as a suit. Since the dispute in the present case pertains to the alleged violation of the patents of the appellant/plaintiff, the jurisdiction of Court under Clause 12 of the Letters Patent has to be read in conjunction with Section 104 of the Patents Act, 1970 and not in conjunction with Section 104A of the Patent Act, 1970. Section 104 of the Patent Act - Section 104A of the Patent Act, 1970 is not concerned with Jurisdiction of the Court. It is concerned with burden of proof in case of a process patent as is evident from a reading of Section 104A of the Patent Act, 1970. For granting leave, the Court should consider the grant of leave from the angle of Forum non conveniens/Forum conveniens. They are the relevant factor for the Court while either granting or revoking leave under Clause 12 of the Letters Patent. What exactly is the purport of Forum non conveniens/Forum conveniens and how it has been decided and considered have not been clearly spelled out by the domestic Courts in India - The object of the doctrine of Forum Non Conveniens is to find that forum which is the more suitable for trying the suit to meet the ends of justice, and is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... spondents/1st to 3rd defendants filed four different applications separately (in all 12 applications) (i) to suspend the interim order dated 05.07.2019, (ii) to revoke the leave granted on 03.07.2019 under Clause 12 of the Letters Patent and (iii) to reject the appellant/plaintiff Under Orders 7 Rule 12 of Civil Procedure Code. 7. The applications filed for revoking leave granted under Clause 12 of the Letters Patent vide Application Nos. 4916, 4920 and 4923 of 2019 in C.S.No.410 of 2019 came to be disposed by the learned Single Judge vide the impugned common order dated 21.01.2020. 8. Prior to passing of the impugned common order, the ex-parte injunction granted on 05.07.2019 was suspended by an order dated 16.07.2019 based on an undertaking of the 1st to 3rd respondents/1st to 3rd defendants agreeing to furnish bank guarantee on or before 26.07.2019, failing which, suspension of the interim order was to stand automatically vacated. 9. This undertaking was in apparently terms of an order passed by the Delhi High Court in a similar proceedings initiated before it by the appellant/plaintiff herein against another person who had allegedly infringed the aforesaid patent of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hin the jurisdiction of the Court. It was alleged that such sales were in violation of the aforesaid patent of the appellant/plaintiff. 13. In the plaint, it was averred that the confirmation of the violation of the aforesaid patent of the appellant/plaintiff by these respondents were in terms of a test report dated 14.6.2019 of Jubilant Pharma and Chemical Lab (OPC) Private Limited, Mumbai and based on an affidavit dated 15.06.2019 of Dr P.K Patanjali, New Delhi, an expert who had served as the Ex-Head Formulation Scientist, Indian Institute of Pesticides Formulation Technology. 14. For a better understanding of the dispute, the relevant passage relating to the cause of action from the plaint of C.S.No 410 of 2019 filed by the appellant is reproduced below:- The cause of action for institution of the present case arose when the plaintiff through its field force came across the infringing product of the Defendant No.1 and issued notice to the Defendant No.1 on 26.04.2018 and further on 15.05.2018 when reply to the said notice was received from the Defendant No.1 herein; on 26.04.2018, when the plaintiff issued a legal notice to the Defendant No.3 on 18.05.2018, when the D ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (Emphasis added) 15. The ground for revoking the leave and also for rejecting the plaint in respective affidavit filed in support of A.Nos.4916, 4920 4923 of 2019 are found in Para Nos. 91, 93, 96 of the respective affidavit of the 1st to 3rd respondents/1st to 3rd defendants read as under:- I reiterate that the plaintiff and defendant nos.1 to 3 are admittedly situated outside the territorial jurisdiction of this Hon ble High Court. Further, as stated above, the plaintiff has failed to secure adinterim injunction in respect of the subject patent before the Delhi High Court and have approached this Hon ble Court only by way of forum shopping to wrongly obtain ex-parte ad-interim order. Since no cause of action has arisen before this Hon ble Court as mentioned above, much less the present suit has been instated before this Hon ble Court by way of forum shopping, the leave granted by this Hon ble High Court to sue the defendants ought to be revoked necessarily. 16. The case of these contesting respondents namely 1st to 3rd defendants before the learned Single Judge in Application Nos.4916, 4920 and 4923 of 2019 in C.S.No.410 of 2019 was that the appellant/plaintiff had ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tiff had filed a plaint counter affidavit before the learned Single Judge and stated that he was not registered person under the provisions of the aforesaid Control Order on behalf of the appellant/plaintiff. 22. It is further submitted that the 4th respondent/4th defendant in the counter affidavit named yet another dealer named M/s.Guhan Company from whom the offending products were allegedly purchased and sold by the 4th respondent/4th defendant to the buyers who placed the trap orders on behalf of the appellant/plaintiff. 