@JUDGMENTTAG-ORDER
S. Ashok Kumar, J.@mdashThis Civil Revision Petitions are filed by the defendants against the fair and decretal order dated 26.3.2007 made in I.A. No. 141 of 2007 in O.S. No. 70 of 2007 by the learned Principal District Judge, Thiruvallur, granting ex parte ad-interim injunction, pending disposal of the suit, restraining the defendants from in any manner infringing the plaintiffs/respondents Patent No: 197822.
2. In all, seven CRPs have been filed, of which five relate to the infringement of Patent and two relate to the infringement of Trade Mark. In CRP Nos. 1188, 1189, 1226, 1454 and 1546 of 2007, Mr. Sanjeev Khandelwal is arrayed as the firs respondent and in CRP.Nos:1190 and 1227 of 2007, Khandelwal Laboratories Pvt., Ltd., is arrayed as the firs respondent. The Registration of Patents stands in the name of Mr. Sanjeev Khandelwal and the Registration of Trade Mark stands in the name of Khandelwal laboratories Pvt., Ltd., and as such there is no conflict in interests between the first respondents.
3. The 1st respondents herein filed the suits in O.S. Nos: 70, 71, 72, 73, 74, 75 76 of 2007 on the file of the learned Principal District Judge, Thiruvallur against the revision petitioners and others seeking for the relief of Permanent Injunction, particularly restraining them from infringing the respondents Registered Patent No. 197822 and Trade Mark CEFI-XL. Pending disposal of the main suits, the respondents filed interlocutory applications in I.A. Nos. 141, 144, 147, 150, 153, 156, 158 of 2007 for ad interim injunction against the revision petitioners. The learned District Judge, Thiruvallur, granted ex parte ad interim injunction for a period of one month. Aggrieved of the said order of the trial court, the revision petitioners/defendants have preferred these revisions under Article 227 of the Constitution of India.
4. It is submitted by the learned Senior Counsels appearing for the revision petitioners that the trial court has granted ex parte injunction without consideration of the fact that both the plaintiffs and the primary defendant in each matter are residents of Bombay and Delhi. The second defendant, i.e., a small medical shop situated within the territorial jurisdiction of the trial court has been impeleaded in each matter and on the strength of the said impleadment, ex parte ad interim injunctions have been granted against the revision petitioners and three other parties when the latter''s place of business is clearly not within the jurisdiction of the aforesaid District Court. Thus the trial court has exercised an arbitray and capricious exercise of authority. Secondly, the impugned orders granted in the Interlocutory Applications are perverse because individual facts have not been gone into and there is no consideration of the plaint averments or the statutory provisions of the Patents Act or the Trade Marks Act and there is a complete absence of any evidence of infringement on record or a technical analysis to show infringement either of the product or the process. By the grant of ex parte ad interim injunction, the revision petitioners have to close the manufacturing and trading operation of the particular medicinal products throughout the country which resulted in manifest injustice and loss to the revision petitioners. For these reasons, it is contended by the learned senior counsels that a revision is well maintainable before the High Court under Article 227 of the Constitution of India.
5. It is also contended cause of action must be substantial cause of action or an integral part of the main cause of action, insignificant and trivial events will not be sufficient to vest jurisdiction in a court and therefore a stray sale will not be sufficient, in the absence of commercial quantity and not by a mere retailer, but by an agent of the defendant where agent has been defined to mean wholesaler, distributor and or any other party who exclusively does business for the defendant, thereby squarely excluding a retailer from its scope, to attract the jurisdiction. Further, mere establishment of a cause of action is not sufficient for the grant of interim injunction which is an equitable relief in situations where the rule of forum nonconveniens is squarely against the plaintiffs and in favour of the defendants.
6. It is further contended on behalf of the revision petitioners that in a suit for infringement of Patent the primary onus on the part of the plaintiff is to establish (a) that the end products manufactured by the plaintiff and the defendant are one and the same; (b) that there is only one known process to manufacture the said product; (c.) that the said process alone could have been used by the defendant and the plaintiff to make their product; (d) that the plaintiff was the first n the market to use the said process and (e) and therefore the defendant must have infringed or copies the plaintiff''s process. Only when the above is established the burden of proof shift to the defendant to disprove the allegation of infringement and to establish hat the process used by them is different.
