Bajaj Auto Limited, Bombay v. M/s. T/vs Mtor Company Limited, Chennai Rrp. By Its Authorised Signatory Harne Vinay Chandrakant

(Prayer: These Appeals are preferred against the order of this Court dated 21.09.2011 made in A.Nos.2258 and 2691 of 2012 in C.S.No.979 of 2007.)

JUDGMENT

P. JYOTHIMANI ,J

1. In respect of issues involved in these appeals, at the out set, it is relevant to state that the Honble Apex Court in the order dated 16.09.2009 has directed the learned single Judge to dispose of the suits on or before 30.11.2009. Ironically the suit is still at the stage of taking up the matter for trial.

2. The present appeals are filed against the order passed in the application filed by the plaintiff in C.S.No.979 of 2009 under Order XVIII Rule 3 of CPC and also for the joint trial of both the suits in C.S.Nos. 979 of 2007 and 1111 of 2007.

3. C.S.No.979 of 2007 has been filed by the plaintiff viz., TVS Motor Company Limited praying for a declaration that the threats held out by the defendant viz., M/s. Bajaj Auto Limited on September 1 and 3 of 2007 that the plaintiff is infringing the defendants patent and the defendant is proposing to take infringement action against the plaintiff are unjustified, to declare that the plaintiffs product TVS Flame which uses two sparks plug with screw-fitted sleeve and three valves does not infringe patent of the defendant and also for the consequential injunction apart from compensation. Therefore, the suit filed by the plaintiff in the suit is in respect of the threats said to have been made by the defendant regarding infringement.

4. C.S.No.1111 of 2007 has been filed by M/s. Bajaj Auto Limited praying for an injunction against the TVS Motor Company Limited in infringing the plaintiffs patent and the consequential reliefs including rendering of accounts, etc.

5. In both the cases, issues have been framed which are as follows:

S.No.C.S.No.979/2007C.S.No.1111/2007

1Whether this Court has got territorial jurisdiction to try this suit and whether the plaintiff has got any cause of action as prayed for by the plaintiff and more so, whether part cause of action has arisen within the jurisdiction of this Court Whether the defendant has infringed the plaintiffs patent no. 195904

2Whether the defendant has issued the press release on 01.09.2007 and 03.09.2007 and whether the same would constitute a threat And if so groundless threat Whether the defendant is entitled to question the validity of the plaintiffs patent no. 195904

3Whether the present suit is barred by the provisions of order 2 Rule 2 CPC in view of the earlier suit filed in Bombay High Court in Suit No.3132/ 2007If the answer to (2) is in the affirmative, whether the defendant proves that the plaintiffs patent no.195904 is invalid/not patenable in view of US Honda patent no. 4534322 read with 678/ MUM/ 2001 and 82/ MUM/ 2001

4Whether the plaintiff is entitled to seek an injunction restraining the defendant from issuing a threat of infringement as prayed in the prayer even after the defendant has filed the suit for infringement being C.S.No. 1111/ 2007 against the plaintiff herein Whether the plaintiff is entitled to permanent injunction as prayed for

5Whether the suit has become infructuous as claimed by the defendant in para 4.1 of the written statementWhether the use of twin spark plugs in an engine delimited by the bore size of 45 mm to 70 mm impart inventive step particularly in the light of Honda Patent 4534322

6Whether the plaintiff proves that the plaintiffs product TVS Flame does not infringe the defendants patent Whether the burning of lean air fuel mixture can be regarded as an element (constructional feature) of the produced claimed in the suit patent

7Whether the plaintiff is entitled to a declaration as prayed for in prayer (a) and (b) of the plaint Whether the plaintiff is entitled to damages as prayed for or otherwise

8Whether the suit has been properly valued on the ground of damages If so, whether the Court fee has been properly paid Whether the plaintiff is entitled to any of the relief prayed for in the above suit

9Whether the plaintiff is entitled to relief of damages

10Whether the plaintiff is entitled to the reliefs claimed by them "

6. Earlier, as against the order passed by the learned single Judge of this court, in various applications filed by the parties, for injunction, etc., this court in the order dated 10.3.2010, has directed the plaintiff in C.S.No.1111 of 2007 to start with the letting in of evidence. Against which, the appeals were filed in O.S.A.Nos. 132 and 133 of 2010 and the Division Bench of this court in the judgment dated 4.10.2010 has held that burden was primarily on the plaintiff in C.S.No.979 of 2007 and further directed that the suit to be decided on merits and in accordance with law with the following directions:

