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Petitioner: MESSRS THE MONT BLANC INDUSTRY (REGD.) VS Respondent: ABDUL AZIZ
Court Name: Lahore High Court Judge(s): Aftab Hussain Title: MESSRS THE MONT BLANC INDUSTRY (REGD.) vs ABDUL AZIZ Case No.: Civil Original No, 25 of 1972, Date of Judgment:1979-05-26 Reported As: 1980 CLC 396 Result: Suit dismissed
JUDGMENT
JUDGMENT ' AFTAB HUSSAIN, J.-This order will dispose of Civil Misc. No, 76/L of 1972 and Civil Original No, 25 of 1972 since they involve common questions of law and facts arising between the same parties. For facility of reference the Mont Blanc Industries shall be called 'plaintiff' and Abdul Aziz shall be referred to as 'defendant'. 2. The facts are that an application for grant of patent of their perforating power machine was filed by Fazal Karim and his son Muhammad Siddique Nadeem both carrying on business under the name and style of "THE MONT BLANC INDUSTRY REGISTERED" in the Office of the Controller of Patent and Designs, Government of Pakistan' on 10th October, 1969. This petition was accepted on the 11th May, 1971, after rejection of the defendant's objection and the order of grant of patent No, 121506 was thereafter gazetted in the Gazette of Pakistan dated 28th May, 1971. On the 21st February, 1972, a suit for permanent injunction was filed by the registered firm "THE MONT BLANC INDUSTRY REGISTERED" Gujranwala, against Abdul Aziz defendant claiming that he had imitated the said machine, had manufactured a similar machine and had started selling the goods produced by his machine as the goods of the plaintiff thus causing him considerable loss and damage; and praying (1) for handing over the machine to the plaintiff, (2) for account of profits, (3) for awarding a decree for restraining the defendant from the use of the said patented machine, (4) from passing off the produce of the said patent, and (5) for a temporary injunction in the like terms pending the final disposal of the suit. Abdul Aziz defendant filed Civil Misc. No, 76/L of 1972 on 29th May, 1972, purporting to be under section 51-A read with Rules 81 and 82 of the Patent and Designs Act, 1911, for cancellation of the said patent No, 121506 on the ground that the manufacture of the plaintiff's machine was not an invention.
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3. In view of the pendency of this petition the plaintiff's suit was transferred to the High Court on the 1st October, 1972, under the proviso to subsection (1) of section 29 of the Patent and Designs Act, 1911. Subsequently, by an order dated the 23rd February, 1976, both the matters were consolidated and it was directed that the evidence and other proceedings shall be taken in Civil Misc. No, 76/L of 1972. 4. The plaintiff's case is based upon his being an inventor of the patented machine while the defendant's case is that it is he who had prepared and operated his perforating power machine earlier but neither his machine nor the machine of the plaintiff was an invention within the meaning of the Act of 1911. 5. The following issues were framed : (1) Whether the petition discloses grounds given in section 26 of the Patent and Design Act for the revocation of the patent ? (2) Whether the machine of respondent No, 1 is invention under the Patent and Design Act, 1911 ? (3) Whether the plaintiff, i. e. The Mont Blanc Industries (Regd.) was inventor of the Perforating Power Machine ? (4) Whether the patent can be revoked on any of the grounds given in the petition for revocation and the written statement of the suit ? (5) Has the defendant infringed the patent of the plaintiff ? (6) Has the defendant passed on his Perforating Power Machine as machine of the plaintiff ? (7) Whether the plaintiff is entitled to any damages ? If so, to what amount (8) Whether the defendant is entitled to special costs under section 35 A, C. P. C. (9) Relief. 6. Three more points were raised in the written-statement to Civil Misc. No 76/L of 1972. They were firstly, that no petition for revocation of the registration of the patent could be made under section 51-A, secondly, that the petitioner had another remedy by way of appeal and thirdly, that the petition was barred by time. At the time of framing of issues the learned Counsel for the defendant conceded the first point and admitted that the case was governed by section 26 of the Act. He prayed that Civil Misc. No 76/L of 1972 may be treated to be a petition under that section. By order dated the 23rd February, 1976, it was directed that the petition shall be considered to be one under section 26. It was also held that the plaintiff could not show any law under which the order of dismissal of objections of the defendant by the Controller of Patents and Designs may be appealable. Moreover, section 26 was not subject to the condition of exhausting alternative remedies. For this reason it was held in the same order that no issue arose on the second point. Similarly, no issue was held to arise on the plea of limitation because no such period of limitation is provided in the Act. It may be stated that under section 29 (2) it is open to the defendant to plead grounds on which a patent may be revoked under section 26. In view of this the plea of limitation as regards the petition under section 26 is reduced to the position of an academic question. No issues were, therefore, framed on these three points. 