23. It is further submitted that the three purchasers who purchased the offending products were outside the jurisdiction of this court and therefore no part of cause of action can be said to have arisen. It was further submitted that in absence of any direct evidence to substantiate that the 1st to 3rd respondents/1st to 3rd defendants were selling the offending product to the 4th respondent/4th defendant, the leave granted to the appellant/plaintiff was liable to be revoked and has been rightly revoked by the learned Single Judge in the impugned common order. 24. It was further argued that the 1st respondent/1st defendant was located in Meerut, UP w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... x. Associate Builders Vs. Delhi Development Authority, reported in (2015) 3 SCC 49. xi. SsangyongEngg. Construction Co. Ltd. Vs. NHAI, reported in 2019 SCC OnLine SC 677. xii. Kusheswar Prasad Singh Vs. State of Bihar, reported in (2007) 11 SCC 447. xiii. ONGC Vs. Saw Pipes Ltd., reported in (2003) 5 SCC 705. xiv. Pure Helium India (P) Ltd. Vs. Oil Natural Gas Commission, reported in (2003) 8 SCC 593. xv. D.D. Sharma Vs. Union of India, reported in (2004) 5 SCC 325. xvi. Delta International Limited Vs.Shyam Sundar Ganneriwallaand Another, reported in (1999) 4 SCC 545. xvii.Larsen Toubro Limited Vs. Mohanlal HarbanslalBhayama, reported in (2015) 2 SCC 461. xviii. P.R.Shaw Shares and Stock Brokers Pvt. Ltd. Vs. DHH Securities Pvt. Ltd., reported in (2012) 1 SCC 594. xix. Steel Authority Ltd. Vs. Gupta Brother Steel Tubes Ltd., (2009) 10 SCC 63. 29.On behalf of the contesting respondents (i.e., 1st to 3rd respondents/1st to 3rd defendants), reliance was placed on the following decisions:- i. Madanlal Jalan Vs.Madanlal, reported in AIR 1949 Cal 495. ii. ParameswariVeluchamy and two others Vs.T.R.Jayaraman and seven others, reported in 2002 (1) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... if a part of cause of action arises within the Courts jurisdiction. Original side of the High Court is not governed by these provisions. 34. Relevant part of these provisions are re-produced as under:- Section 20(c) of the Code of Civil Procedure Other suits to be instituted where defendants reside or cause of action arises.- Subject to the limitations aforesaid, every suit shall be instituted in a court within the local limits of whose jurisdiction- (a)-(b)*** (c) the cause of action, wholly or in part, arises. A Article 226 (2) of the Constitution of India. (1):-**** (2) The power conferred by clause (1) to issue directions, orders or writs to any Government, authority or person may also be exercised by any High Court exercising jurisdiction in relation to the territories within which the cause of action, wholly or in part, arises for the exercise of such power, notwithstanding that the seat of such Government or authority or the residence of such person is not within those territories. Clause 12 of the Letters Patent. Original Juri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... S.S. Jain Co. v. Union of India [(1994) 1 CHN 445] and New Horizons Ltd. v. Union of India [AIR 1994 Delhi 126] 37. The Hon ble Supreme Court merely held that a High Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens. Thus, there is no question of granting leave to file Writ petition under Article 226 (2) of the Constitution of India in case where a part of cause of action may have arisen. In appropriate case, the High Court may however refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens. 38. In our view, the ratio in the said case cannot be applied to grant of leave under Clause 12 of the Letters Patent as Article 226(2) of the Constitution of India and Clause (c) to Section 20 of the Code of Civil Procedure read differently from the language adopted in Clause 12 of the Letters Patent. 39. Since the dispute in the present case pertains to the alleged violation of the patents of the appellant/plaintiff, the jurisdiction of Court under Clause 12 of the Letters Patent has to be read in conjunction with Section 104 of the Patents Act, 1970 and not in conjunction with Section 10 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in case of a process patent as is evident from a reading of Section 104A of the Patent Act, 1970 which is reproduced below:- 104A. Burden of proof in case of suits concerning infringement- (1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if,- (a) the subject matter of the patent is a process for obtaining a new product; or (b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used: Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process. (2) In considering whether a party has discharged the burden imposed upon him by subsection (1), the court shall not require him to disclose any manufacturing ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ial authorities the following propositions may, I think, be enunciated: (a) that an application lies for revoking leave granted under cl. 12 of the Letters Patent; (b) that such an application should be made at an early stage of the suit and delay and acquiescence may be a bar to such an application; (c) that if the application depends on difficult questions of law or fact the Court should not revoke leave on a summary application but should decide the question at the trial; (d) that if the Defendant shows clearly that no part of the cause of action arose within juris diction, the leave should be revoked as a matter of course; (e) that if only a part of the cause of action arose within jurisdiction, then it is a question of discretion for the Court to give or refuse leave or where leave has already been granted to revoke or maintain the leave; (f) that assignment is a very important part of the cause of action in a suit by the