SERGI Transformers Explosion Prevention Technologies Pvt Ltd v CTR Manufacturing Industries Ltd (2011)

Summary

“The respondents-plaintiffs have filed a Civil Suit bearing No.1/2010 in the Court of learned District Judge, Thane claiming infringement of patent and for an order of injunction restraining the defendant-applicant and defendant No.2 from infringing the plaintiffs’ patent by making, using, offering for sale and/or selling the impugned product. The suit was filed on 11.1.2010. The writ of summons was served on the defendant on 4.3.2010, written statement came to be filed by the present applicant on 20.3.2010. It appears that subsequently counter claim came to be filed on 8.4.2010 thereby seeking relief for revocation of patent of the plaintiff. An application was filed by the present applicant below Ex.57, for seeking leave to take defendant’s counter claim on record.” (para 3) After “several rounds of litigation between the parties which have not only reached to this Court, but also upto the Apex Court” (para 2), the District Judge “has rejected the application filed by the present applicants below Ex.57, for leave to file counter claim.” (para 6) The Court framed the “limited issue” as “whether learned trial Court is justified in rejecting the application below Ex.57, for taking counter claim on record.” (para 13)

The Court held that “as a matter of fact on 8.4.2010, a counter claim was in fact placed on record of the Court and in any case atleast before the Registry of the Court” (para 15), that “while considering the application for leave to place counter claim on record, in my view, merits of the counter claim cannot be gone into” (para 19), and that an application for permission to place a counter-claim on record cannot be rejected “only because the plaintiffs desire that the suit should be decided by the District Court and not the High Court. In my respectful view, the answer will have to be No.” (para 20) It held that “the learned Judge has totally misapplied the principles laid down by the Apex Court in the case of Ramesh Chand Ardawatiya” (para 25) and “has exercised the jurisdiction vested in it with material irregularity warranting interference in revisional jurisdiction of this Court under section 115 of CPC.” (para 28) “In the result, Civil Revision Application is allowed. The impugned order dated 18.2.2011 is quashed and set aside.” (para 29)