7. On the 29th May, 1974, this Court passed an order of appointment of Dr. K. R. Uppal, Professor Mechanical Dapartment, Engineering University, Lahore, to ascertain "as to whether in his opinion the respondent can be said to be a new inventor of the machine in respect of which the patent was granted in his favour." Dr. Uppal submitted his report along with five affidavits of Abdul Latif son of Karam Bakhsh, Abdul Karim son of Muhammad Din, Muhammad Hafeez Zia son of Haji Muhammad Ali, Ch. Muhammad Iqbal son of Nawab Din, Muhammad Anwar son of Hidayat Ullah and Muhammad Akram son of Muhammad Shafi. All of whom deposed that the perforating power machine of the defendant was manufactured in the year 1968, Except Abdul Latif all others also swore that the machine of the plaintiff was made in the year 1970. The last named four persons also swore that they had taken part in the compromise talk between the parties. Dr. Uppal, however, held on the basis of his own comparison of the foreign machines and the machine of the
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plaintiff that the latter was a new invention. The defendant filed objection against the report. The same can be summed up as follows :- (1) The Local Commissioner did not conduct any proceedings or inquiry in the presence of the parties despite the fact that the petitioner was always willing to participate in the proceedings. (2) The affidavit filed on behalf of the plaintiff should not be considered to have any evidentiary value on account of the grounds given in paras. 2 and 3 of the objections. (3) The Local Commissioner erred in failing to record the statements of the parties and the witnesses. (4) The Local Commissioner erred in assuming jurisdiction in respect of the legal question whether in the circumstances of the case the manufacture of the machine amounted to an invention under subsection (8) of section 2 of the Patents and Designs Act, 1911. (5) The report is misleading, collusive and one sided and the Local Commissioner appears to have been influenced by various extraneous matters. 8. A reply to these objections was filed on behalf of the plaintiff. Ultimately, on the 19th May, 1975, the parties agreed that Dr. Uppal may be examined as a Court witness in support of his report. Since Dr. Uppal was not available in Pakistan and was found to have left for abroad, his presence was not insisted upon in the interest of expeditious trial of the matter. 9. After going through the report, the objections and their reply and hearing both the learned Counsel, 1 found that the first and the third objections were of no avail since the parties had to be given full opportunity of producing their evidence before the Court. The third objection was held to be without merit because the Local Commissioner had not given any finding in regard to the above-mentioned affidavits nor had: he placed reliance upon them. It was further held that the affidavits would not be considered to have any evidentiary value for the determination of the question involved in this case. It may be stated at this stage that the defendant in his reply had said that he was prepared to produce all the deponents in Court for cross-examination. For this reason alone the affidavits as such could not be taken into consideration. As regards the point of similarity or distinction in the specifications of the foreign machines as well as of the Pakistani machines no objection was raised. In these circumstances, it was considered unnecessary to wait for the arrival of Dr. Uppal for recording his evidence and a finding to that effect was given on the 13th February, 1976. 10. The only point that impressed me at that stage was that the Local Commissioner's report was one-sided. He had considered the machine of the respondent to be an invention but had not given a similar finding regarding the machine of the petitioner. Secondly, I found that the point whether the report of the Local Commissioner that the Pakistani machine should be considered to be an invention within the meaning of the Patents and Designs Act was not the job of the Local Commissioner but could be determined only at the time of final disposal of the case. I, therefore, held that the report shall not be held as determinative of the question whether the machine used by the plaintiff or the defendant was at all an invention within the meaning of section 2 (8) of the Act of 1911. The report could be considered as determinative of only the difference in the specification between the machines manufactured abroad and the machine prepared in Pakistan by the parties. The objections were thus disposed of on the 31th February, 1976. 11. Before proceeding further to deal with the issues I may also notice that at least four of the persons who had given affidavits were examined as P. W. 2, P. W. 3, P. W. 6 and P. W. 7. They are Abdul Karim son of Muhammad Din P. W. 2, Muhammad Akram son of Muhammad Shaft P. W. 3, Muhammad Iqbal son of Nawab Din P. W. 6 and Muhammad Anwar, son of Hidayat Ullah P. W. 7. In their statements in Court P. W. 3, P. W. 6 and P. W. 7 did not state the dates of the manufacture of the machine of the plaintiff or the defendant. Muhammad Iqbal who had been categroical
