1. By an application under Order XXXIX, rule 1, C. P. C. The plaidtiffs have prayed for an order of injunction against the defendants in the following terms :-
(1) that the defendants, their contractors, servants and all persons claim--ing through them or under them, be restrained from using the machine for manufacture of inner vessel of the double walled vacuum flask which infringe the plaintiffs' Patents No. 114232 and No. 116166 and using identical or substantially identical machine to those covered by the aforesaid patents and selling, disposing or marketing or parting with possession of the vacuum flasks and inner vessel produced from the said machine and
(2) for employing workmen :--
1. Khawaja Muhammad son of Khan Zaman.
2. Bakhat Zaman son of Sadat Khan.
3. Muhammad Ayub son of Dil Murad, and or in any way contravening the decree passed in Suit No. 233/77. Briefly the facts are that one late Badurddin Soomar was granted Patent No. 114232 for machine and method for manufacturing inner glass bottle for vaccum flask and the like for the term of sixteen years from 30-5-1964.
2. Another patent bearing No. 116166 was granted to late Soomar for .Improvements relating to machine (former) for manufacture of the same product for a period of 16 years from 28-4-1965.
3. The first patent has expired and the second patent is still operative. By a deed of assignment dated 19-2-1968 Late Soomar assign--ed to plaintiff No. 2, all his rights and title and interest is the afore stated two patents which was duly registered with the Controller of Patents and Designs, Government of Pakistan. The plaintiff No. 2 thus became the registered proprietor of the above patents. Thereafter the plaintiff No. 2 and legal heirs of Late Soomar filed Suit No. 233/77 against the defendant No. I alleging that the defendant No. 1 enticed away the technical staff of the plaintiff No. 2 and with their aid and assistance and by infringing the said Patent Nos. 114232 and 116166 started manufacturing the inner vessel of double walled vaccum flask by using identical machine. The suit was compromised and a consent decree which is reproduced below, was passed :- "The plaintiffs pray for judgment and decree against the defendants as under :-
(a) For permanent injunction restraining the defendants, their em--ployees and all persons claiming through or under them from using the machines and or machines for the manufacture of inner vessel of double walled vaccum flasks which infringe the plaintiffs' Patent No. 114232 and No. 116166 and or using identical or substan--tially identical machine to those covered by the said patents and selling. Disposing, marketing, retailing and parting with the possession of vaccum flasks or inner vessels c f doubled walled vaccum flask pro--duced from such machines.
(b) For mandatory injunction directing the defendants to deliver up the aforesaid infringing machines which are identical or substantially identical to those covered by the aforesaid patents and all goods manufactured from the aforesaid infringing machine to the plaintiff No. 6 for destruction.
(c) For an injunction against the defendants to give full particulars of all stocks of Vaccum Flasks and bottles produced from the aforesaid in--fringing machines held by the defendants and supplied by them to others together with addresses of parties to whom such goods have been sold and delivered.
(d) For an account of all profits made by the sale of the infringing articles and pay the profits made to plaintiffs Nos. 6 and 7.
(e) For costs of the suit and such further and other relief as the Court may deem fit.
4. The suit coming on this 14th day of April, 1979 for hearing before Mr. Justice Naimuddin the presence of Mr. Iqbal Kazi, Advocate for the plaintiff with plaintiff No. 6 personally and as Director of plaintiff No. 7, Mr. Ibrahim khmad, Advocate for the defendants with Mr. Subzally Managing Director of the Defendant's Company. The parties having filed a compromise applica--petition under Order XXIII, rule 3, C. P. C. Signed by the parties and their respec--tive Advocates containing the following terms and the execution whereof having been admitted by the parties present in Court "(1) The defendant shall pay to the plaintiff No. 6 licence fees for the use of the two patents in Suit bearing Patent No. 114232 dated 30th May, 1964 and 116166 dated 28th April, 1965 at the rate of Rs.
5. 500 per patent i. e. Rs. 1,000 for both the said patents per annum per machine for the original term of the said patents respectively and for the con--sideration aforesaid defendant shall be entitled to use the machine covered by the said patents during the said period.
(2) The defendant shall not file any petition or petitions is this Hon'ble Court for the revocation of the aforesaid patents or any of them.
(3) The defendant shall withdraw their opposition filed before the Controller of Patent opposing the grant of the patent under Patent Application No. 118693 (483/67) filed by the plaintiff's predecessor late Mr. Badruddin Soomar and the defendants hereby given a licence of the use of the machine comprised in the said Patent No. 118693 (483/67) and manufacture and sell goods in accordance therewith without payment of any licence fee or charges to the plain--tiffs or any of them as and from the grant of patent.
