C.M.No. 4296/2013

Allowed.

FAO(OS) 143/2013

1. The first respondent, Telefonaktiebolaget LM Ericsson (PUBL), a company incorporated under the laws of Sweden, instituted a suit on the Original Side of this Court alleging infringement of 8 patents. Restraint order, permanent as well as temporary; damages and rendition of accounts has been prayed for. The 2 defendants in the suit are: "Mercury Electronics impleaded as defendant No. 1 and the appellant Micromax Informatics Limited".

2. From a perusal of the plaint, it appears that the patents relate to 2G, 3G and EDGE Technology, in its application to devices such as mobile handsets, tablets etc.

3. Taking up the suit at its preliminary hearing on March 06, 2013, pertaining to I.A.No.3825/2013, invoking power of the Court under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, learned Single Judge has issued an interim order. The same reads as under:-

"Issue notice to defendants by all modes including dasti, returnable "for 17th May, 2013 before Joint Registrar.

"Present suit has been filed for permanent injunction, damages, "rendition of accounts, delivery up etc.

"Mr. Mukul Rohatgi, learned senior counsel for plaintiff states that "plaintiff is the registered owner in Indian of eight patents referred to as AMR Patents, 3G Patents and EDGE Patent. He states that all the aforesaid Patents are registered and currently valid."

"Mr. Rohatgi further states that defendants without payment of any consideration are using the plaintiffs aforesaid patented technology in handsets imported by them."

"Mr. Rohatgi has also drawn this Courts attention to the judgment of the Division Bench of this Court in Telefonaktiebolaget LM Ericcson Torshamnsgatan v. Union of India and Ors., MIPR 2012 (2) 0345 as well as the order dated 29th January, 2013 passed in CS(OS) 68/2012 Telefonaktiebolaget LM v. Kingtech Electronics (India) and Ors. It is pertinent to mention that in both the aforesaid cases, plaintiff herein was a party to the proceedings."

"Keeping in view the aforesaid, this Court is of the opinion that plaintiff has made out a prima facie case in its favour and balance of convenience is also entirely in its favour. Further, irreparable harm would be caused to the plaintiff if the interim injunction order as prayed for is not granted."

"Accordingly, the Custom Authorities are directed that as and when any consignment is imported by the defendant No. 2, intimation thereof shall be given to the plaintiff and objections, if any, of the plaintiff thereto shall be decided under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 till further orders."

"Let the provision of Order 39 Rule 3 CPC be complied within a period of one week."

4. Against the said interim order passed requiring the Custom Authorities to decide objections, if any, filed by the plaintiff whenever consignments are imported by the appellant; the decision to be as envisaged under the Intellectual Properties Rights (Imported Goods) Enforcement Rules, 2007, the instant appeal has been filed. The grievance urged in the appeal is that the learned Single Judge has not given any reasons recording prima facie finding as to why the interim order in question was being issued.

5. It is urged by learned senior counsel appearing for the appellant that there is no presumption in favour of a patent holder on the strength of a patent being registered. Learned senior counsel urges that normally the rule of law is not to grant injunction when issues pertaining to violation of patents arises for consideration before the Courts for the reason damages would be a good measure.

6. We do not reflect our opinion on the second aspect of the submission urged for the reason if a strong prima facie case is made out it would be permissible for the Courts to pass injunction order. It would all depend on the facts of each case.

7. With respect to the first contention urged that the impugned order cannot be sustained even as an ex parte order, for the reason the learned Single Judge has not prima facie reflected upon, with reference to the pleadings in the plaint, to find out whether a prima facie case in favour of the plaintiff was made out i.e. did the plaintiff have a valid patent and that prima facie goods which were being imported were of a kind where the patent was violated, we have to only say that the argument overlooks the fact that prima facie finding, balance of convenience and irreparable harm, contemplated by the learned Single Judge is with respect to direction which has been issued. The direction issued is to the Custom Authorities that when any consignment is imported by defendant No. 2, intimation thereof be given by the plaintiff and objections filed, if any, would require a decision under the Intellectual Properties Rights (Imported Goods) Enforcement Rules, 2007. This would obviously mean that the learned Single Judge has found a prima facie case to direct the Custom Authorities to be cognizant of their statutory obligations and duties under the Intellectual Properties Rights (Imported Goods) Enforcement Rules, 2007 and that if an issue arise on objection filed by the plaintiff, statutory discretion vested in the Custom Authorities would be exercised.

8. We, therefore clarify, that the impugned order would not be read by the Custom Authorities as an opinion prima facie in favour of either party. Needless to state the impugned order would require the Custom Authorities to exercise statutory discretion as envisaged by the Intellectual Properties Rights (Imported Goods) Enforcement Rules, 2007.

9. Observing as above, we would further observe that propriety and comity would require us to say no further inasmuch as the appellant has a right to invoke order XXXIX Rule-4 CPC before the learned Single Judge.

10. Reminding the learned Single Judge that if such an application is filed the mandate of law requires every endeavour to be made to decide the application within 30 days. Needless to state, if after 30 days the grievance subsists the appellant would be entitled to invoke the appellate jurisdiction of this Court.

11. As regards the Custom Authorities, we direct that if plaintiff raises any objections to the goods imported by defendant No. 2, decision pertaining thereto shall be made as per Rules within the shortest possible time.

12. We clarify that we have not expressed any opinion on the merits of the rival contentions pertaining to the patents.

13. Appeal stands disposed of.

14. No costs.

15. Dasti.

C.M. No. 4295/2013

Dismissed as infructuous.