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about the dates of the manufacture of both the machines stated in his cross-examination that he had seen only the machine of the plaintiff and not of the defendant. 12. A reference may also be made to two applications of the plaintiff for production of additional evidence. The plaintiff had in his reply to Civil Misc. No, 76/L of 1972, relied upon a letter purporting to have been signed by Abdul Aziz defendant and one other Abdul Aziz. The letter purports to be an admission of imitation by Abdul Aziz of the perforating power machine of the plaintiff. A photostat copy of this letter was put to the learned Counsel for the defendant on the 23rd February, 1976. He stated that the original of this document was a forgery. One reason which he gave in support of the statement was that Abdul Aziz had objected before the Controller of Patents and Designs to the machine being patented and as such there was no point in writing this letter on the 2nd September, 1969. 13. No effort was made on behalf of the plaintiff to prove this letter in his own evidence. He, however, submitted an application for additional evidence on the ground that the letter could not be proved on account of a mistake on the part of the plaintiff. He prayed that the postman who had served the registered letter may be summoned to prove the document and the specimen signatures of the defendant may be sent to the Handwriting Expert to verify whether the letter was written by the defendant to the plaintiff under his signature. 14. This application was dismissed on the 16th July, 1976, on the ground that there was no reason why proper steps to produce evidence to prove the above letter were not taken in time. Moreover, the Postman could only prove the delivery of envelope and not the letter itself, nor could he prove whether the letter delivered by him was in fact des-patched by the defendant. It was suggested that the remedy before the plaintiff was to put this letter in cross-examination to Abdul Aziz if he appeared as a witness. The letter was put to Abdul Aziz but he denied having written the same or having signed it. 15. Yet another application (C. M. 130/L-78) for permission to produce additional evidence to prove the same letter was submitted. In this petition a request was made to summon the Handwriting Expert, the Postman and FIR No, 116 of Police Station, Gujranwala City dated 14th June, 1969. This petition was dismissed on 28th February, 1979, on the ground that there was no reason to review the order dated the 16th July, 1976. It was reiterated that the Handwriting Expert could only compare the signature but he could not prove that the document in fact emanated from the defendant. Similarly, the Postman could prove only service of envelope but not the letter. It was also pointed out that Muhammad Siddique Nadeem P. W. 8, partner of the firm, did not make any statement about the letter at any stage of the ' evidence. Similarly, the F. I. R. Also was not material to prove any compromise or the writing of this letter. It was held that in these circumstances no useful purpose was likely to be served by production of additional evidence. 16. Issues Nos. 1 and 4 : ' Section 26 of the Act of 1911, provides that a patent may be revoked inter alia on the ground- (b) that the true and first inventor or his legal representative or assign was not the applicant or one of the applicants for the patent ; (c) (d) that the invention was not, at the date of patent, a manner of new manufacture or improvement ; and (e) that the invention does not involve any inventive step, having regard to what was known or used prior to the date of the patent. ' The petition is based on the ground that the perforating power machine of the plaintiff is not an invention and there are hundreds of similar machines which have been in use in Pakistan. The