(4) The defendant shall be at liberty at all times and from time to time manufacture and sell their goods as per the three patents hereinbefore referred in terms hereinabove mentioned to and/or as per any machine or machines on the furnaces and/or premises of the defendant and/or on the furnace and/or premises of any other person, firm or corporation whosoever and whatsoever with the prior permission in writing of the plaintiff No. 6 which shall not be refused. The plaintiffs have allowed the defendant to use the defendant's machine at the premises of Mehr Glass Works for the purpose of manufacture of Glass shells of defendant only. Provided always that the use of such machine and the resulting pro--duct shall be for the purposes of defandant only...
(5) The defendant shall distinguish their refills by some slight mark or colour so as to differentiate their refills from those of the plaintiffs or any of them.
(6) The defendant shall not entice away or knowingly employ the tech--nicians, workmen or the employees of the plaintiffs and vice versa, that is to say, the plaintiffs or any of them shall not entice away or know--ingly employ the technicians, workmen and` employees of the defen-- dants.
(7) The order of security herein dated 19-5-1977 whereby the defendant has deposited securities herein to the tune of Rs. 25,003 shall stand vacated and the said securities of Rs. 25,000 deposited by defendant shall be returned to the defendant.
(8) The order herein of 19-5-1977 for filing of monthly statement of accounts shall stand vacated.
(9) The parties shall bear their own costs."
6. It is hereby ordered and decreed in terms of paras. (I) to (9) of the com--promise mentioned hereinabove.
7. It has been alleged that in spite of the decree the defendant No. 1 and Mehr Glass Works again enticed (?) dated 5-8-1979 was served on the defendant No. I and Mehr Glass Works. The defendant No. 1 sent a reply making a plain denial stating that it has not enticed away or employed any of the alleged employees of the defendant No. 1. However no action was taken by the plaintiff No. 1 as the furnace of Mehr Glass Works got burst and the work had stopped.
8. The present suit arises mainly on two grounds namely that the defendant No. I without the prior consent and permission of the plaintiffs as provided in the consent decree have put up the machinery on the furnace of defendant No. 2 and is manufacturing goods. Sscond grievance is that the defendant No. I has enticed away the workers of the plaintiffs and having engaged them in the Factory, both the defendants are manufacturing goods on the impugned machine. It has specifically been alleged that both these actions on the part of the defendants were clearly in flagrant disobedience of the undertakings given by the defendant No. 1 in the decree.
9. The defendant No. 2 while adopting the counter affidavit filed on behalf of the defendant No. 1 alleged that the Late Soomar had obtained the patents by misrepresentation and fraud and the same should be revoked. The defendant No. 1 has denied to have committed breach of the terms of decree and has stated that the defendant No. 1 has to contract or arrange with defendant No. 2 for the use of its own machine. "The said contract or arrangement is on unit or piece basis. The defendant No. 2 have likewise contracted or arranged with Sultan Sarwar contractor on unit or per piece basis or rate and neither defendant No. 1 nor defendant No. 2 have engaged any workmen" as alleged by the plaintiffs. It has been stated that the alleged 3 workmen are not the workmen of the plaintiffs. Two of them were previously working for Sultan Sarwar in his contract of Mehr Glass Works". The above-quoted explanation in the counter-affidavit boils down to that the defendant No. 1 has entered into a contract or arrangement with defendant No. 2 for manufacture on unit or rate basis and in order to fulfil this arrangement or contract the defendant No. 2 has employed Sarwar Khan the Contractor who is employing, those workmen. It has also been contended that the suit is not maintainable as the present suit amounts to enforcement of the decree which is barred under the law.
10. Mr. A. A. Zari the learned counsel for the defendant No. 2 urged that the plaintiff has not made out a prima facie case. To support his contention the learned counsel has referred to Halsbury's Laws of England, 3rd Edn., Vol. 29, page 83 paragraphs 174 and 204 Terrel and Shelley on Patents page 318.
11. T. A. Blanco White on Patents for Inventions paragraphs 12-107, 12-108 and submitted that in a case of infringement of patents special rules of pleading are observed inasmuch as the particulars of breach, the fact of the grant of certifi--cate of validity and an undertaking to file accounts should be specifically pleaded. In the absence of such pleading the plaintiffs have failed to make out a case for infringement of patent. There can be no dispute with the rules of pleading but all these considerations may be relevant while considering the merits of the case and validity of the patent.
