G.K.Mitter,J. - (1.) This is an application for interim Injunction to restrain the defendant, his servants and agents from writing and/or publishing threats set out in the letter dated 18th of July 1960 being Annexure 'A' to the plaint herein, or other threats of like nature and import
(2.) The suit was filed under the provisions of sec. 36 of the Indian Patents and Designs Act, 1911, which reads as follows : "36 Remedy in case of groundless threats of legal proceedings : Where any person claiming to have an interest in a patent by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged infringement of the patent, any person aggrieved thereby may bring a suit against him in a District Court having jurisdiction to try the suit, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as he has sustained thereby, if the alleged infringement to which the threats related was not in fact an infringement of the patent: Provided that this section shall not apply if an action for infringement of the patent is commenced, and prosecuted with due diligence." The above is a verbatim copy of sec. 32 of the English Act before its amendment in the year 1936.
(3.) The defendant claims to be the grantee and the registered proprietor of patent No. 63186 for the manufacture of a certain type of crushing machine used in the manufacture of tea. The plaintiff claims to be a person carrying on a business in the sale of the crushing machines of the type covered by the defendant's patent. The defendant had his patent registered in the year 1958. On the 2nd of March, 1960, his agents Messrs. DePenning and DePenning wrote a letter to Messrs.' Calco Engineering Works, 15 Chaulpati Road, Belliaghata, Calcutta, stating that the defendant enjoyed exclusive right to manufacture, sell and use any crushing machine covered by the said patent as well as component parts specially intended for such crushing machines, that it had come to the defendant's knowledge that the addressee had been manufacturing, selling and/or offering for sale crushing machines falling within the scope of the abovementioned patent as well as essential component parts of such machines. The addressee was called upon (i) to desist forthwith from manufacturing, selling and/or offering for sale the said or any other machines, (ii) to furnish the writer with a certified statement of the extent of the manufacture and sales effected by the addressee and, lastly, (iii) to give an undertaking to the writer that there would be no infringement in future of the defendant's patent rights in any manner, The last paragraph of this letter reads as follows ; "Lastly we hereby give you notice that unless we hear from you within. 15. days from the date of receipt hereof by you definitely agreeing to comply with all the above requirements our client will without any further intimation to you institute against you such proceedings for the protection of his interests and the enforcement of his rights as he may be advised; and that in the meantime our client reserves his rights to claim damages." This letter was answered by L.S. Davar and Co. on the 22nd of March, 1960. The writers pointed out that their clients had examined patent No. 63186 and claimed that "a side frame with an opening (cut away or slotted) to enable the blocks which held the ends of the rollers to slide into the opening was known in India prior to the date of Mr. Martin's application No. 63186." They went on to add that "Machines having the above features were manufactured inter alia by Bir Singh and Co. of Makum Junction, Assam, and Bharat Engineering Works also of the same place, Apart from the use of the feature claimed in claim 1 of 63186 by the above two manufacturing firms this feature was too wellknpwn in machines prior to the date of the said application. Our clients are of the opinion that the patent office granted the patent without having the knowledge that machines including the feature as claimed in claim 1 of 63186 were already available in the market in India. In view of what is stated above the question of complying with your requirements does not arise.";