Calcutta High Court (Appellete Side)
Pan Seeds Pvt. Ltd vs Ramnagar Seeds Farm Pvt. Ltd. And ... on 9 June, 2023
IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
Appellate Side
Present :- Hon'ble Mr. Justice I. P. Mukerji
Hon'ble Mr. Justice Biswaroop Chowdhury
F.M.A.T 11 of 2023
CAN 1 of 2023
Pan Seeds Pvt. Ltd.
Vs.
Ramnagar Seeds Farm Pvt. Ltd. and Ors.
For the appellant :- Mr. Ranjan Bachawat, Sr. Adv.,
Mr. Debnath Ghosh,
Mr. Tin Kari Jana,
Mr. Gautam Kumar Ray,
Mr. Gopal Das,
Mr. Sourav Jana,
Mr. Biswaroop Mukherjee, Advs.
For the respondents :- Mr. Jishnu Saha, Sr. Adv.,
Mr. Shuvasish Sengupta,
Mr. Shushovit Dutt Majumdar,
Ms. Pubali Singh Chowdhury,
Ms. Ratnadipa Sarkar,
Mr. Bhavesh Garodia, Advs.
Judgment on :- 09.06.2023.
I. P. Mukerji, J.:-
As all the relevant papers are before us, we propose to dispose of the appeal
and the stay application by this common judgment and order, dispensing
with all formalities.
The Protection of Plant Varieties and Farmers' Rights Act, 2001 (PPVFR Act)
is a relatively new Act. Sections 2 to 13, 95, 96 and 97 came into force on
11th November, 2005 whereas Sections 1 and 14 to 94 came into force on
19th October, 2006. The preamble to the Act explains its purpose, inter alia,
to protect "plant varieties, the rights of farmers and plant breeders and
encourage development of new varieties of plants." Implementation of the
Act would also inter alia, result in high quality seeds and "planting
materials to the farmers".
This Act recognizes grant of a kind of ownership rights or patent to
producers of unique and distinctive varieties of plants and seeds from
which they germinate. The producer or breeder as he is described in this
Act of this new variety has the exclusive right to produce and deal with it,
without interference from any rival. Obviously, to identify the unique
product, a name has to be given to it. In our case, the variety involved is
PAN 804. The breeder who enjoys the registration generally also obtains
registration of a trade mark. The use of the trademark is very secondary.
What is of utmost importance is registration of the variety under the PPVFR
Act. This is for the reason that suppose the respondents use the same
mark PAN 804 but the variety contained in the packet bearing the mark is
dissimilar to the product of the appellant and is otherwise unique and
distinctive, the respondents would be allowed to produce and deal with the
product, irrespective of whether they are allowed to use the mark.
Conversely, even if the marks of the varieties are dissimilar but the
products are similar of which the appellant has registration, the
respondent would not be allowed to market it, with or without the mark.
Section 14 of the said Act, inter alia, provides for an application to be made
to the Registrar for registration of any variety of genera or species as
specified under sub-section 2 of Section 29. Sub-section 2 of Section 29
authorizes the Central Government by notification in the Official Gazette to
specify the genera or species for the purpose of registration of varieties
other than extant varieties and farmers' varieties under the Act. Section 14
also conceives of an application before the Registrar for registration of
extant and farmers' varieties.
Under Section 2(c) "breeder" has been defined as one which has bred,
evolved or developed any variety.
In Section 2(r) "propagating material" is defined as:
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2 (r) "Propagating material" means any plant or its component or part
thereof including an intended seed or seed which is capable of, or
suitable for, regeneration into a plant.
'Variety' is defined in Section 2(za) of the said Act in the following manner:-
"(za) "variety" means a plant grouping except micro organism within a
single botanical taxon of the lowest known rank, which can be--
(i) defined by the expression of the characteristics resulting from a
given genotype of that plant grouping;
(ii) distinguished from any other plant grouping by expression of at
least one of the said characteristics; and
(iii) considered as a unit with regard to its suitability for being
propagated, which remains unchanged after such propagation,
and includes propagating material of such variety, extant variety, transgenic
variety, farmers' variety and essentially derived variety."
Section 17 lays down that every application should assign a single and
distinct denomination to the variety of which registration is sought.
Section 18 provides that every such application for registration under
Section 14 shall be inter alia with respect to a variety accompanied by such
information, documents, statements, declarations as are provided in that
section.
Under Section 19 along with the application for registration, the applicant
has to make available to the Registrar such quantity of seeds of a variety of
which registration is sought to conduct tests "to evaluate whether seeds of
such variety along with parental material" conform to the standards as may
be prescribed by regulations.
Section 21 provides for advertisement of the application by the Registrar.
The procedure for registration of essentially derived variety is provided in
Section 23 which is more or less the same as for registration of varieties
under Sections 14 to 22.
When an application for registration is not opposed or an opposition is filed
and rejected, a variety other than an essentially derived variety would be
3
registered under Section 23. The certificate of registration under Section 24
for a variety other than essentially derived variety and the one under
Section 23 relating to essentially derived variety would be valid for nine
years for trees and vines and six years in case of other crops and subject to
renewal for a maximum period of 18 years for trees and vines from the date
of registration of the variety and 15 years in other cases.
