C. Siddeswaran v R. Shanmugham Pillai (1976)

Summary

“This appeal is preferred by the defendant in the suit against the judgment of Maharajan, J., granting a decree: (a) for injunction restraining the defendant from infringing the plaintiff’s patent No. 67546 and patent for addition No. 90265 during the continuance thereof; and (b) directing the defendant to produce into Court the infringing gramfrying machine in his possession for the purpose of destruction of the infringing parts of his machine and the return of the non-infringing parts to the defendant” (para 1). “For the purpose of frying Bengal gram and breaking it into dhalls, the plaintiff invented art automatic machine.” (para 1) “Maharajan, J., who tried the suit, upheld the validity of the plaintiff’s patent. He found that the defendant had infringed the patent which the plaintiff is entitled to. The learned Judge fixed the damages payable by the defendant to the plaintiff at Rs. 12,000.” (para 2) On appeal counsel for the defendant “did not question the quantum of damages or the fact of infringement of the plaintiff’s patent. But he submitted that as the patent, which was registered by the plaintiff on 30th April, 1959 lapsed with effect from 30th April, 1975, i.e., 16 years from 30th April, 1959, the plaintiff is not entitled to the relief of injunction or an order directing the defendant to produce into Court the infringing machinery for the purpose of destruction.” (para 3)

The Court held that “That the order of injunction cannot be continued does not admit of any doubt” and that “The only question that arises for consideration is whether the decree of the learned Judge directing the defendant to produce the infringing machinery for destruction should be affirmed.” It held that “an order of delivery for destruction is not intended as a punishment to the infringer, but is made with a view to assist the plaintiff and to assure that the order of injunction is made effective”, and that “While holding that the judgment and decree of the trial Court was right on the date when they were passed, due to changed circumstances, we set aside the order granting injunction and directing production of the infringing machinery for the purpose of destruction.” “As we have upheld the validity of the plaintiff’s patent, the direction to the defendant to pay the plaintiff a sum of Rs. 12,000 by way of damages for the infringement of the patent is affirmed.” (para 3)

What the court decided

1. The injunction after lapse. “That the order of injunction cannot be continued does not admit of any doubt, for, the plaintiff does not possess any patent right as on date and, therefore, there could be no infringement by the defendant by using his machinery.” (para 3)
2. The purpose of a destruction order. “Tyrrell on the Law of Patents at para. 965 explains the nature of the order of destruction. A successful plaintiff can obtain an order for the destruction or delivery up of infringing goods in the possession of the defendant, so as to ensure that such goods are not retained in order to be placed upon the market after the expiry of the patent. The form of the order regarding an infringing article which is directed to be delivered for destruction is for the purpose of rendering still more effective the order of injunction, ordinarily granted by the Court prohibiting its use during the term of the patent.” (para 3)
3. Discretion to limit the order. The Court reproduced Russell J in “Mergenthaler Linotype Co. v. Intertype Ltd. 43 R.P.C. 381”: “I think it further follows from that that the Court has a discretion, not only to refuse to make an order for delivery up, but if, in the exercise of its discretion, it makes the order, it has a further discretion limiting the extent to which the order goes.” (para 3)
4. Not a punishment. “Thus it is clear that an order of delivery for destruction is not intended as a punishment to the infringer, but is made with a view to assist the plaintiff and to assure that the order of injunction is made effective, and to prevent the defendant from the temptation of carrying on further breach with the help of the in-fringing machinery.” (para 3)
5. Changed circumstances. “Due, to changed circumstances, namely, the lapse of the patent, an order of injunction cannot be continued and naturally no question of an order being passed for ensuring the observance of the injunction would arise. In the circumstances, it would be futile to sustain the order of injunction. While holding that the judgment and decree of the trial Court was right on the date when they were passed, due to changed circumstances, we set aside the order granting injunction and directing production of the infringing machinery for the purpose of destruction.” (para 3)
6. Damages for the term. “As we have upheld the validity of the plaintiff’s patent, the direction to the defendant to pay the plaintiff a sum of Rs. 12,000 by way of damages for the infringement of the patent is affirmed.” (para 3)
7. Procedure. Disposition and costs. “The direction to the defendant to produce into Court the infringing machinery for the purpose of destruction is set aside. As the plaintiff has succeeded in the main, he will have his costs in this appeal.” (para 3)

Subsequent treatment

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