7. Further, the trial court failed to note that trade mark of the plaintiffs is derived from its active ingredient CEFIXIME. The brand name of the plaintiffs is CEFI XL, whereas the brand name of the defendant in CRP No:1190 of 2007 is MAHACEF. There are several manufacturers of products with the brand name including the word CEF, like CEFO, CEFIX, CEFEX, CEFIXE, CEFOX, CIFEX, CEFE, CEFU, etc, and the that have been operation even prior to the plaintiff''s adoption of the trademark CEFI. Therefore, the brand name of the plaintiffs is not an invented word and he cannot claim any proprietary rights over the word CEF.
8. It is also contended by the learned senior counsels that even the essential ingredients of existence of a prima facie case, balance of convenience of the parties and the possible irreparable hardship of the parties have not been taken into consideration by the trial court while granting exparte ad interim injunction. No evidence has been adduced nor pleading made in support of the plaintiffs user claim for the trade mark of CEFI XL nor any technical analysis forwarded in support of the bald pleading in that the products and processes of the plaintiffs and the defendants are similar. The exparte injunction has resulted in the closure of the operation of the defendants and resulted in huge financial loss and the defendants products exists in the market prior to the product of the plaintiffs, the balance of convenience is also in favour of the defendants. So also, there is an irreparable injury caused to the defendants on account of the ex parte interim injunction since their hard earned good will and reputation over the last many years was spoiled in the market as an impression has been affixed on them that they are infringers of another company''s products.
9. It is also contended that the plaintiffs have suppressed the judgment of the Delhi High Court in a trade mark protection case filed by them as against the revision petitioner in CRP. No. 1188 of 2007 wherein the Delhi High Court refused to grant trade mark protection the plaintiff for the very same mark of CEFI on the ground that it is not the first user of the trade mark, and there being many other products in the market with similar names which are derived from Cefixime.
10. It is also strenuously argued by the learned senior counsels that the patent obtained by the plaintiffs had also lapsed. According to them the plaintiffs have produced a certified copy of the extract from the Register of Patents obtained prior to the institution of the suit for infringement before the trial court was produced. Thus the trial court has failed to consider whether the Patent obtained had been in force at the time of institution of the suit since the patent of the plaintiffs ceased to exist due to non payment of the fourth year renewal fee which fell due on February 13, 2007. It is also contended that the plaintiffs patent application in Europe under EP. Application No:1566176 AI and also US Patent application No. 11/013,110 for the same subject matter has been rejected. A copy of the final US office Action rejecting the plaintiff''s Paten Application on 28.11.2006 has been produced and it is contended that the plaintiff''s patent is clearly anticipated u/s 13 of the Patents Act and ought to be revoked for the said reason. Further, the plaintiffs have committed breach of statutory duty envisaged u/s 8 of the Patents Act, in that they have failed to inform the details about his reign filing in respect of the very same invention and the results. Without prejudice to their rights and contentions in the present CRPS, the revision petitioners are entitled u/s 25 of the Patents Act to have the plaintiff''s patent revoked post its grant and also have taken necessary steps in that regard by filing necessary petitions before the Indian Patent Office. Learned Senior counsel appearing for the revision petitioners also produced nearly 15 prior art references which pertains to the same subject matter, for which the plaintiffs are seeking monopoly, to establish that the plaintiffs patent was neither an invention nor worthy of statutory protection and was in fact a process in common usage. In any event it is an established proposition of patent law jurisprudence that if the validity of a patent is challenged, the courts should refrain from granting interim injunction. Learned senior counsels appearing for all the revision petitioners have relied on umpteen number of decisions of the Hon''ble Supreme Court as well as of this Court in support of their contentions referred to above.
11. On the contrary, it is submitted by the learned Counsel appearing for the respondents/plaintiffs in all the CRPs countered all the raised on behalf of the revision petitioners. As regards the contention that the patent of the plaintiff ceased to exist, it is contended by the learned Counsel that the patent has not lapsed and it is valid and subsisting at all times, even during the prosecution of proceedings and thereafter. The learned Counsel relied on the Extract of the Register of Patents to establish that the patent has been renewed on 13.2.2007. Further to corroborate the same, the plaintiffs'' counsel also produced the receipt issued by the Patent Office to show that the renewal fee has been paid within time.
12. As regards the alleged breach committed by the plaintiffs, it is contended that Section 8 of the Patents Act request that upto the date of grant of Patent in India, the applicant (Plaintiff) should inform the Patent Office, the details about his foreign filing in respect of the very same invention. The plaintiff sought to produce Form-3 which discloses the details of the patent applications filed or pending in United States and other countries. According to the learned Counsel as far as the present case is concerned, the Indian Patent was granted on 19.12.2005, whereas the firs office action of the corresponding US Patent Application was on 8.3.2007 i.e., subsequent to the grant of patent in India and therefore, the question of breach of statutory duty envisaged u/s 8 of the Patents Act does not arise.
