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.'
4. Apparently no steps were taken by Mr. Martin against Calco Engineering Works. On the 28th of July 1960 Messrs, DePenning and DePenning wrote a letter to Upendra Nath Dass and Sons, the plaintiffs herein, in exactly the same terms in which they wrote to Calco Engineering Works on the 2nd of March, 1960. Messrs. L. S. Davar and Co. took up the cause of the addressee and on the 25th of July 1960 they sent a reply in terms identical with their reply of the 22nd of March 1960 mentioned above. Even after this the defendant herein has taken no steps to follow up the threats mentioned in the letters of the 2nd of March 1960 Or the 18th of July 1960.
5. The plaintiff Upendra Nath Dass and Sons filed this suit on the 16th of August, 1060, claiming an injunction restraining the defendant, his servants and agents from continuing threats of legal proceedings of the description mentioned in the letter; dated 18th of July, 1960, According to the plaint, the plaintiffs have been carrying on business in the town of Calcutta and other States of India in tea garden machinery parts for about fifty years. Reference is made to the claim of the defendant to be the grantee and registered proprietor of Indian Patent No. 63186 for the manufacture of crushing machines used in the manufacture of tea and to the letters of 18th July and the 25th July 1960. In paragraph 3 of the plaint it is stated that the alleged patent of the defendant is invalid and not enforceable at law. The grounds on which the said statement is made are given at the foot of the said paragraph. In paragraph 4 of the plaint, the plaintiffs state that they have been selling crushing machines of the type for which monopoly is wrongly claimed by the defendant by virtue of the said patent on an extensive scale and that the plaintiffs have suffered damages because of the threats contained in the said letter of 18th of July, 1960. According to paragraph 5 of the plaint, the threats of legal proceedings are groundless and the plaintiffs deny that the defendant has any valid rights whatsoever to compel the plaintiffs to desist from selling crushing machines for manufacture of tea. The plaintiffs also refer to the fact that no suit for infringement of the alleged patent No. 63186 has been filed by the defendant nor any ether legal proceedings started by him.
6. Section 36 of the Act shows that in order to succeed in a suit envisaged thereby the plaintiff must allege and prove :
1. that the defendant has, threatened him or others with any legal proceedings or liability in respect of any alleged infringement of his patent;
2. that the defendant (sic) is aggrieved by such threats;
3. that the alleged infringement is not an infringement of any patent;
4. that no suit for infringement of patent has been filed by the defendant.
In this case, it is admitted that no such suit for infringement of patent has yet been instituted.
7. From the affidavit in opposition it appears that Messrs. DePenning and Depenning acting in the interest of the defendant caused a 'caution, notice' to be inserted in the Assam Tribune and the Statesman on the 20th of March, 1960, and the 21st of March, 1960, to the effect that the defendant's patent No. 63186 was being infringed by various persons and that the defendant intended to take steps for protection of his rights.
8. Mr. De, appearing for the defendant, contended that, in order to succeed in this application the applicant must show :
1. that there has been more than one threat;
2. that the threat is a real threat; arid
3. that there has been no infringement of
the patent by the person instituting a suit under this section.
9. So far as the first point is concerned, I am not impressed by Mr. De's argument that there must be more than one threat. I do not read the section in that light, although an action under sec. 36 is generally described as a 'threats action'. In this case, there certainly has been more than one threat. Even if the threat to Calco Engineering Works be disregarded, there was certainly a caution notice in the issue of the Statesman and a threat directly held out to the plaintiff by the letter of the 18th of July, 1960.
10. So far as the second point is concerned, Mr. De cited the Judgment of Farwell, J. in the case of Earles Utilities Ltd, v. Harrison reported in (1935) 52 R. P. C. 77. In that case, the solicitor acting for one of the parties wrote a letter to the plaintiffs, Earles Utilities Ltd., of which the relevant paragraph is as follows :
'I understand you are manufacturing a certain kettle which is an infringement of patent No. 165299 vested in a client of mine. Unless I receive forthwith your assurance that you will at once cease manufacturing such kettles I shall have no alternative but to advise my client to apply for an injunction.'
Farwell, J. held that this was not holding out a threat, because the client might not act on the advise of the solicitor. Mr. De contended that the letter of the 18th of July, 1960, did not show what kind of legal proceedings the defendant herein wanted to take or what kind of such proceedings Messrs. DePenning and DePenning would advise him to take. I do not think that the letter of Messrs. DePenning and DePenning can be read in the same light as the letter in (1935) 52 R. P. C. 77 case. Here the agents clearly say that unless the requirements mentioned were complied with within 15 days, legal proceedings for the protection, of the cliemfs interest would be taken. The use of the expression 'as he may be advised', to my mind, makes no difference. It only means that the solicitor was not defining a particular proceeding which his client might take, but that his client, if he had the right, might take all or any kind of proceedings available to him.
11. I do not however find that the third point of Mr. De can be brushed aside lightly A plaintiff who comes to Court to have an injunction restraining the defendant holding a patent, must state that he has not infringed the said patent in order to give him the right of action. Whether he has infringed the patent or not would be a matter which would have to be adjudicated upon in due course, but there must at least be a clear statement to that effect. In this case, Mr. Mukherjee drew my attention to the last paragraph of the letter of the 25th of July and contended that this could only mean that the plaintiff herein had not infringed the defendant's patent. But unfortunately the tenor of the letter does not show that. Messrs. L.S. Davar and Co. were more concerned with denying the validity of the patent of the defendant than making out a case that there had been no infringement of the patent. Mr. Mukherjee argued that if a person stated that he was selling machines of thekind covered by an invalid patent it amounted to his denying the infringement of the patent. I find myself unable to do (sic. hold?) that the two really mean the same thing. Under the Patents Act, especially under Section 26; various rights have been given to a person who wants to complain of the invalidity of a patent. But so long as no steps are taken to have it revoked, the patent, on the face of it, is good and, under Section 12 of the Act, confers on the Patentee the exclusive privilege of making, Selling and using the invention throughout India and of authorising others to do so. In my opinion, it is not enough, to say that the patent obtained by a person is not a Valid one for the purpose, of filing a suit under Section 36 of the Indian Patent and Designs Act There must be an unequivocal reply to the threat that there has been no infringement of any patent and the plaint must contain a similar averment. In that view of the matter, I do hot feel myself justified in making an order for injunction as asked for by the plaintiff. There will therefore be no order on the application, Costs will bo costs in the cause.