12. In the present case for purposes of deciding the injunction application the validity of a patent shall be depen--dent upon prima facie evidence brought on record. Furthermore although the defendants have objected to the validity of the patents on ground that it was obtained by fraud, neither this plea can be investigated nor granted at this stage of the proceeding. For the limited purpose of the case it is sufficient that there exists a valid patent in respect of which the defendants No. 1 have entered into an agreement with the plaintiff as embodied in the consent decree. The suit in effect is not strictly for infringement of the patents but for restrain--ing the defendants from using the machine in breach of the consent decree. Mr. Iqbal Kazi, the learned counsel for the plaintiffs has restricted himself to the second patent which is admittedly still operative. This second patent according to him is in respect of machinery which is an improved form of the machinery registered under the earlier patent. Prima facie the validity of the patent, at present, cannot be challenged because under the terms of decree the defendant No. 1 has accepted the plaintiff No. 1 as the registered owner of the two patents and has obtained a licence and permission to use the machinery and manufacture the goods on payment of licence fee. The objection of the defendant No. 2 to the validity of the patent cannot be investigated while con-- sidering this application where one has to see the prima facie case without entering into its merits.
13. Mr. A. A. Zari the learned counsel for the defendants No. 2 has con--tended that by the present suit the plaintiffs are enforcing the consent decree passed in Suit No. 233/77 and therefore, the suit is barred under section 47 of C. P. C.
14. For the applicability of section 47, C. P. C. First it has to be seen whether the decree is executable.
15. The learned counsel for the plaintiffs has contended that looking into the prayer made in Suit No. 233/77 and the terms of the con--sent decree, clauses (4) and (6) of the decree are beyond the scope of the suit as no such prayer was made in the suit itself. On this basis he contends that the decree to that extent is not executable. Section 47, C. P. C. Contemplates that all questions arising between the parties to the suit, in which the decree was passed and relating to the execution, discharge or satisfaction of the decree shall be determined by the Court executing the decree and not by a separate suit. It is to be examined whether the decree passed in Suit No. 233/77 related to the subject-matter of the suit. Unfortunately, copy of the pleading in Suit No. 233/77 has not been filed and therefore, I have to restrict myself by looking into the decree produced before me. It seems that when the Suit No. 233/77 was filed the defendant No. 1 had raised objection to the validity of the patents granted to the plaintiffs.
16. 1t would be advantageous to refer to the following passage from the case of Charu Chandra v.
17. Sambunath ( AIR PAT. 507): "The Compromise was really an adjustment of the rights and differences in respect of all matters in dispute between them whether as framed in the plaint or set up by way of defence in the written statement, and that the compromise purported to be a final settlement and adjustment of these disputes on a fair and satisfactory basis acceptable to all."
18. By reading the decree passed in Suit No. 233/77 prima facie it seems that the plaintiff and defendant No. 1 under a package deal have settled their outstanding disputes by making adjustments. The decree therefore relates to the subject-matter of the suit. Consequently the contention of the learned counsel for the plaintiffs has no force.
19. The present dispute between the plaintiffs and defendant No. 1 arose after the decree was passed in Suit No. 233/77. The plaintiffs have complained that the defendants have committed breach of the terms of the decree. In these circumstances is the suit barred under section 47, C. P. C. (?) The applica--bility of section 47, C. P. C. Is not entirely dependent upon the fact that the suit relates to the execution, discharge or satisfaction of the decree. It further requires that the suit should be between the parties to the suit in which decree was passed or their representatives. In order to attract the provision of section 47, C. P. C. Twin conditions have to be satisfied viz. (1) the ~, dispute should be between the same parties or their representatives and (2) it should relate to the execution, discharge or satisfaction of the decree. Absence of any one of the conditions will exclude the applicability of section 47 C. P. C. This follows that if any suit is filed relating to discharge or satisfaction of the decree in which the relief has been sought against a person who was not a party to the earlier suit then it will not be hit by section 47, C. P. C. In the case of Badi Ahmed v. United Bank of India Ltd. (PLD SC 1959 313). It was held that in a dispute involving a person who is a stranger to the decree section 47, C. P. C. Will not be applicable. In the case of Abdul Rashsed and others v. Muhammad Hafeez and others (PLD 1963 Lahore 414) Anwarul Haq, J. (as he then was) made the following observation :- "Section 47 of the Civil Procedure Code lays down a procedure for the determination of all questions arising between the parties to the suit in which the decree was passed, or their representative." prima facie it seems that the defendant No. 1 and defendant No. 2 under an arrangement are manufacturing goods by the patented machine in the factory of defendant No. 2 where the three impugned workers are engaged. The dispute therefore is not restricted between the parties to the previous suit, but it has travelled beyond defendant No. 1 and the defendant No. 2 who are stranger to the decree, are necessary party to the suit. Obviously in these circumstances the