13. It is also disputed by the learned Counsel for the respondents/plaintiffs that the revision petitioners have got similar inventions registered in their names and the Patent has been anticipated by prior art throughout the world. According to him the the references made by the petitioners in their typed set to show prior art has nothing to do with the plaintiffs invention. The claims made in the plaintiffs patent and that of the prior art are totally different.
14. As regards burden of proof of the alleged infringement, it is submitted by the learned Counsel for the respondents/plaintiffs that in a suit for infringement of a process, if the defendant contends that his process is different from that of the plaintiff, the burden is on the defendant to prove that fact. Because, the process employed by the defendant being within the special knowledge of the defendant, u/s 101 of the Indian Evidence Act, the burden of proving the process employed by the defendant rested on the defendant.
15. As regards jurisdictional issue, viz., the trial court does not have the jurisdiction to try the suits as neither the plaintiffs nor the defendants carry on their businesses within the jurisdiction of the trial court based on the provision u/s 20(a) and (b) of the Code of Civil Procedure, it is contended by the learned Counsel for the respondents/plaintiffs that as per Section 20(c) of the Code every suit shall be instituted in a court within the local limits of whose jurisdiction, the cause of action, wholly or in part, arises. Therefore in the present case, the cause of action has arisen because infringement as per Section 48 of the Patent Act has been committed within the jurisdiction of the trial court. It is alleged by the learned Counsel that the petitioners nowhere in their grounds or affidavits have denied the selling of their products within the jurisdiction of the trial court and infact admitted that their turnover throughout the country are comparatively higher than that of the plaintiffs.
16. As regards the contention of forum of convenience, it is contended that it has no application in a suit filed on the Original side or under Civil Procedure Code. The decisions relied upon by the revision petitioners are made in the context of Article 226 of the Constitution of India. Further the plaintiffs on earlier occasions filed their Patent and Trade Mark infringement Suits against other Pharmaceutical companies in other parts of the countries as well for similar relief and obtained decrees as well. So it is not only in Thiruvallur, the respondents have filed the cases for infringement in respect of their patent and trade mark.
17. As regards the contention that the patent of the plaintiffs is not an invention and only and ad mixture of substances, it is contended by the learned Counsel for the plaintiffs that it is not merely an admixture, but it is a synergistic antibacterial formulation which results in the enhancement of the efficacy of the individual ingredients having a synergistic effect, whereas the admixture results only in aggregation of the properties of the components. To support his contention the learned Counsel produced a graph showing the clinical trial conducted with the invented drug as compared with individual use of Cefixime and Cloxacilin. According to him, a single dose of the Cefixme and Cloxacilin combination in accordance with the invention provides significantly better bio availblity than with two dosages of Cefixime and Cloxacilin when given independently. In any case, the above issues are to be decided by the trial court and not under Article 227 in this revision.
18. It is also contended by the learned Counsel that the plaintiffs'' invention is of the year 2004 and prior to that, no product was available anywhere in the word, either for the treatment of a patient or for experiment that contained the four ingredients, namely Cefixme, Cloxacillin in immediate release, Cloxacillin in sustained release and Lactobacillus Sporogenes in a single dose. There is no document which discloses a product having these four ingredients in a combined form, nor is there any disclosure of a process for combining these four ingredients in a single does. This aspect of non existence of combined dose has been acknowledged b the Drug Controller of India.
19. It is also contended by the learned Counsel that the main object of enacting the Patents Act by the Central Government is provided u/s 83 which exemplifies that the patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay; and that the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
20. With regard to the contention that the plaintiffs have suppressed the earlier litigation with FCD Limited, before the Delhi High Court, as regards the same trade mark, and approached the trial court with unclean hands, it is disputed by the learned Counsel that the subject matter relates to a different product and different infringing mark which is different from the mark now in dispute.
