V. Manicka Thevar v Star Plough Works (1964)

Summary

“The appellant filed the suit” “on the file of the District Judge, Madurai, under S. 29 of the Patents and Designs Act, against the respondent for a permanent injunction restraining the respondent form manufacturing and selling certain patterns of ploughs on he ground that he respondent’s conduct was an infringement of the plaintiff’s patent.” “The plaintiff has preferred the above appeals complaining that the learned District Judge should have granted the interim injunction pending disposal of the suit.” (para 1) The plaintiff’s case was “that he obtained a patent on 12-10-1960 in respect of a particular pattern of plough, having a special twist distinguishing his pattern from the other ploughs in the market” and “that about March 1964, the defendant slavishly imitated the plaintiff’s pattern by manufacturing ploughs and selling the same in the market.” (para 2) “The defendant resisted the claim on the ground that the plaintiff cannot claim any inventive genius or special research in the particular pattern of plough which he was manufacturing having regard to the prior public knowledge and obviousness” (para 3).

Ramamurti J held that “Principles regulating the grant of an interim injunction in a suit complaining of infringement of a patent are fairly well settled. The plaintiff must make out a strong prima facie case for the issue of a temporary injunction. 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 the grant of the patent itself.” (para 5) He found that “the patent is very recent one” and that “the decisions have uniformly taken the view that any patent which is less that six years old is regarded as a recent one”, and he concluded: “For all these reasons I entirely agree with the order of the learned District Judge holding that the plaintiff has not made out any case for the grant of an interim injunction.” (para 6) “The appeals are therefore dismissed with costs.” (para 7)

What the court decided

1. A strong prima facie case. “Principles regulating the grant of an interim injunction in a suit complaining of infringement of a patent are fairly well settled. The plaintiff must make out a strong prima facie case for the issue of a temporary injunction.” (para 5)
2. Recent patent and disputed validity. “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 the grant of the patent itself. In other words, if from the objections raised by the defendant it is clear that that a serious controversy exists as to whether or not the invention claimed by the plaintiff is a new one or a new manufacture of whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent, courts will not grant an interim injunction restraining the defendant from pursuing his normal business activity. An interim injunction will not be granted if the defendant disputes the validity of the grant.” “If the patent is new and its validity has not been established in a judicial proceeding till then, and if it is endeavoured to be shown that he patent ought not to have been granted under the provisions of S. 26 of the Patents and Designs Act, 1911, the court will not interfere by issuing a temporary injunction.” (para 5)
3. No evidence of production or sales. “In the instant case every circumstance that has been made out is definitely against the grant of a temporary injunction. The plaintiff has not made out the important condition of a strong prima facie though the defendant raised this particular objection, the plaintiff has not placed any prima facie material or any evidence by production of account books, bill books etc. to show the date of his commencement of the production and the nature of the sales extensive or otherwise.” (para 5)
4. The six-year rule. “Secondly, the patent is very recent one, and I find that the decisions have uniformly taken the view that any patent which is less that six years old is regarded as a recent one. The statement of the law in Terrel on Patent, 9th Edn pages 318-320 shows that a patentee should show undistributed possession of the enjoyment of the patent at least for a period of six years before the controversy arose. In Boots Pure Drug and Co., (India) Ltd. v. May and Baker Ltd., 52 Cal WN 253, this rule hat there should be proof of actual user of the patent for more than six years was applied in India.” (para 6)
5. Controversy and an established trader. “The facts of the instant case disclose a bona fide tribal issue as regards the inventive genius claimed by the plaintiff.” (para 5) “Thirdly there is also a serious controversy about the validity of the grant of the patent touching the originality or the inventive genius of the plaintiff or as to how far the prior knowledge holding the field would disentitle the plaintiff to the grant of the patent. The defendant is certainly not a new entrant in the field but he has himself been a dealer, manufacturer and seller of ploughs of various patterns.” (paras 5–6)
6. Procedure. Disposition and accounts. “The appeals are therefore dismissed with costs. The direction passed by the learned District Judge directing the defendant to maintain separate accounts of their sales with liability to pay damages tot he plaintiff in case the plaintiff succeeds would stand.” (para 7)
7. Procedure. An expedited trial. “It is needless to observe that where the main issue to be decided in the stage of the interim injunction application is the same as the one to be tried in the suit the best course will be to expedite the trial of the suit, so that neither party would be put to any irreparable damage or loss of prejudice. I therefore direct the District Judge to dispose of the suit as expeditiously as possible preferably before the end of (January) 1965” (para 8)

Subsequent treatment

• Followed — In Franz Xaver Huemer v New Yash Engineers (1996) the Delhi High Court recorded that the Calcutta decision in Boots Pure Drug “was followed by the Madras High Court in Manicka Thevar v. Star Plough Works” and held: “We are in agreement with these decisions for the more elaborate reasons we propose to give below.” (para 12)
• Explained — In Novartis AG v Adarsh Pharma (Madras High Court, 28 April 2004) the Court held that “the learned Judge has never said that if the patent is of a recent origin and if it is less than six years old, no injunction at all should be granted. On the other hand, the learned Judge had recognised the power of the Court to grant an interim order, if facts made available warrant such an order being passed.”
• Explained — In Mariappan v A.R. Safiullah (2008) a Division Bench of the Madras High Court held that “a patent which is less than 6 years old can be regarded as a recent one, as held in Manicka Thevar’s case reported in AIR 1965 Madras 327, the said view has lost its significance in view of the latest development in the field of science and technology.” (para 66)