Case Note & Summary
The applicant, SERGI Transformers Explosion Prevention Technologies Private Limited, challenged the orders of the learned District Judge, Thane dated 18.2.2011 and 1.3.2011 in Civil Suit No.1/2005. The respondents-plaintiffs had filed a suit for infringement of patent and injunction against the applicant and another defendant. The applicant filed a written statement and a counterclaim seeking revocation of the patent. The trial court, by order dated 7.8.2010, allowed the counterclaim to be taken on record but deferred consideration of the amendment and an application under Section 8 of the Bombay Court Fees Act. The applicant filed a writ petition, and this Court (Justice J.H. Bhatia) on 15.9.2010 clarified that the counterclaim for revocation of patent must be taken on record and the suit transferred to the High Court under Section 104 of the Patents Act, 1970. Despite this, the trial court passed the impugned orders refusing to transfer the suit and insisting on payment of court fees before taking the counterclaim on record. The High Court held that the proviso to Section 104 of the Patents Act mandates transfer of the suit to the High Court upon filing of a counterclaim for revocation, and the trial court cannot refuse transfer or insist on payment of court fees as a precondition. The impugned orders were set aside, and the trial court was directed to take the counterclaim on record and transfer the suit to the High Court.
Headnote
A) Patents Act - Transfer of Suit - Section 104 - Counterclaim for Revocation - Upon filing of a counterclaim for revocation of a patent in a suit for infringement, the proviso to Section 104 of the Patents Act, 1970 mandates that the suit along with the counterclaim be transferred to the High Court for decision. The trial court's order refusing transfer and insisting on payment of court fees under Section 8 of the Bombay Court Fees Act before taking the counterclaim on record was set aside. Held that the transfer is automatic and not dependent on payment of court fees (Paras 1-10).
Issue of Consideration
Whether the trial court was justified in refusing to transfer the suit to the High Court under Section 104 of the Patents Act, 1970, upon the defendant filing a counterclaim for revocation of the patent, and whether the court could insist on payment of court fees before taking the counterclaim on record.
Final Decision
The impugned orders dated 18.2.2011 and 1.3.2011 passed by the learned District Judge, Thane are set aside. The trial court is directed to take the counterclaim on record and transfer the suit to the High Court in accordance with Section 104 of the Patents Act, 1970.
Law Points
- Transfer of suit to High Court upon counterclaim for revocation of patent
- Section 104 Patents Act 1970
- proviso to Section 104
- Court Fees Act Section 8
- Bombay Court Fees Act
Case Details
2011 LawText (BOM) (06) 40
Civil Revision Application No. 185 of 2011
Mr. P. S. Dani with Mr. Sanjay Khair, Ms. Rani Bozz i/by Chaitanya Chavan for the applicant; Mr. Ravi Kadam, Advocate General with Mr. V. R. Dhond, Mr. Vishal Kanade, Mr. Himanshu Kane, Mr. Aditya and Mr. Rohan Lamba i/by M/s. Paras Kuhad & Associates for respondent No.1
SERGI Transformers Explosion Prevention Technologies Private Limited
CTR Manufacturing Industries Limited, Easun MR Tap Changers Private Limited, EMCO Limited
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Nature of Litigation
Civil revision application challenging orders of the District Judge in a patent infringement suit.
Remedy Sought
The applicant sought setting aside of the trial court's orders refusing to transfer the suit to the High Court and insisting on payment of court fees before taking the counterclaim on record.
Filing Reason
The trial court refused to transfer the suit to the High Court despite the defendant filing a counterclaim for revocation of the patent, and insisted on payment of court fees under Section 8 of the Bombay Court Fees Act before taking the counterclaim on record.
Previous Decisions
The trial court on 7.8.2010 allowed the counterclaim to be taken on record but deferred consideration. This Court in Writ Petition No.6994/2010 on 15.9.2010 clarified that the counterclaim must be taken on record and the suit transferred to the High Court. Despite this, the trial court passed the impugned orders on 18.2.2011 and 1.3.2011 refusing transfer and insisting on court fees.
Issues
Whether the trial court was justified in refusing to transfer the suit to the High Court under Section 104 of the Patents Act, 1970, upon the defendant filing a counterclaim for revocation of the patent.
Whether the trial court could insist on payment of court fees under Section 8 of the Bombay Court Fees Act before taking the counterclaim on record.
Submissions/Arguments
The applicant argued that under the proviso to Section 104 of the Patents Act, upon filing a counterclaim for revocation, the suit must be transferred to the High Court, and the trial court cannot refuse transfer or insist on court fees.
The respondents argued that the counterclaim was not properly filed and that court fees were required before the counterclaim could be taken on record.
Ratio Decidendi
Under the proviso to Section 104 of the Patents Act, 1970, upon a defendant filing a counterclaim for revocation of the patent in a suit for infringement, the suit along with the counterclaim must be transferred to the High Court for decision. The trial court cannot refuse transfer or insist on payment of court fees as a precondition for taking the counterclaim on record.
Judgment Excerpts
The learned Judge of this Court (Hon’ble Mr. Justice J. H. Bhatia) vide order dated 15.9.2010 disposed of the said writ petition with certain clarification.
In view of the proviso to Section 104 of the Patents Act, since the counter-claim for revocation of the patent is made by the defendant, the suit along with the counter-claim has to be transferred to the High Court for decision.
Procedural History
The respondents filed Civil Suit No.1/2010 on 11.1.2010 for patent infringement. The applicant filed written statement on 20.3.2010 and counterclaim on 8.4.2010. The trial court on 7.8.2010 allowed the counterclaim to be taken on record but deferred consideration. The applicant filed Writ Petition No.6994/2010, which was disposed of on 15.9.2010 with clarification that the counterclaim must be taken on record and the suit transferred to the High Court. Despite this, the trial court passed orders on 18.2.2011 and 1.3.2011 refusing transfer and insisting on court fees. The applicant then filed the present Civil Revision Application.
Acts & Sections
- Patents Act, 1970: Section 104
- Bombay Court Fees Act: Section 8