21. As regards infringement of his trade mark CEFI-XL it is contended by the learned Counsel for the plaintiffs that after the new invention they have coined the trade mark CEFI-XL by taking the first four letters CEFI from the ingredients Cefixime, taking the letter X from Cloxacillin and the letter L from Lactobacillus. Further, before adopting the trade mark CEFI XL, the respondents made all efforts to ascertain that no other competitor was having a mark which was identical with and/or deceptively similar to the said trade mark CEFI-XL of the plaintiffs. Therefore, the mark MAHACEF-XL is concerned it is deceptively similar to that of the plaintiffs mark CEFI-XL and the word MAHA in the minds of the public would be read as big and there cannot be any slightest doubt that the consuming public would be unable to differentiate between CEFI-XL and MAHACEF-XL, because it is natural for the public to think that MAHACEF-XL is a bigger form or higher range or more powerful medicine than that of CEFI-XL. As regards the infringing mark of CEFOLAC-XL, the plaintiffs registered mark of CEFI-XL is wholly contained in the defendant''s mark CEFOLAC-XL and the essential features of both the marks are similar which is capable of causing confusion among the general public. The plaintiffs and the defendants goods are applied for the same pharmaceutical ingredients, having identical trading channels and sold to the same class of purchasers, therefore, the defendants have committed an infringement of the plaintiffs trade mark. In this respect, the learned Counsel also relied upon the judgment of the Apex Court, in
In the filed of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. Prevention of confusion and mistakes in medicines is too vital to be trifled with.
Physicians and pharmacists are knowledgeable in their fields does not mean that they are equally knowledgeable as to marks and immune from mistaking one mark from another.
What is likely to confuse will vary from case to case. But, where medical products are involved, the test to be applied for adjudging the violation of Trade Mark law may not be on par with cases involving non medical products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product from another by the consumer. While confusion in the case of non medical products may cause only economic loss to the plaintiff, confusion between the two medical products ma have disastrous effects on health and in some case life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identify of the product itself could have dire effects on the public health.
22. As regards jurisdiction of the trial court in entertaining the suits, as rightly contended by the learned Counsel for the respondents/plaintiffs, as per Section 20(c) of the CPC, as part of cause of action arises viz., the infringement of alleged patent right and trade mark, the plaintiffs are entitled to sue the defendants before the trial court. If it is established that even a part of the cause of action has arisen within the jurisdiction of the court, there cannot be any question of refusal of exercise of jurisdiction. Jurisdiction is a mixed question of fact and law and further for determining whether the court has got jurisdiction only the plaint averments should be taken note of. In fact, they have produced the invoices for the purchase of the alleged infringed products from Ambattur, within the jurisdiction of the District Court, Thiruvallur. It is also not admitted by the defendants that they have huge turnover by selling their products throughout the length and breadth of the country and specifically not denied sale of their medical products at Ambattur. Since there is passing off of the offending product within the territorial jurisdiction of the trial court, the suits filed by the plaintiffs are well maintainable since the fact of sale of the infringing goods at Ambattur has the nexus and relevant with the lis that is involved in the case, on the basis of which grievance is raised by the plaintiffs. Thus it is the sale which has given the plaintiffs the right to sue.
23. With regard to the merits of the case viz., whether a prima facie case of infringement of the patent and trade mark has been made out or not, the same has to be decided by the trial court after appreciating sufficient oral and documentary evidence as the defendant disputes the very existence of the patent right at the time of filing of the suit and also claims that it is only an admixture and not an invention, besides contenting that the defendants are not infringing the plaintiffs patent since they are using a different method in the process and manufacturing of the offending medical product and therefore all the products are liable to coexist. As rightly contended by the learned Senior Counsels appearing for the revision petitioners, there is neither any evidence nor satisfactory analysis in respect of the contention that the process used by the revision petitioners manufacturing the drug is the same as the process used by the plaintiff to manufacture their product. The revision petitioners/defendants also allege that a fresh certified copy of the extract from the patent register which was dated 17th May 2007 had been obtained after the filing of the revision petitions in which the hitherto blank column against the fact of payment of the fourth year renewal fee as in the earlier certified patent copy was surprisingly filled.
24. As regards the burden of proof, a finding as to whether infringement has occurred or not in a case is a question of fact and the onus is on the party alleging infringement to adduce evidence of infringement. A mere allegation that infringement has occurred, without any cogent evidence or pleading in support thereof is not sufficient in law for a party to secure an injunction against another. It is not enough for a patent holder to merely allege that there has been infringement of his patent without any evidence of the said claim especially when the subject mater of the alleged infringement is a process which by its nature is invisible and hence cannot be compared side by side during juridical scrutiny to arrive at a conclusion as to the infringement. Even as per Section 104A of the Patents Act, 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, only if (a) the subject matter of the patent is a process for obtaining a new product; or (b) there is a substantial likelihood that he 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 firs proves that the product s identical to the product directly obtained by the patented process. In considering whether a party has discharged the burden imposed upon him as above, the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so. In the present case it is alleged by some of the defendants that they are the prior users of the medical products which is alleged to be the infringing products of the plaintiffs patent, whereas it is the case of the plaintiffs that prior to 2004 i.e, invention of the medical product which is a combination of four medicines no one has manufactured and sold such a medicine. This aspect of the matter certainly requires judicial scrutiny by letting in oral and documentary evidence.