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petition, therefore, amply discloses sufficient ground as required by section 26 of the Act for revocation of the patent. These issues are decided against the plaintiff. 17. Issue No, 6 : ' No evidence was led on this issue. It is accordingly decided against the plaintiff. 18. Issue No, 7 ' No evidence was led by the plaintiff on this issue. It is accordingly decided against him. 19. Issues Nos. 2, 3 and 5 : ' These issues can be taken up together since their decision is dependent upon the answer to the question whether the plaintiff's perforating power machine is an invention. ' The plaintiff's emphasis is mostly on producing evidence on the point that the plaintiff's machine was manufactured earlier while the defendant's similar machine is an imitation thereof and its manufacture followed after several years. The other point on which evidence has been led is that there had been some talk of compromise between the parties in which the defendant agreed with the finding of the conciliators that his machine was an imitation. The only evidence in regard to invention consists either of the statement of Mir Abdul Rashid P. W. 1 or Mr. Muhammad Osman, Controller of Patents and Designs, P. W. 4. No doubt P. W. 8, Muhammad Siddique Nadeem, partner of Mont Blanc Industries, appearing as his own witness, also made a statement in that respect. ' Before dealing with the evidence on invention, I may dispose of the evidence on the first two points. ' The purport of the evidence of Abdul Karim, P. W. 2, Muhammad Akram, P. W. 3, Muhammad Younis P. W. 5 and Muhammad Iqbal P. W. 6 about conciliation is that some amount was settled to be paid. P. W. 2 and P. W. 3 stated that the amount was R. 5,000. P. W. 5 and P. W. 6, on the other hand, stated that the amount was Rs, 8,500 P. W. 2 stated that Abdul Aziz had agreed to pay this amount since the demand of Fazal Karim was that he should not prepare the machine. P. W. 3. On the other hand, stated that the suggestion of intervener or mediator was that Abdul Aziz should be paid a sum of Rs, 8,000 and he should part with the machine. Same is the purport of the statements of P. W. 5 and P. W. 6. P. W. 5 stated that no School Teacher attended the compromise talk but it is proved by the evidence of P. W. 3 and P. W. 8 that P. W. 3 is a School Teacher. The evidence of these witnesses is self-contradictory. Apart from that it is also of no value since all the witnesses are agreed that the compromise talk broke down and these suggestions were not acceptable to the defendant. The defendant admits in his evidence about the compromise talk but since admittedly the conciliation talk was futile, nothing turns upon this evidence. ' P. W. 2, who stated that the machine of Abdul Karim was prepared in 1960 while a similar machine by Abdul Aziz was prepared in 1968, claimed to have seen both the machines. According to him, the machine of the plaintiff was 25 to 30 mounds in weight while the machine of Abdul Aziz is heavier being 35 to 40 maunds in weight. He further said that the machine of the plaintiff was run by a five horse power engine but he did not know anything about the power of the engine used for running the machine of Abdul Aziz. In fact he had not seen the machine of Abdul Aziz working. According to this witness, Muhammad Siddique had invented the machine, although, as will be seen, the case of the plaintiff is that the inventor was Fazal Karim his father. He also stated that the machine of Muhammad Siddique makes 12 holes at the most in one stroke but he could not say how many holes are made in a single stroke by the machine of Abdul Aziz. He conjectured that the number may be the same. When asked whether electric energy was consumed or the machine of the plaintiff was driven by a belt on the pully, he said that it was driven by a belt on the pulley. He did not say that it consumed the electric energy. Though he had stressed that he had not seen the machine of Abdul Aziz functioning, but in an answer to a question whether the metal sheet moves
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to and fro or the slide which punches the holes moves he said that it was the metal sheet which moved to and fro. He then stated that he did not know whether in the machine of Muhammad Siddique the metal sheet remained stationary and it was the slide which moved to punch the holes in it. He admitted that the parties did not deal in machines but only prepared the perforated material which is purchased by the customers. He further admitted that he was involved in a theft case but he denied that he was released through the intervention of Muhammad Siddique. When asked how many years have elapsed since 1960, he said on the 24th May, 1976, that twelve or thirteen years had elapsed. ' This witness does not appear to have any knowledge how the machines of the parties function. He claims to have seen both the machines and states that one is an imitation of the other and yet he could not say whether in the machine of Muhammad Siddique the metal sheet remained stationary and it was the slide which moved to punch the holes in it, although the plaintiff's case is that the slide does not move in this ,manner ; it is the table which moves. He has fixed the time of preparation of both the machines but no reliance can be placed upon this part of the statement since he is illiterate and could not correctly give the time which elapsed since 1960. He is the brother of Fazal Karim, as stated by P. W. 8. No reliance can be placed upon his evidence. ' As stated earlier, P. W. 3 Muhammad Akram had seen the machine of Hail Fazal Karim only though he gave an affidavit in