assignee; (g) that in giving or refusing leave or maintaining or revoking leave the Court will ordinarily take into consideration the balance of convenience and may, if the balance is definitely in favour of the Defendant, apply the doctr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... averments made in the plaint alone should be taken into consideration in order to decide the jurisdiction at the earlier stage. In the instant case, the averments of the plaint would show that the plaintiffs are carrying on business within the jurisdiction of this Court and marketing their products are sufficient to maintain the suit before this Court. Further, I am of the opinion that there is no specific bar under section 28(3) of the Trademarks Act to file a suit. Under such circumstances, I am not accepting the submissions made by the learned counsel for the applicant based on section 28(3) of the Trademarks Act. Since the suit prayer for infringement of trade mark is maintainable based on the averments in the plaint, I do not find any infirmity in the order passed by this Court in combining the cause of action in respect of infringement of trade mark, passing off and infringement of copyright in a single suit. Therefore, in my considered opinion, no case has been made out by the applicant for returning the plaint and revoking the order passed in A. No. 5042 of 2011. 50. Again in Lalli Enterprises Vs. Dharam Chand and Sons, 2003 (26) PTC 239 (DB), the Delhi High Court has ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... unsel for the respondents/defendants, again does not further their case. It was rendered in the context of Section 20 of CPC and the Copyright Act, 1957 and The Trade and Merchandise Mark Act, 1958, In Para 31, the Court held as follows: A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour, a registration certificate has already been granted indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application . 55. The Hon ble Supreme Court there disposed two separate appeals from separate decisions of the Allahabad High Court and Del ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well well-settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of subsection (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain. ...... 51. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant. It is possible that the goods manufactured by the plaintiff are available in the market of Delh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se. 56. In Patel Field Marsahal (supra), however, we may notice that a subsequent development has taken place, namely, after the remand, a learned Single Judge of the Delhi High Court is said to have granted an order of injunction in favour of the plaintiff-respondent and the matter is pending before the Division Bench. As we have not expressed our views on the merit of the matter, it is needless to mention that the Division Bench shall proceed to determine the questions raised before it on their own merits. 57. For the reasons aforementioned, Civil Appeal No. 6248 of 1997 filed by M/s Dhodha House is dismissed and Civil Appeal No. 16 of 1999 preferred by M/s Patel Field Marshal is allowed. The parties shall pay and bear their own costs. 59. We are therefore unable to accept the reasoning of the learned Single Judge in the impugned common order while revoking the leave granted to the appellant/plaintiff on the ground that only an insignificant part of the cause of action had arisen within the jurisdiction of the Court. 60. At the same time, it must be remembered a few decision of this Court and other High Courts governed by the Letters Patent and that of the Hon ble Sup ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hin the jurisdiction of the Court. It is in the third eventuality which is material for the controversy. On the plea of the appellant that the situs of the Trademark Registry within the jurisdiction of the Court would give a part of cause of action on the issue of registration of the trademark alone being sufficient, we have already given a finding under the first question of law aforesaid. Thus, a bundle of facts would determine whether the cause of action has arisen qua the trademark infringement within the jurisdiction of the Court. 57. There is little doubt that the principles of forum conveniens, though not applicable to civil proceedings, have a role to play insofar as the consideration of grant of leave or revocation thereof under Clause 12 of the Letters Patent is concerned. This is irrespective of the fact as to what expression is used. As observed aforesaid, the balance of convenience is also forum conveniens. The test applied is of appropriateness or suitability of the forum which ought to apply, whether it be called forum conveniens or that the jurisdiction of the Court under Section 20 of the Code of Civil Procedure is different from Clause 12 of the Letters Paten ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... revocation? I see no logic in differentiating between the two stages. The question, in my opinion, is the same at both stages, namely, should the Court allow the Plaintiff to proceed with his claim in this Court? The principles on which the answer to that question should be formulated must, therefore, be the same at both stages. I have endeavoured to show that according to our practice of giving leave ex parte, the main, if not the sole, consideration at that time can only be one of convenience which may be apparent from the plaint. As an application for revocation of leave is in the nature of a review or reconsideration, logically the Court is called upon to decide the same question on the same considerations of convenience, although in the light of fuller materials. When I say that the question of convenience should be considered, I mean convenience of both parties. I agree with Mr. Khaitan that on an application for revocation a greater onus should not be put upon the Defendant by reason of an ex parte accomplished fact. In my opinion the Court should not on an application for revocation start with a presumption in favour of maintaining the leave but should apply an unfettered ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tly more appropriate to hear and determine the dispute in respect of which the action was brought within its jurisdiction. 