IN THE HIGH COURT OF DELHI AT NEW DELHI
MICROMAX INFORMATICS LIMITED ..... Appellant
Represented by: Dr.Abhishek Manu Singhvi and Mr.Parag Tripathi, Sr.
Advocates instructed by Mr.Saikrishna Rajagopal, Mr.Sunil Dalal,
Mr.Sanjeev Narula and Mr.J.Sai Deepak, Advocates.
TELEFONAKTIEBOLAGET LM ERICSSON
(PUBL) and ANR. ..... Respondents
Represented by: Mr.Neeraj Kishan Kaul,
Sr. Advocate instructed by Ms.Pratibha M.Singh, Ms.Saya Choudhary Kapur,
Mr.Ashutosh Kumar and Mr.Varun Tikmani, Advocates.
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MS. JUSTICE PRATIBHA RANI
O R D E R
1. The first respondent, Telefonaktiebolaget LM Ericsson (PUBL), a
company incorporated under the laws of Sweden, instituted a suit on
FAO(OS) 143/2013 page 1 of
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
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 plaintiff?s aforesaid patented
technology in?handsets imported by them.
FAO(OS) 143/2013 page 2 of 6
? ?Mr. Rohatgi has also drawn this Court?s attention to the
judgment??of the Division Bench of this Court in Telefonaktiebolaget LM
Ericcson??Torshamnsgatan Vs. 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 Vs. 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.
FAO(OS) 143/2013 page 3 of 6
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
FAO(OS) 143/2013 page
4 of 6
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
FAO(OS) 143/2013 page 5 of 6
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.
Dismissed as infructuous.
PRADEEP NANDRAJOG, J.
PRATIBHA RANI, J.
MARCH 12, 2013
FAO(OS) 143/2013 page 6 of 6