On August 08, 2016, the Madras High Court ruled in favour
of the Defendant, Hindustan Unilever Ltd. by rejecting the plea
made by the Plaintiff, M/s Cavinkare Pvt. Ltd. for permanent
injunction against the Defendant for the infringement of their
patent. In the present matter, the Madras High Court observed that
there would be no use of applying Section 105 of the Patents Act,
1970 as no rights can be claimed on a patent whose duration has
The suit was filed by M/s Cavinkare Pvt. Ltd., against Hindustan
Unilever Ltd., wherein the Plaintiff pleaded that a permanent
injunction be granted restraining the Defendant and their exclusive
licensees from in any manner interfering with the plaintiff's
legitimate right to make, use or sell the cosmetic composition for
lightening skin comprising niacinamide, sunscreen and silicone
compounds in India. The Defendants, meanwhile, prayed in their
Written Statement that the Hon'ble Court declare that the
making, use or sale of the cosmetic composition for lightening skin
comprising niacinamide, sunscreen and silicone compounds as
disclosed by the plaintiff would not constitute infringement of any
of the claims of the Patent No.169917, which had expired in
The Defendant, Hindustan Unilever Ltd. had earlier instituted a
suit against the Plaintiff, but the matter was subsequently settled
on July 18, 2000. HUL filed a counter affidavit in this case
stating that the patent in question had expired on March 21, 2009
after a period of 20 years, therefore, the injunction that is
sought after by the Plaintiff is ill founded, as no person, under
the facts and circumstances of this suit, can claim rights from an
expired patent and enforce these rights against any other person.
The Defendant further stated in their counter affidavit that it is
not legally tenable for any party to provide a declaration of
non-infringement with regards to an expired patent.
The Advocate appearing on behalf of the Defendant claimed that
in view of the submissions made in the counter affidavit, the suit
is liable to be dismissed as there exists no cause that arose in
favour of the Plaintiff and against the Defendant to file the said
suit in the first place.
Thereafter, the Hon'ble Court observed that Section 105 of
the Patents Act, 1970, which deals with the power of the Court to
make a declaration as to non-infringement, would not be applicable
to the case on hand since the Patent has expired.
The Hon'ble Court passed a decree stating that a declaration
be passed stating that the subject matter of the Patent in question
would no longer come under the purview of the Patents Act, 1970 and
therefore, would result in the same subject matter entering the
public domain and becoming free to use for every person. In view of
this declaration, the prayer sought for permanent injunction by the
Plaintiff against the Defendant would no longer survive, and
therefore is rejected.
This case exhibits a perfect example of how any person looking
to institute a suit against any person should be aware of their
rights before taking any action. The latin Maxim
"ubi jus ibi remedium"
contemplates that any person whose right is being infringed has a
right to enforce the infringed right through any action before a
court. The same would therefore mean that any person who does not
possess any right to take any action against any other person in a
Court of Law, he or she shall not be given any remedy with respect
to the same.
It has been a long time since M. Prabhakara Rao, the chairman of Nuziveedu Seeds, was trying to knock down the world's largest seed company "Monsanto Co", in a high-profile conflict over licensing and royalty...
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Traditional Knowledge (TK) is a living body of knowledge that is developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.
India’s obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).