provision of section 47, C. P. C. Cannot be invoked. However, if the plaintiffs' objection relating to the applicability of section 47, C. P. C. Is upheld which, I am not inclined to accept, it will not debar the plaintiffs from seeking relief because the suit can not be dismissed for that reason. Section 47, sub- clause (2) provides that "the Courts may subject to any objection as to limitation or jurisdiction, treat a proceeding under this section as a suit or a suit as a proceeding and may, if necessary, order payment of any additional court-fee". On the assumption that the defendant's objection is upheld, the fact remains that the Court has jurisdiction to treat a suit as an execution application and necessary orders can be passed. In PLD 1956 SC (Ind.) 220 it was held that a suit can be treated as an execution application. In these circumstances the objection raised by the defendants cannot deprive the plaintiffs from seeking relief against the defendants. The defendants have next contended that the relief claimed by the plaintiffs in the main suit is barred under sections 59(f ) and 21 of the Specific Relief Act and therefore no interim injunction as prayed should be granted to the plaintiffs. The defendants have contended that the grant of interim injunction should be regulated by section 56 of the Specific Relief Act and reliance has been placed on Shazada Muhammad Umar Baig v. Sultan Mahmood Khan and others (PLD 1979 SC 139This was a service matter where an Inspector, Excise and Taxation was served show-cause notice and reverted to his substantive post of Excise Sub-Inspector and in his place another person was appointed as an Inspector. He filed a declaratory suit and prayed for temporary injunction restraining the Govern--ment from reverting him during the pendency of the suit. The Senior Civil Judge granted the injunction but it was set aside by the 1st Appellate Court.
20. The High Court reversed the said order of the Additional District Judge and restored the order of the Civil Judge. The Supreme Court accepting the appeal reversed the order of the High Court and observed that the Additional District Judge had passed order in the light of well settled principles of the grant or refusal of the temporary injunctions viz. Whether plaintiffs have a prima facie case, whether the balance of convenience is in favour of grant of injunction and whether the plaintiff would suffer irreparable loss if the injunction is refused. In this context the following observation was made :- "1t is not correct to say as remarked by the learned Civil Judge in the High Court that the bar under section 56(d) of the Specific Relief Act was the main consideration which had weighed with the learned Additional District Judge to vacate the temporary injunction. The learned Single Judge in dealing with the bar under section 56(d) has relied on a decision of Kaikaus, J., as he then was, in the case of Ahmad Din and others v. Faiz A.I and others wherein it was held that if the jurisdiction to continue a temporary injunction is referable to inherent power, it cannot be taken away by section 56 of the Specific Relief Act. With all respect, even if it were to be accepted that section 56 does not list the inherent power of a Court to grant temporary ;injunction, it cannot be said that in the exercise of those inherent powers it will not be serious matter for the Court's consideration whether it would be right to issue an injunction to a public Department which would obviously disturb its working and it would not do so unless compelling reasons demand that course."
21. It therefore cannot be stated that the grant of temporary injunction is regulated by the provisions of sections 21 and 56 of the Specific Relief Act. However, the provisions of section 56 of the Specific Relief Act can provide a guideline to establish whether the plaintiffs have a prima facie case, whether irreparable loss will be caused to the plaintiffs and in whose favour the balance of convenience lies. The learned counsel for the plaintiffs has relied upon the case of Kazi Muhammad Akbar v. Province of Sind (PLD 1952 Sind 32wherein it was held as follows :- '
22. "We may, however, mention that we are not in agreement with the view that no interim injunction could be granted against defendant 1, merely because the perpetual injunction, played for as one of the reliefs, could not be ordered at the end of the suit against defendant 1. It appears to us to be clear that the consideration upon which a Court may grant or refuse to grant an interim injunction, pending the disposal of the suit, may be, and often must be, entirely different from the considera-- tions upon which a Court may grant or refuse to grant a perpetual injunction at the end of the suit.
23. As is clearly laid down in section 53 . Of the Specific Relief Act, temporary injunctions are regulated by the Code of Civil Procedure."
24. There is however, another aspect of the case which may exclude the applica--bility of section 56 (f ) of the Specific Relief Act. The learned counsel for the plaintiffs has contended that the consent decree which is a contract between the parties contains affirmative covenants to do certain acts coupled with negative covenants not to do certain acts, and as the defendant No. 1 have failed to perform the negative covenant, the plaintiffs are entitled to enforce it notwithstanding the provision of section 56, sub-clause (f ) of the Specific Relief Act. This has obvious reference to section 57 of the Specific Relief Act, which has been termed as an exception to section 56 of the Specific Relief Act. Learned counsel for the defendants has contended that before pressing the provisions of section 57 into service the plaintiffs should establish that the positive covenants have been performed by them. The defendants have not shown which of the positive covenants of the consent decree have not been complied by the plaintiffs.
