Dhanpat Seth v Nil Kamal Plastic Crates Ltd (2007)

Summary

“This appeal is directed against the order passed by a learned single Judge of this Court in OMP No. 530 of 2005 in Civil Suit No. 69 of 2005 rejecting the prayer of the appellants-plaintiffs for grant of interim relief.” (para 1) The plaintiffs “filed a suit seeking grant of permanent prohibitory injunction restraining the defendant from infringing Patent No. 195917 granted in favour of the plaintiffs on 11-7-2005. The patent has been granted in respect of a device used for manufacture of manually hauling the agricultural produce.” (para 2) “The defendant further alleged that there is no novelty or invention in the patent and in fact it is just centuries old device popularly known as ‘KILTA’ which was originally made of bamboo and has now been produced in plastic” (para 4). “The learned single Judge has come to the conclusion that the device patent of which was obtained by the plaintiffs is basically an imitation of the traditional Kilta.” (para 5) The Bench “also called upon the parties to produce their respective devices as well as the traditional Kiltas.” (para 12)

The Bench held that “the mere fact that the device is made of polymeric material instead of bamboo is not an inventive step involving any novelty” (para 17) and that “Mere grant of patent in favour of the plaintiffs by itself does not mean that the plaintiffs are entitled to any injunction.” (para 21) “In the present case, the defendant has already started manufacturing and selling the Kiltas and has been doing so for a number of years. In our opinion, at this stage it would not be appropriate to put the clock back.” (para 24) It concluded that “the device developed by the plaintiffs is in fact the result of traditional knowledge and aggregation /duplication of known products such as polymers and, therefore, cannot be said to be an invention. The plaintiffs are, therefore, not entitled to any injunction.” (para 26) It directed that “the respondent shall maintain full and complete accounts of all the sales made of the Kiltas manufactured by it” and “shall furnish a surety bond in the sum of Rs. 20 lacs” ... “The appeal is disposed of in the aforesaid terms. No costs.” (para 28)