"58.The primary burden was on the plaintiff to prove their case. It is true that the defendant has subsequently filed a suit praying for a decree of injunction based on their patent. When the plaintiff has taken a substantial contention that their new product has nothing to do with the patent obtained by the defendant, it was for the plaintiff to produce materials so as to enable the Court to grant a decree in their favour. The fact that the defendant has filed a subsequent suit would not absolve the plaintiff from proving their plaint averments. In fact, the learned Judge has stated that the very issue relates to infringement. It was only the plaintiff who has come to the Court at the first instance with an action that the threat originated from the defendant, was a groundless threat, and that their product has nothing to do with the patent obtained by the defendant. Therefore, the plaintiff should have been directed to lead evidence at the first instance. In case the defendant wants to get a decree as prayed for in C.S.No.1111/2007 they have to show that the vehicle manufactured by the plaintiff under the brand name TVS Flame was an infringement of their patent. Therefore, the burden lies on both the parties to prove their respective contentions. However, we are concerned only with the limited issue as to who should begin first. Since the suit filed by the plaintiff was a suit for declaration, consequential injunction and damages and in the absence of an order for joint trial, the learned Single Judge should have directed the plaintiff to lead evidence at the first instance. The direction to the defendant to begin was therefore, contrary to the scheme of civil jurisprudence. Hence, we are constrained to set aside the order passed by the learned Single Judge."

Admittedly, that order has become final. In the mean time, the plaintiff in C.S.No.979 of 2007 has filed a proof affidavit dated 23.6.2011 and the same has been taken on the file of this court. However, the cross examination of the witness is yet to begin. In the mean time, the plaintiff in C.S.No.979 of 2007 has filed the above applications, which came to be allowed by the learned single Judge, against which, the present appeals are filed.

7. Mr.T.V.Ramanujan, learned senior counsel appearing on behalf of the appellant as well as the learned senior counsels Mr. C.S.Vaidyanathan and Mr. P.S.Raman appearing on behalf of the respondent have raised various issues regarding the impugned order passed by the learned Judge. Especially, the contentions of Mr.T.V.Ramanujan, learned senior counsel appearing on behalf of the appellant is that when earlier the Division Bench has already decided the issues, the learned single Judge should not have allowed the applications filed under Order XVIII Rule 3 of the Civil Procedure Code.

8. On the other hand, Mr. C.S.Vaidyanathan, learned senior counsel appearing on behalf of the respondent would submit that the issue before the Division Bench was as to who has to let in evidence first and his categorical submission is that the plaintiff in C.S.No.979 of 2007, who has filed a comprehensive proof affidavit in respect of both the suits, is ready and willing to let in evidence at first.

9. Therefore, on hearing the respective learned senior counsels and taking note of the fact that the Honble Apex court has already directed the suits to be decided expeditiously and the time granted by the Honble Apex court already lapsed long ago and in the interest of justice for the purpose of putting an end to the trial in respect of both the suits, we are of the view that without going into the merits of the various arguments which are being advanced by the learned senior counsels, it will be suffice to dispose of the above appeals with the following directions:

i. There shall be consolidated trial with common evidence inC.S.Nos.979/2007and 111/2007 and the documents shall be commonly marked in both the suits.

ii. The plaintiff in C.S.No.979 of 2007 shall first let in evidence on all issues whose burden lies on it in both suits including on the issue of groundless threat, non infringement and invalidity of the defendants patent and be cross examined on the same.

iii. The defendant in C.S.No.979 of 2007 shall thereafter let in evidence on all issues whose burden lies on it on both the suits including on the issue of infringement and validity of its patent and be cross examined on the same.

iv. Either party shall be entitled to thereafter take out appropriate application to lead further evidence if necessary and the same shall be disposed in accordance with law.

10. With the above observations, we request the learned Judge to take up the matter on top priority as per the earlier direction of the Honble Supreme Court and dispose of the same within a period of three months from the date of receipt of a copy of this judgment.

11. In the result, these appeals are disposed on the above terms and the common fair and decretal order dated 21.09.2011 made in A.Nos.2258 and 2691 of 2012 in C.S.No.979 of 2007 are set aside. No costs.

12. We make it clear that the learned Judge is requested to decide the suit on merits and in accordance with law, being uninfluenced by any of the the observations made by the learned single Judge in the impugned order.