25. As regards the rejection of the patent by the US Office Action, it is contended by the learned Senior Counsels that though it is not denied that a few opportunities are given to an applicant by an examiner of a patent to rectify unacceptable claims by deleting them or amending them, the same is not indefinite and when an alleged invention is prima facie found not to be novel no amount of such communication can have the result of vesting it with novelty. According to the revision petitioners the US Office Action has rejected the patent claimed by the plaintiffs by passing a final order on 28.11.2006 as the claim was found to be wanting in novelty on account of anticipation in view of US Patent No. 6306391. Though the rejection may not affect the patent granted in India as it is subsequent to the grant in India as alleged by the plaintiffs, it is the case of the petitioners that they have filed petitions for post grant rejection u/s 25 of the Patents Act and the same are pending before the Controller of Patents, Mumbai.
26. While the Patents Act no doubt offers a patentee the exclusive right to enjoy the fruits of his registered invention, the same cannot be employed as a tool for exploitation to cripple business rivals without adducing any proof of their alleged infringement. It is specifically and vehemently denied that the revision petitioners are infringing the plaintiffs patented process in order to manufacture their products.
27. It is also denied by the revision petitioners that the non existence of a combined dose of the four ingredients in the plaintiffs'' product has been acknowledged by the Drug Controller of India. They submit that a pharmaceutical product in order to be marketed in India in a medicinal form, has to be granted market approval by the Drug Controller under the statutory stipulation contained in the Drugs and Cosmetics Act and the said market approval has no relevance to nor is it a certification as to any alleged intellectual property in the pharmaceutical product, the patentability of which, if any, has to be adjudged by the Controller of Patents who is a completely different authority appointed for the said purpose. According to them, since they are prior users of the medicine there cannot be any prima facie case being made out for infringement of patent or trade mark of the plaintiffs or any existence of any balance of convenience, since the ad interim injunction order resulted in the closure of the operation of the defendants manufacture of the said product. Further, irreparable injury has bee caused to the defendants who are in the field of manufacture of various medicines for several years and by the grant of ad interim injunction, their reputation and good will in the filed has been damaged considerably. Since the offending medical products of the defendants also contains the same composition of Cefixime Trihydrate USP (200 mg); Cloxacillin sodium I.P. (500 mg) and Lactic Acid Bacillus (90 million spores), there cannot be any disastrous effects on the public health even if there is a confusion as to the identity of the product is alleged.
28. In the facts and circumstances of the above case, I am of the view that the issue involved in the present CRPs require elaborate evidence both oral and documentary of either side in substantiating their case and then only after judicial scrutiny of the same, an order of injunction could be passed by the trial court. In the absence of such a procedure, the order of the exparte ad interim injunction granted by the trial court was already suspended by this Court and the same would continue till the disposal of the Interlocutory Applications. The revision petitioners are directed to file their counter in the respective Interlocutory Applications and both the parties are permitted to adduce sufficient evidence to substantiate their case. Thereafter the trial court shall pass an order in the said Interlocutory Applications as expeditiously as possible, taking into consideration of the material evidence to be adduced by both the parties as to the prior user of the combination of the medical product and alleged infringement of patent and trade mark etc.,
29. Considering the facts and circumstances of the present case, I am of the view that the following guidelines may be taken into consideration by the trial courts, while dealing with similar matters and before granting ex parte ad interim injunction:
i) Where the plaintiff and the primary defendant are residing outside the State and their identity, addresses etc., are easily known;
ii) Where sales of the offending products are not on a commercial scale;
iii) If the grant of interim injunction is going to result in closure operation/business of the defendant. If the ex parte injunction has an all India operation and not just within the State;
iv) Where the dispute involves patent/trade mark issues, the trial court should carefully peruse the certificates, offending marks etc.,
v) An ex parte injunction should not be granted in cases where no evidence or proof of infringement has been filed by the plaintiff;
vi) In patent cases, the trial court has to carefully note the distinction between a product patent and a process patent. If the plaint alleges violation of process patent, then ex parte injunction should not be granted unless the plaintiffs have adduced the evidence of an independent scientist/other technical expert who has tested the plaintiff''s and defendant''s product and arrived at an independent finding as to the identity of the processes used. In process patent cases, opportunity must be given to the defendant to explain how their process does not constitute infringement within the meaning of "Section 104A of the Patent Act."
30. All the revision petitions are ordered in the above terms. Consequently, all the connected Miscellaneous Petitions are closed. No costs.