What the court decided

1. Invention and inventive step. “A bare perusal of the definition of invention clearly shows that even a process involving an inventive step is an invention within the meaning of the Act. It is, therefore, not necessary that the product developed should be a totally new product. Even if a product is substantially improved by an inventive step, it would be termed to be an Invention. The definition of ‘inventive step’ provides that when technical advances as compared to existing knowledge take place in an existing product or there is improved economic significance in the development of the already existing device and the invention is not obvious to people skilled in the art, it would amount to an inventive step.” (para 11)
2. The kiltas compared. “There is virtually no difference in the overall design of the tradition Kilta or the ‘devices’ developed by the plaintiffs and: the defendant. A visual comparison of the’ three items prima facie establishes that the articles manufactured by the plaintiffs and the defendant are virtual copies of the traditional Kilta.” (para 13) “After having seen the traditional Kijta and the devices of the parties and having examined the same, we are prima facie of the view that the devices being manufactured by the parties are only imitations of the traditional Kilta.” “The traditional Kilta used in Himachal Pradesh is by and large supported by adjustable ropes going over the shoulders.” (paras 13, 15)
3. The question framed. “The question which arises for consideration is whether this change of material from bamboo to plastic and the development of adjustable nylon straps with buckles is an inventive step falling within the meaning of Section 2{ja).” (para 13)
4. The workshop improvement test. “The Apex Court in M/s. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries , while dealing with the meaning of the words ‘inventive step’ held as follows:” “in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’. To be patentable the improvement or the combination must produce a new result or a new article or a better or cheaper article than before.” (para 16)
5. Change of material, straps and buckles. “The process of making traditional items out of such polymers is a well known and well established process. This Court can take judicial notice of the fact that much prior to the device being manufactured by the plaintiffs, traditional items made out of woods, steel, brass, leather and other natural materials have been replaced by plastic.” “Therefore, in our opinion, the mere fact that the device is made of polymeric material instead of bamboo is not an inventive step involving any novelty. There is nothing new about the process of manufacturing the traditional Kilta made of natural material from synthetic material. Even nylon straps now added are virtually copies of the ropes used in the traditional Kilta. The ropes in the Kilta can also be adjusted by the user keeping in view the height of the person using the Kilta and the weight being carried by him. The mere introduction of buckles would not amount to a new device being called an invention or an inventive step.” (para 17)
6. The Assistant Controller’s order. Of the order “dated 2-7-2007 passed by the Assistant Controller, Patents and Designs, whereby he has rejected the application for revocation filed by the defendant” (para 18), the Bench held: “At the outset, it would be pertinent to mention that the Controller before dealing with the matter did not even take the traditionally built Kilta into consideration as a citation.” (para 19) “We fail to understand the reasoning given by the Assistant Controller, Patents and Designs in not taking into traditionally built Kilta into consideration. Even the case set up by the plaintiffs was not that he had invented an entirely new product but his case was that he had developed a traditional Kilta by means of inventive steps in such a fashion that it amounts to a new invention. The contentions of both the parties could not have been appreciated without first taking into consideration the traditional Kilta.” (paras 18–20)
7. Grant and the injunction. “Mere grant of patent in favour of the plaintiffs by itself does not mean that the plaintiffs are entitled to any injunction. This is a factor which may be taken into consideration and would be a relevant factor but the grant of patent would not ipso facto entitle the plaintiffs to grant of an injunction without taking into consideration other relevant factors. In fact Section 107 of the Patents Act clearly provides that in any suit for infringement of a patent every ground on which it may be revoked under Section 64 shall be available as a ground for defence. Therefore, the defendant is entitled to argue before this Court that the patent granted is not valid. Reliance placed upon by the plaintiffs on the judgment of the Apex Court in Midas Hygiene Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors. is totally misconceived. The action in the case was under the Trade Marks Act where the provisions are different.” (para 21)
8. The American Cyanamid principles. The Bench recorded that in “American Cyanamid Co. v. Ethicon Ltd.” the House of Lords held that “If damages in the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however, strong the plaintiffs claim appeared to be at that stage” (para 23) and “that where other factors appear to be evenly balanced the rule of prudence would be to preserve the status quo.” It held: “In the present case, the defendant has already started manufacturing and selling the Kiltas and has been doing so for a number of years. In our opinion, at this stage it would not be appropriate to put the clock back.” (paras 23–24)
9. Anticipation at the interim stage. “In respect of the arguments addressed on the doctrine of anticipation, even if we discount the production of the device by the plaintiffs prior to 24-5-2002, it is clear that prior to this date, the defendant had sent the drawing for production of the Kilta to Taiwan. At this stage of the suit when evidence is still to be recorded, the said material cannot be discarded.” (para 25)
10. Traditional knowledge. Section 3(p), reproduced by the Bench, reads: “an invention which In effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.” (para 10) “Keeping in view the aforesaid discussion, we are clearly of the view that the device developed by the plaintiffs is in fact the result of traditional knowledge and aggregation /duplication of known products such as polymers and, therefore, cannot be said to be an invention. The plaintiffs are, therefore, not entitled to any injunction.” (paras 10, 26)
11. Procedure. Protective directions. “It is, however, amply clear that even if the Court does not grant interim relief in favour of the plaintiffs, some directions must be issued to ensure that in the event of his success in the action, his interests are protected. We, therefore, direct that the respondent shall maintain full and complete accounts of all the sales made of the Kiltas manufactured by it.” “The respondent/defendant shall furnish a surety bond in the sum of Rs. 20 lacs to the satisfaction of the Registrar (Inspection) of this Court undertaking to pay the decretal amount, if any, which may be decreed in favour of the plaintiffs and against the defendant.” “The appeal is disposed of in the aforesaid terms. No costs.” (para 28)

What the court did not decide

“It is, however, made clear that any observations made in this appeal are only limited for the purpose of deciding the application for grant of interim relief and shall not be construed as the observations on the merits of the suit.” (para 27)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.