What the court decided

1. The counter-claim on record. “The learned Judge has wasted much paper and ink in trying to draw a distinction as to whether the counter claim was placed on record on 8.4.2010 before the Registry or before the Court. However, fact cannot be disputed that, as a matter of fact on 8.4.2010, a counter claim was in fact placed on record of the Court and in any case atleast before the Registry of the Court. It is further pertinent to note that the present respondents-plaintiffs themselves have filed an application under section 8 of the Bombay Court Fees Act below Ex.59. If according to the plaintiffs, counter claim was not on record, it is difficult to understand as to what was the occasion, for filing such an application.” Of the trial Judge’s clarification of 1 March 2011: “The aforesaid clarification, in my view, was totally unwarranted.” (para 15)
2. Grounds of opposition and revocation. “It can be seen from the perusal of section 25 and section 64, that though certain grounds are overlapping, there are certain additional grounds, that are available under section 64 to a party which are not available under section 25.” The Court relied on “Surajmal Rambux & Ors.” in which the Nagpur High Court held that “in so far as the grounds are different and in the absence of any prohibition, it cannot be said that a person who has unsuccessfully opposed the grant of a patent cannot file an application for its revocation.” (para 16)
3. Forum hunting. “As a matter of fact, as discussed herein above, a counter claim has been filed on 8.4.2010. Writ petition is filed much after the date on which the said counter claim was filed.” “In that view of the matter, the contention of the respondents that the applicants are indulging in forum hunting and making an attempt to approach one forum after failing before the other forum is concerned, is factually without substance.” (para 17)
4. The doctrine of election. Quoting the Apex Court that the doctrine “would not apply to cases where the ambit and scope of the two remedies is essentially different”, the Court held: “It can thus clearly be seen that the Apex Court itself has held that the said doctrine would not apply to the cases, where the ambit and scope of the two remedies is essentially different.” “Similar view has been taken by Delhi High Court in the case of Dr.Aloys Wobben (supra).” (para 18)
5. Merits at the leave stage. “In any event, while considering the application for leave to place counter claim on record, in my view, merits of the counter claim cannot be gone into. Limited scope of enquiry would be, as to whether the applicants have made out a case for grant of permission or not. The other issues would arise only in the event the counter claim is permitted to be taken on record.” (para 19)
6. Transfer under section 104. “It can thus clearly be seen that, though a suit for declaration under section 105 or for any relief under section 106 has to be instituted in the District Court, where a counter-claim for revocation is made by the defendant, the suit along with counter claim has to be transferred to the High Court for decision.” (para 20) “It is settled law, that when the law requires a particular thing to be done in a particular manner, it has to be done in that manner alone. The question is when the Legislature has specifically provided that the suit and counter claim to be transferred to the High Court once a counter claim is made for revocation of patent, can an application for permission to place counter claim on record be rejected, only because the plaintiffs desire that the suit should be decided by the District Court and not the High Court. In my respectful view, the answer will have to be No.” (para 20)
7. A counter-claim after the written statement. Of the first ground of the trial Judge, the Court relied on “Mahendra Kumar & Anr., (supra)”, where the Apex Court held that “Rule 6-A(1) does not, on the face of it, bar the filing of a counter-claim by the defendant after he had filed the written statement”, and held: “Same view has been taken by the Apex Court in the case of Shanti Ranidas Dewanjee (supra). The finding of the learned trial Judge, therefore, that since no compelling reasons are given for not filing the counter claim with written statement, is not correct.” (para 22)
8. Other remedies no bar. “Insofar as the second ground on which the application is rejected, that the defendants have not lost their remedy and the statutory remedies are available to them is concerned, in my view, the said ground cannot be a ground, for rejecting the application for placing the counter claim on record.” “As already discussed herein above, firstly it is not permissible to go into merits of the counter claim at this stage, secondly, though the applicants-defendants have other remedies available in law, the remedy to file counter claim cannot be denied to him, on that ground” (para 22)
9. The three modes of a counter-claim. “The Apex Court in the said case, has clearly held that counter claim must necessarily find its place in the written statement.” “The Apex Court has further held that there are three modes of pleading or setting up counter claim in a civil suit viz. (i) in a written statement under Rule 1; (ii) a counter claim may be preferred by way of amendment incorporated subject to leave of the Court in written statement; (iii) a counter claim may be filed by way of subsequent pleadings under Rule 9.” “The Apex Court however observed that if the issues have already been framed and the case is set down for trial or more so when the trial has already commenced, generally a counter claim may be refused to be taken on record.” (para 24)
10. Ardawatiya distinguished. “I am of the considered view that the learned Judge has totally misapplied the principles laid down by the Apex Court in the case of Ramesh Chand Ardawatiya (supra). In the said case, the Apex Court was considering an attempt to prefer a counter claim when defendant had inspite of grant of dozens of chances, failed to file written statement and was proceeded ex-parte. The case therein was a case of gross-negligence.” (para 25)
11. The timing applied. “As held by the Apex Court in the case of Kailash (supra), the said provisions are held to be directory and not mandatory.” “In the present case, though the written statement is filed within 30 days, the counter claim is lodged on 34th day. At the most, it could be said that it is filed belatedly by four days beyond the prescribed period of 30 days. However, admittedly it is within a period of 90 days.” “The proceedings before the learned trial Court were only at the stage of considering the application for temporary injunction. The issues are yet to be framed, leave aside the trial being commenced.” “In my considered view, since the application in question was filed at the stage, when the issues are also not framed, the learned trial Court ought to have allowed the same.” (para 26)
12. Amendment and prejudice. “In that view of the matter, since the trial is yet to commence, even if an application for amendment of written statement incorporating counter claim is filed today, the same would have been allowed as it would not be hit by the proviso to Order 6 Rule 17. Apart from that even according to the respondents-plaintiffs, the facts pleaded in the counter claim are identical with the facts pleaded in the written statement. If that be so, there was no question of any prejudice being caused to the respondents-plaintiffs.” (para 26)
13. Procedure and revisional interference. “It can thus be seen that the procedure is handmaid of justice. The intent of the legislature to bring Order 8 Rule 6-A of the CPC is to avoid multiplicity of judicial proceedings and save upon the Court’s time. It is further aimed at deciding all disputes between the same parties in the course of same proceedings. Taking into consideration all these aspects of the matter, I am of the view that the approach adopted by the learned trial Judge to say the least, is hyper-technical. I find that the findings of the learned trial Judge regarding prejudice are totally without substance, in the facts of the present case. In that view of the matter, I find that the learned trial Judge has exercised the jurisdiction vested in it with material irregularity warranting interference in revisional jurisdiction of this Court under section 115 of CPC.” (para 28)
14. Procedure. Disposition. “In the result, Civil Revision Application is allowed. The impugned order dated 18.2.2011 is quashed and set aside. Application filed by the present applicants below Ex. 57 seeking leave to file counter claim on record is allowed.” (para 29) “Taking into consideration the long history of litigation between the parties, it is directed that the suit shall not be transferred to this Court for a period of six weeks from today.” (paras 29, 32)

Subsequent treatment

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