1. ' This application under section 31 of the Patent and Designs Act 1911, read with Order XXXIX, rules 1 and 2 and section 151, C.P.C. is filed by the plaintiff for a temporary injunction till the decision of the suit to restrain the defendant from importing, marketing, selling or offering for sale the Circuit Braker imported by them from a foreign supplier M/s. Weber Emmenbrucks. (I will herewith refer the Patents and Design Act II of 1911 as "the Act" only for the sake of convenience).
2. ' It is alleged that the plaintiffs are the proprietor of Patent No. 126953 which protected the plaintiff's invention namely Miniature Circuit Braker combined with three Pins Power Plugs. That the circuit braker imported and sold by defendant is reproduction of the product of plaintiff and as such it amounts to infringement of the patent granted in favour of plaintiff. The application for grant of temporary injunction is opposed by the defendant on various grounds including the grounds that the action brought by the plaintiff is highly belated and in any case the alleged invention of the plaintiff was subjected to previous publication before a patent in respect thereof was applied for and granted under the Act. I have not mentioned here the other grounds urged by the defendant and which in fact were the grounds for revocation of patent under section 26 of the Act in opposition to the grant of temporary injunction as in my opinion the present application can be disposed of on the above two grounds alone. The learned counsel for the plaintiff in reply to the objections of defendant has contended that these are in fact the grounds for revocation of the patent under section 26 of the Act and, therefore, in the absence of a counter-claim in the suit these objection cannot be considered by the Court. I will, therefore, here first deal with the point raised by the learned counsel for the plaintiff regarding competency of the Court to look .into the objections of defendant in the absence of a counter-claim in the suit. The contention of the learned counsel for the plaintiff is based on interpretation of section 29 of the Act which read as follow:- "29(1) A Patentee may institute a suit in a District Court having juris diction to try the suit against any person who, during the continuance of a patent acquired by him under this Act in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it: Provided that where counter-claim for revocation of the patent is made by the defendant, the suit, alongwith the counter-claim, shall be transferred to the High Court for decision.
(2) Every ground on which a patent may be revoked under (section 26) shall be available by way of defence to a suit for infringe ment."
3. 'From reading of the above section it is quite clear that every ground on which a patent could be revoked under section 26 is available by way of defence to a defendant in a suit for infringement filed under section 29 of the Act. The learned counsel for the plaintiff, however, contends that subsection 2 of section 29 ibid is attracted only when a counter-claim as mentioned in the proviso to subsection 1 is made by the defendant in the pending suit. The proviso to subsection (1) of section 29 of the Act relied by the learned counsel was added subsequently by Act 12 of 1939. The purpose underlying incorrporation of this proviso to section 29(1) ibid, to my mind, appears to be, to do away with the necessity of filing separate revocation proceedings under section 26 of the Act by the defendant in a suit. Now a defendant, in an infringement action, need not file separate proceeding for revocation of the patent and if he so chooses, file a counter-claim in that suit for revocation of patent which is to be tried by this Court alongwith the suit. This, however, does not mean that if the defendant does not file any counter-claim in the infringement suit filed against him, he will not be permitted to urge the grounds mentioned in section 26 of the Act by way of defence in the suit. Subsection (2) of section 29 of the Act is quite independent of the proviso and there is nothing in the language of the proviso which could support the contention of learned counsel for the plaintiff that the proviso controls subsection 2 of section 29 ibid. it cannot be overlooked that a petition for revocation of patent can be presented either by the Advocate- General or any person authorised by him, or by a person who alleges that the patent was obtained in fraud of his right or of the right of any person under or through whom he claims, or that he or any person under or through whom he claims was the true and first in entor of any invention included in the claim of the patentee, or that he or any person under or through whom he claim an interest in any trade, business or manufacture, publically manufactured, used or sold within Pakistan before the date of patent anything claimed by the patentee as his invention. It is, therefore, clear that the petition for revocation of patent under section 26 of the Act can be presented only a persons who falls in any one of the categories specified in subsection (2) of section 26 of the Act.
4. Therefore, if the contention of the learned counsel for the plaintiff is accepted, then a defendant in an infringement suit, who does not come in the category of persons specified insubsection 2 of section 26 of the Act can neither present a petition for revocation of petition nor he can plead the grounds mentioned in section 26 by way of defence in the suit. Such an intention could not be a attributed to the legislature for incorporating the proviso to subsection (1) of section 29 of the Act. I, therefore, hold that the defendant is entitled to urge all the grounds mentioned in section 26 of the Act by way of defence in the suit without preferring a counter-claim in the suit.
5. ' In so far, merits of application for grant of temporary injunction is concerned, the learned counsel for the defendant relied on the counter-affidavit of defendant and some other traders who deal in the above item, to show that much prior to the date of grant of patent in favour of plaintiff, the miniature circuit brakers with three pin power plug were sold by the plaintiff in open market. This contention of defendant is prima facie supported by the affidavits of Abdul Majid son of Haji Ahmad of Noor Electric Company, Karachi, Abdul Razak son of Haji Abdul Shami of M/s. Ghani Sons International, Karachi, and Tayab Umer son of Umer of Tariq Electric Company, Karachi, who stated that they purchased Miniature Circuit Brakers produced by plaintiff through their agent Eximpagencies Ltd., during the year 1975 and 1976 and produced bills in support thereof. The defendant's partner in his counter-affidavit also specifically stated that in 1975-76 the above articles were sold by the plaintiff through their agent Eximpagencies Ltd. to various traders in Karachi. Apart from it, the defendant also relied and produced advertisements published by the plaintiff in Economic Review, dated 10-10-1978, 'Dawn' (English) 14-10-1978 'Jang', dated 20-9-1978, Dawn (English), dated 17-11-1978 in respect of their Miniature Circuit Brakers with its photograph which are not denied by the plaintiff. Therefore, prima facie, it appears that before the grant of patent in their favour, the plaintiff not only advertised but also sold their product in open market.
6. Apart from it, according to plaintiff's own case they came to know about the sale of Miniature Circuit Braker with three power plug by the defendant in or about July, 1980 while the present suit was filed in this Court on 21-11-1983. No doubt an attempt was made by the learned counsel for the plaintiff to explain this delay but in view of the fact that for all these years the defendant continue to import and sell the product in open market unabetted, this fact alone is sufficient to disentitle the plaintiff to claim relief by way of temporary injunction. I, therefore, reject the application of plaintiff for grant temporary injunction in the suit but in order to safeguard the interest of parties direct the defendant to submit quarterly statement of import and sale of the product by them with Nazir of Court until disposal of the suit. The first statement for the quarter ending on 31-3-1984 will be filed on or before 15-4-1984 and thereafter for every subsequent quarter the statement will be filed within 15 days of the completion of quarterly period. The application is accordingly disposed off. f.