support of the plaintiff regarding the dates of manufacture of both the machines. Similarly, P. W. 5, who has given a similar affidavit, confined his statement only to the conciliation proceedings. P. W. 6 Muhammad 1qbal, who sells locks and does not claim to have any knowledge of machinery in cross-examination stated that the machine was invented by Fazal Karim about 15 years ago. According to him, before this machine was invented the metal sheets were punched either by hand or by machines worked by hand (hand press). He had never seen the machine of the same type as that of Fazal Karim. This witness and P. W. 3 hail from the same Mohallah as the plaintiff. The evidence is clearly interested and cannot be relied upon. Moreover, the evidence of Muhammad Iqbal who is a vendor of locks is of no value on the question of invention. ' P. W. 4 is the Controller of Patents and Designs who has granted the patent. It is unnecessary to refer to his statement in any detail since it appears that no investigation worth the name was carried on in his office to determine whether the plaintiff was an inventor in the sense that he was the first inventor and whether the patented machine of the plaintiff had already been invented and was well known in the world including Pakistan. It appears that the office of the witness did not even have the machinery's Encyclopedia from which Dr. Uppal also had copiously copied in his report. The witnesses stated that if an invention is well known in foreign countries but is not published in Pakistan, its imitation in this country whether good or poor would still be called an invention. I am certain that if he had seen the above book which was published several decades before the manufacture of the plaintiff's machine or had investigated the machines used by the other manufacturers of perforated material in Pakistan he would not have called the plaintiff's machine an invention. His evidence is also rendered of little value by the admission of the plaintiff in his plaint that he is only 'one of the inventors'. He does not say that he is the first inventor or that this foreign invention was not at all known in Pakistan when his machine was manufactured. ' P. W. 1 Mir Abdul Rashid, who claims to be an employee of Amir Bakhsh Allah Bakhsh Crown Foundry as Planner, stated that in 1960 Fazal Karim manufactured a press machine for perforating metal sheets. The machine was moulded under his supervision and it was planned by him. About 8 years ago Abdul Aziz defendant came to him and asked him to prepare the same type of machine which was prepared by Muhammad Siddique. He had brought a wooden pattern. He (the witness)
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told him that the pattern brought by him showed that it was a copy of the machine prepared by him for Muhammad Siddique. He then moulded and prepared the machine of Abdul Aziz also. ' In cross-examination he stated that he remained an employee of the factory from 1964 to 1974. He could not give the names of the separate parts of the machine of the plaintiff. He, however, stated that he had prepared only two parts. One was known as press machine and the other was a rump machine. He could not, however, give the weight of these parts. He admitted that the pattern brought by the customer is not retained by the factory and is returned after the preparation of the part. He did not know whether any record was maintained in the factory about the names and particulars of the customers or any receipt of payment was issued to the customers. He further admitted that he had not seen the machine of Fazal Karim-Muhammad Siddique in working condition. Although according to his examination-in-chief he had stated that Fazal Karim had invented the machine but in cross-examination he stated that the pattern was invented by Muhammad Siddique who at the time of statement might be about 30 to 35 years of age and may be about 24 years old when he brought the pattern to him which means that the pattern had been brought to him from 6 to 11 years ago, although according to the examination-in-chief the time should be 16 years ago. He admitted that no other persons had ever brought any pattern and got the parts prepared from the factory where he worked. He stated that he himself did not agree that the parts prepared by the pattern brought by Fazal Karim would work and gave some suggestions to Fazal Karim and advised him to amend the pattern on the basis of these suggestions. He did not remember the measurements of the pattern. He admitted that his statement about the place where the machine was installed was based on hearsay. He could not say how many horse power engine would be required for properly using the machine which was prepared for Muhammad Siddique on his advice nor he knew the formula of horse power. It was suggested to him that when he had not moulded any such parts before the preparation of the machine of Fazal Karim and Muhammad Siddique, how could he advise Fazal Karim for…
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