Madu Inflatables (P) Limited vs Pradeep Ranganathan And The Asst. Controller Of Patents And Designs

Z.S. Negi, J

The appellant has preferred the above appeal against the order dated 10th August, 2007 passed by the Assistant Controller of Patents & Designs

dismissing the opposition to the granted Patent No. 194558. The appellant has along with the appeal filed two miscellaneous petitions being numbered

as 18 and 19/2007 seeking stay of operation and effect of the aforesaid order till the disposal of the appeal by this Appellate Board and to take on

record certain documents as additional evidence in support of the appeal.

It is mainly averred in the MP 18/2007 that the learned Controller has not analysed and considered the submissions and accepted the case of the

respondent No. 1 without any substantiation whatsoever. However, averment is made that the respondent No. 1 has filed a civil suit CS No. 638/2003

against the appellant for infringement of designs registered under Nos. 190548, 190549 and 190550 and sought permanent injunction restraining the

appellant from manufacturing waterbed with the shape and configuration covered by the designs registered under Nos. 190548, 190549 and 190550 by

respondent No. 1. The application for interim injunction therein was dismissed by the High Court of Madras by its order dated 6. 04.2005. There upon

the respondent No. 1 filed an appeal being OSA No. 145/2006 against the said order dated 06.04.2005 but the Hon'ble Division Bench of High Court

of Madras dismissed the appeal directing the appellant herein to submit accounts before the High Court Registry once in every six months.

3 . The respondent No. 1 has also filed a civil suit CS No. 504/2005 against the appellant for infringement of patent No. 194558 dated 18.03.02 and

sought permanent injunction restraining the appellant from manufacturing waterbed. The suit was dismissed as withdrawn on 04.10.2007. In the suit,

the respondent No. 1 claimed that the appellant's waterbed is infringing its patent and the waterbed is in infringement of the impugned patent. The

submission by the appellant is that it is an admission by the respondent No. 1 that a product identical to its patented product is available and sold in the

market at least from the year 1997 onwards and, therefore, the patentee has admitted that there is no novelty, innovative steps in the impugned patent.

It is stated that in the circumstances, if the Appellate Board does not stay the order, the purpose of filing this appeal will be frustrated and the

respondent No. 1 may use the impugned order in any pending or other legal proceedings against the appellant and try to obtain injunction orders. The

balance of convenience is stated to be in favour of appellant in granting interim stay order. It is further stated that it is just and necessary that pending

disposal of the appeal, this Board ought to stay operation and effect of the impugned order of the Assistant Controller of Patent & Designs, Chennai,

otherwise the appellant will suffer a great prejudice and irreparable loss which cannot be compensated in pecuniary terms. The respondent No. 1 filed

reply to the petition by denying the material averments made in the affidavit of Managing Director of the appellant and mainly submitting that the

Controller of Patents dismissed the opposition on thorough and careful consideration, technically as well as legally, of the opposition documents, the

reply of the patentee, the written arguments of the appellant and submissions of both parties.

In the petition for taking on record certain documents as additional evidence, the Managing Director of the appellant has stated that when he was

rearranging his office, he found certain documents establishing manufacture of waterbeds by the appellant since 1997, i.e. prior to the date of the

impugned patent. To prove the contention of the respondent No. 1 false and incorrect, the appellant seeks to file an affidavit affirmed by Mr. G.

Ramesh in order to substantiate the manufacture of waterbeds with the specifications described in the patent from the year 1997. It is further stated

that the documents sought to be taken on record are absolutely relevant for the effective adjudication of the matter in dispute. It is also stated that

these documents could not have been filed before Assistant Controller of Patents earlier as the same were found only while arranging the office and

the non-filing the documents is neither willful nor wanton. The respondent No. 1 will not suffer any loss if the documents are taken on record but if the

same is not taken on record, the appellant will be put to irreparable loss and hardship. The respondent No. 1 filed reply to the petition opposing it

mainly on the ground that all materials were available with the appellant earlier and questioned as to why the same were submitted; the evidence

appears to have been created/fabricated with an intention to prolong the proceedings and gain time.

We have heard the learned Counsel for the appellant and learned Counsel for the respondent No. 1. The exercise of power to grant stay is a

discretionary one and has to be exercised in accordance with the well established principles which govern the exercise thereof. We have to consider

prima facie case, balance of convenience and irreparable injury. In the present petition, the main averment made is that the Controller of Patents has

not analysed and considered the submissions and accepted the case of the respondent No. 1 without any substantiation whatsoever. Any conclusion

on such an averment cannot not be arrived at unless we consider the whole matter, especially when such an averment is disputed by the other side.

The petitioner has failed to make out any prima facie case for grant of stay. The petitioner has not taken the grounds that by not staying the matter, it

will cause an irreparable injury to it and the balance of convenience is in its favour. We, therefore, see no justification for staying the matter till the

disposal of the matter by this Appellate Board.

6 . Regarding the request for taking certain documents on record as additional evidence, we find that non-production of the same before the Controller

of Patents is neither willful nor with mala fide intention. At least there is no allegation to impute mala fide on the part of the appellant. The objection of

the respondent No. 1 that the documents now sought to be filed were available is met by the submission of the appellant that the same were found

while arranging its office. We do not visualize that by taking these document on record, the respondent No. 1 be put to prejudice or injury. The

objection of the respondent No. 1 that the documents appear to be created is a matter to be considered at the time of final hearing when those are

referred to as evidence in support of the appeal.

The result is that the miscellaneous petition for staying the operation and effect of the order dated 10.8.2007 of the Assistant Controller of Patents

& Designs is rejected and miscellaneous petition for taking on record certain documents as additional evidence is allowed with liberty to the

respondent No. 1 to file its reply, if any, within a month hereof. There shall be no order as to costs.