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July 8, 2019

Defendant’s application seeking stay of proceedings in suit in view of pending revocation proceedings before IPAB dismissed

In Unilin Beheer B.V. Vs. Balaji Action Buildwell [CS (Comm.) 1683/2016], the Delhi High Court vide its judgment dated January 29, 2018, dismissed the defendant’s application for stay of proceedings in suit for patent infringement and held that, IPAB and the Civil Court have concurrent jurisdiction to deal with the issue of validity of patent and there could be no ipso facto stay of the proceedings in the patent infringement suit under Section 113 of the Patents Act, 1970, on account of the pending revocation proceedings before IPAB.

In the instant case, the Plaintiff (Unilin Beheer B.V) had initiated a suit for infringement of its proprietary floor covering (consisting of hard floor panels) against the defendant. The defendant sought to stay the proceedings of this suit, contending that prior to institution of this suit, the Defendant had approached the Intellectual Property Appellate Board (IPAB), where its application for revocation of the Plaintiff’s patent on the grounds of lapse of registration, is still pending.

The Court held that ‘…the proceedings in this suit are not to be stalled…The Patents Act, vide Section 64… has vested the jurisdiction to revoke the patent in the IPAB as well as in a Counter-Claim in a civil suit for infringement of the patentSection 107 of the Patents Act confers concurrent jurisdiction in the IPAB and the Civil Court to grant the relief of revocation.’

While dismissing the Defendant’s application, it concluded that ‘there is no difference between taking a defence of invalidity on the same grounds on which revocation can be sought and making Counter-Claim for revocation but it is deemed appropriate to grant liberty to the defendant therefor. The defendant is thus permitted to withdraw the revocation proceedings pending before IPAB and to file a Counter-Claim in this suit.

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