Rohtas Industries Ltd v Indian Hume Pipe Co Ltd (1953)

Summary

“This is an appeal against a decree passed in a suit instituted under the provisions of Clause (1) of Section 29, Patents and Designs Act, 1911, for restraining the defendants by an order of perpetual injunction from making and using machines said to have been covered by the two patents bearing Nos. 20709 and 26902” (para 1). “The first patent bearing No. 20709 is said to be in respect of an invention entitled as” “Improvements in or relating to cages or drums for forming thereon reinforcements for concrete pipes and the like”, “and the second patent bearing No. 26902 is in respect of the invention entitled as” “Improved manner and means of making long concrete or the like pipes, poles or other hollow objects by centrifugal process” (para 3). The defendants were “(1) Rohtas industries Ltd., at Dalmianagar” ... “(2) Dalmia Jain & Co., Ltd., Dalmianagar, Managing Agent of the Rohtas Industries Ltd. and (3) one Mr. A. K. Dasgupta, Manager of Spun Pipe and Pole Factory” (para 2). “The trial Court has decreed the suit and hence this appeal by the defendants.” (para 6) “In short, therefore, as it appears from the judgment and the pleadings, the only plea that has been raised in defence is that the acts of infringement alleged to have been committed were not done by the defendants.” (para 7)

Anwar Ahmad J found that the evidence of Judagi Mistri and G. C. Raha “supports the plaintiffs’ case that the machines covered by the plaintiffs’ patents had been set up by the defendant Company and their employee and with the help of those machines poles and pipes had been. at least manufactured in the past” (para 13), and held that “the plaintiffs have succeeded in proving the allegations made by them in the plaint” (para 15). He held that “the actual infringement of patent is taken by Courts to imply an intention to continue the infringement, notwithstanding any promise not to do so” and that “it is a fit case in which injunction should be granted against the defendants as sought by the plaintiffs in their plaint” (para 18), that “each one of the defendants in this case is liable for the infringement of the plaintiffs’ patents as claimed by them” (para 19), and that “The appeal is, in my opinion, without any substance and is accordingly dismissed with costs.” (para 20) Narayan Roy J: “I agree.” (para 21)

What the court decided

1. Validity not in issue. “There is no dispute about the fact, as it appears from the judgment of the trial Court that the patents claimed by the plaintiffs are subsisting and valid and this fact has not been challenged before us, and, therefore that part of the case of the plaintiffs stands proved.” “the defendants have not set up any plea as contemplated by Sub-section (2) of Section 29 of the Act that the patents even if any originally granted stand revoked or that the plaintiffs’ patents are invalid for want of novelty--a defense generally known in law as Lord Moulton’s defence.” (para 7)
2. Sale of products and use. “in order to prove the infringement alleged in Sub-clauses (b) and (c) of paragraph 8 of the plaint, even if it is held that they constitute the infringement of the patent under the law, the plaintiffs will have to prove that the defendants did use the process or the machine covered by the patents, that is, exactly what is alleged in Sub-clause (a) of paragraph 8 of the plaint” ... “In this view of the matter, the infringement that has to be substantially enquired into is what is given in Sub-clause (a) of paragraph 8 of the plaint, that is, the allegation about the erection and using of the machines covered by the patents.” (para 7)
3. Procedure. Additional evidence in appeal. “In our opinion, his absence was not deliberate and as the trial had already been held piecemeal, we think that the order refusing adjournment for examining Mr. A. K. Dasgupta was not in the interest of justice and we therefore examined him here in this Court, in our opinion, it was difficult to arrive at a correct conclusion in the case in the absence of his evidence.” (para 13)
4. Papers withheld by the defendants. “In the result, therefore, we find that on behalf of the defendants there is practically no evidence worthy of reliance . The defendants have not taken the trouble of filing any of the papers, from their office which could have at least demolished many of the allegations made by the plaintiffs. That also suggests a circumstance adverse against them.” (para 14)
5. Infringement proved. “Even if some criticism is taken into consideration against the evidence of Judagi Mistri for the part he played, in changing his loyalty from one company to the other, the criticism is at least not available against Mr. G. C. Raha. His evidence fully corroborates the statement of Judagi Mistri. In this view of the matter, I think it is to be held that the plaintiffs have succeeded in proving the allegations made by them in the plaint.” (para 15)
6. Past use and future use. “Once it is held, which I think has to be held in this case, that the defendants did use the machines covered by the plaintiffs’ patents, there is at least a potential likelihood of those machines being used again in future and the rights of the plaintiffs secured to them under grants in their favour usurped.” (para 16)
7. Intention to infringe. “in my opinion even proof of an intention to infringe, apart from actual infringement, may justify an injunction to restrain the infringement provided it is established to the satisfaction of the Court that the alleged infringer, dealing with what he is doing as a matter of substance, is taking the invention claimed by the patent” (para 16)
8. Actual infringement implies continuance. “In the present case there is a positive evidence, as already held by me, that the defendants did use the machines covered by the plaintiffs’ patents. That is sufficient to prove the injury threatened for future.” “So the actual infringement of patent is taken by Courts to imply an intention to continue the infringement, notwithstanding any promise not to do so and unless, in my opinion, it is clear that there is no intention to continue the infringement an injunction will be granted.” (para 18)
9. Possession of the machines. “In the present case there is no conclusive evidence to the satisfaction of the Court that the defendants do not intend to continue the infringement any more. There is also no evidence that the defendants though they might have removed the machinery are not still in possession of the same. Possession of those machines is sufficient to give rise to a presumption of a threat to infringe unless that presumption is rebutted by the evidence of non-user or the absence of such intention” (para 18)
10. Servants and agents. “further the law is clear on the point that a person may infringe a patent, as in this case the defendants company have done by making the article themselves or by their agent -- which is the position of defendant 2 in this case or by their servant -- which is the position of defendant 3 in this case. In such cases action may be taken against the servants and agents individually or collectively along with their employer and principal” ... “It is clear in this case that the infringement if any, has been committed jointly by all the defendants, I therefore think that each one of the defendants in this case is liable for the infringement of the plaintiffs’ patents as claimed by them.” (para 19)
11. Procedure. Disposition. “The appeal is, in my opinion, without any substance and is accordingly dismissed with costs.” (para 20) Narayan Roy J: “I agree.” (paras 20–21)

What the court did not decide

“What is in fact, in substance, involved in this contention is whether a monopoly for a process includes a monopoly for articles made by that process.” “In the present case, however, this question has only an academic value for even if it is accepted what is contended by learned counsel for the plaintiffs that the sale and order for sale of the poles and pipes produced from the machines or processes, covered by the patents are included in the prohibition by the grant in favour of the plaintiffs, the plaintiffs will have to show that the poles and pipes alleged to have been sold or offered for sale by the defendants were produced as a direct result of the use of a process or machine, substantially the whole of which is the subject of the patents.” (para 7)

Subsequent treatment

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