68. In The Blue Fruit, [1979] 2 M.L.J. 279, 280, the Singapore Court of Appeal led by Wee Chong Jin C.J. observed that The authorities are clear that even though an action is well founded within the jurisdiction of the court there is always an inherent jurisdiction vested in the court whether to entertain such an action or not. 69. The existence of the other forum which is more appropriate for securing the ends of justice is a condition precedent to the application of the plea of forum non conveniens. 70. In The Abidin Daver [1984] A.C.398 at 424 and 425, the late Lord Diplock while in expressing his reservation The possibility cannot be excluded that there are still some countries in whose courts there is a risk that justice will not be obtained by a foreign litigant in particular kinds of suits whether for ideological or political reasons, or because of inexperience or inefficiency of the judiciary or excessive delay in the conduct of the business of the courts, or the unavailability of appropriate remedies. But where there is already a lis alib ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lised countries) and as the plaintiff is consequently not denied substantial justice in the more appropriate forum, the court would stay the action commenced within the jurisdiction. 76. In Re Harrods (Buenos Aires) Ltd (No.2), [1991] 4 All E.R.348, the English Court of Appeal pointed out that after The Spiliada , applications for stay of proceedings commenced within the jurisdiction were to be approached on the basis of a two-stage inquiry:- i. whether there exists another forum, having competent jurisdiction, in which the case may be tried more suitably for the interests of all parties and for the ends of justice; ii. whether there exists circumstances by reason of which justice requires that a stay of proceedings should nevertheless not be granted. The onus is on the plaintiff in the action commenced within the jurisdiction to establish by congent evidence that he will not obtain justice in the more appropriate foreign forum. The residual discretion not to stay the proceedings despite the finding of a more appropriate forum/court. It is a discretion which depends on the plaintiff making good his contention that the grant of a stay would deprive him of legitimate perso ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are circumstances by reason of which justice requires that a stay should not be granted, and in this inquiry the court will consider all the circumstances of the case. 79. If the defendant is not amenable to the other jurisdiction, the other jurisdiction cannot be said to be the more appropriate forum. The question therefore to be considered is whether there is another jurisdiction to which the defendant is amenable and is the forum conveniens? In answering this question, regard must be had to the fact of the particular case and identifying the facts and issues in the case which link the case to the foreign jurisdiction. It has been held that where the facts and issues in any particular case have more real and substantial connections with a foreign jurisdiction, the prima facie inference is that the foreign jurisdiction is the more natural and appropriate forum to hear the claim. 80. However, in suit filed for a bare injunction based on the specific averment in the plaint that the respondents/defendants were offloading their offending products in violation of the appellant s/plaintiff s patent within the jurisdiction of this court, the leave already granted by the Court c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ollowing conclusions in the impugned order to revoke the leave already granted are not sustainable and are therefore liable to be set aside:- (i) The infinitesimally small part of cause of action namely the impugned product being sold in Chennai by the 4 th defendant, even assumed to be true, is not the pivotal issue which will determine the dispute.; (ii) Further, the plaintiff has not placed any prima facie material to show that the 4th defendant is the authorised dealer/Agent or stockist of the manufacturer of the impugned product, to link the defendants 1 to 3 and the 4th defendant; and (iii) The part of cause of action stated in the plaint to bring the suit within the territorial jurisdiction is insignificant. The proof required to decide the lis does not depend on those facts relating to 4 th defendant, who is carrying on business at Chennai which only constitute an infinitesimally small part of cause of action. 85. Under these circumstances, we are inclined to allow this appeal filed by the appellant/plaintiff. It is for the respective respondents/defendants to approach either the Honourable Supreme Court for transfer of the above suit to another court if advised ..... X X X X Extracts X X X X X X X X Extracts X X X X
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