25. The plaintiffs' claim is that defendants have enticed away their three workers who have been employed with the defendants. The defendants have offered an explanation which prima facie does not seem bona fide. The defendant No. 1 have used indirect method of employing the three workers The explanation offered by them lacks in met,. ;al particulars and is too vague to be prima facie established. Although it has been denied that those three persons are not workers of the plaintiffs, it has not been denied that they are not working in the Factory of defendant No. 2 on the machine of defendant No. 1 and producing the goods. The plaintiffs have thus prima facie established that the defendants have employed those three workers and are producing goods from the machine in breach of the terms under which defendant No. 1 were alleged to use the machine.
26. "If there is a negative covenant, the Court has, as a general rule, no discretion to exercise. If parties for valuable consideration, with their eyes open, contract that a particular thing shall not be done.
27. All that a Court of equity has to do is to say by way of injunction that the thing shall not be done. In such a case the injunction does nothing more than give the sanction of the process of the Court to that which already is the contract between the parties. It is not then a question of the balance of convenience or inconvenience or of the amount of damage or injury : it is the specific personance by the Court of that negative bargain which the parties have made with their eyes open between themselves unless the covenantee has, by his conduct or omissions, put himself in such an altered relation in the covenantor as to make it manifestly unjust for him to ask the Court to enforce the covenant by injunction, or the covenantee has suffered no damage by the breech of covenant and is offered an undertaking that will prevent any future damage by the continuing breach, and the granting of an injunction would inflict damage on the covenantor out of all proportion to the relief given to the covenantee."
28. The plaintiffs have contended that in breach of the terms of decree the defendant No. I without the prior permission of the plaintiffs in writing have shifted the machine on the furnace and premises of the defendant No. 2, The defendants have stated that on 14-12-1980 the defendant No. 1, informed the plaintiff No. 1 that they intended to shift the machinery to the furnace of defendant No. 2 and accordingly it was shifted on 22-12-1980 which went in production on 23/24-12-1980. The defendant No. 1 have produced an invoice of defendant No. 2 dated 24-12-1.980 showing production of 1.480 pieces of glass shell vacuum refills. The defendants have further contended that as on intimation the plaintiffs had no option to refuse the permission, the provision was substantially complied by the defendants. The plaintiffs admit the receipt of notice an 19-121980 and have denied the allegations. It has been stated that the machine was shifted before writing the letter as it is not possible to produce goods in less than seven days from the date of shifting the machinery. This is however, a disputed question of fact but it is evident that the plaintiff No. 1 did not issue his consent in writing or other--wise. In the normal circumstances it may not have been possible to with--hold the consent but once serious disputes have arisen whereby the defendants were being charged of violation of the terms of decree, it was possible that before giving consent in writing the plaintiffs would have demanded from the defendant No. 1 not to continue with the breach of agreement.
29. Considering the facts of the above case as set-out and applying the principles governing the infringement of patents and agreement containing negative cove--nants it is established that the defendants prima facie committed breach of the terms of agreement which the defendant No. I had undertaken not to do. I may clarify that these observations have been made merely on the basis of the documents placed on record and cannot be considered as a finding on the merits of the case as it has yet to be decided after the parties have led their evidence. In an action for infringement of patent the principles for grant of interim injunction has been laid down in Halsbury's Laws of England, Volume 29, para. 215, page 105 in the following manner :- "Infringement may be restrained by an interlocutory injunction (m) upon the plaintiff establishing a prima facie case of infringement (o), and upon evidence of validity (p). The Court will not try the question of validity on an interlocutory application, but will presume validity if the patent has been established in another section (q): " The Patent No. 1.16166 is admittedly valid up to 22-10-81 which has been established in the previous action between the plaintiffs and defendant No. I subject to any renewal that may be granted to the plaintiffs. As discussed above the plaintiffs have prima facie established breach committed by the defendants. In the circumstances, I will restrain the defendants, their contractors, employees from using the -machine for manufacture of inner vessel o the double walled vacuum flask which infringe the plaintiff Patent No. 116166. The defendants are further directed to file a statement showing the details o;1 the goods produced from 24-12-1980 to this date. This order shall remain operative till 27-4-1981. If tha plaintiffs are able to obtain renewal of their patent they will be at liberty to file fresh application after 27-4-1981. I further order the defendants to file their written statement on or before 7-2-1981 and thereafter the matter may be fixed in Court for settlement of issues. The suit should be disposed of within 3 months.