Under Section 28 the effect of registration is to confer an exclusive right on
the breeder or his licensee to produce, sell, market, distribute, import or
export the variety.
Now, under Section 3(1), the Central government has the power to establish
an authority known as the protection of plants and farmers' varieties
authority. It appears that under Section 34 and 36, both this authority and
the Registrar have concurrent powers to decide whether a registration has
been validly obtained. The authority has the power of withdrawing the
protection the breeder enjoys out of registration.
Section 89 provides that the civil court would not have any jurisdiction over
any matter which the Registrar has the power to determine.
Sections 64, 65 and 66 under Chapter X of the said Act defines
'infringement', prescribes the court in which such suit is to be filed and the
reliefs including injunction, damages or share of profits which the court can
grant.
FACTS
Now, I turn to the facts.
On 23rd August, 2010 the appellant made an application for registration of
the seed of the plant variety PAN 804 before the Registrar under the PPVFR
Act. They claim that the variety is genetically related to the RASI variety
whose stigma is purple. The distinguishable feature of their variety is the
white stigma.
This variety was tested by the Registrar under Section 19 and the
Protection of Plant Varieties and Farmers' Rights Regulations, 2006 and the
Protection of Plant Varieties and Farmers Rights (Criteria for
Distinctiveness, Uniformity and Stability for Registration) Regulations,
2009 to check its "distinctiveness, uniformity and stability (DUS)". DUS
testing is a way of determining whether a newly bred variety differs from
existing varieties in the same species and whether those differing in
characteristics, are well-known over two successive growing seasons.
Thereafter, the appellant's application was advertised on 19th September,
2017 by the registry under Section 21 inviting opposition. No opposition
was filed by anybody. After considering the application, the Registrar
issued a registration certificate to them on 28th March, 2018. Initially, the
registration was valid for 6 years till 28th March, 2023. It was renewable
after expiry of that period in accordance with the provisions of the PPVFR
Act. Earlier, on 2nd March, 2009 the appellant obtained registration of its
trademark 'JAMUN'. They also obtained registration of the mark 'PAN 804,
JAMUN' on 12th August, 2016, both under the Trade Marks Act, 1999.
The appellant says that the respondents are using, selling and producing a
variety of seeds under the name JAMUN and DURONTO which is identical
to theirs. The identity lies in the colour of the stigma, which is white in both
cases. The respondents are thus guilty of infringement of the exclusive right
of the appellant, acquired by them on registration of their variety.
On the above cause of action the appellant petitioner filed a suit in the
Court of the learned District Judge, Purba Bardhaman, claiming the
following reliefs:-
a) A decree of perpetual injunction restraining the Defendants, their
men, servants, agents, assigns, and/or dealers and distributors,
and/or anyone claiming through them, from manufacturing, selling
and marketing, exporting, importing and/or otherwise dealing with
seeds having same specifications or under any other variety which is
identical or deceptively similar to the registration obtained by the
Plaintiff in relation to the variety "PAN 804" or any identical or
deceptively similar variety, in any manner whatsoever;
b) A Decree of perpetual injunction restraining the Defendants, their
men, servants, agents, assigns, and/or dealers and distributors,
and/or anyone claiming through them, from infringing the Plaintiff's
right, title and interest in relation to the variety "PAN 804", a new
plant variety registered under the Protection of Plant Varieties and
Farmers' Right Act, 2001, and from manufacturing, selling and
marketing, exporting, importing and/or otherwise dealing with seeds
having similar specifications or under any other variety which is
identical or deceptively similar to the registration obtained by the
Plaintiff in relation to the variety "PAN 804" or any identical or
deceptively similar variety, in any manner whatsoever;
c) To enquire into the loss and damage suffered by the Plaintiff for the
act and conduct of the Defendants and a decree for such sum be
made in favour of the Plaintiff upon such enquiry being made.
d) Receiver;
e) Injunction;
f) Attachment;
g) Costs;
h) Such further or other order or orders, direction or directions."
In aid of the suit an interim application was also moved before the court.
On 21st September, 2022 an ex parte ad interim order of injunction was
passed by that court restraining the respondents from infringing the
appellant's right, title and interest in relation to the plant variety PAN 804.
From time to time this interim order was extended till 6th December, 2022.
The respondents were aggrieved by this order. They moved us. On 21st
November, 2022 we made an order directing the learned court below to hear
out the interim application afresh from the motion stage.
In that court, the respondents had filed an application under Order 7 Rule
11 of the Civil Procedure Code for dismissal of the suit.
The learned court below proceeded to hear out this application before the
injunction application. The appellant says that the learned judge ought not
to have done so as this court had only directed it to consider the injunction
application. However, the said application was dismissed.
Another grievance of the appellant is that although the learned judge was
asked to hear out the injunction application at the motion stage he allowed
the respondents to file an affidavit of about 1,500 pages to counter their
case. This affidavit was taken into account by the court without giving an
opportunity to the appellant to file a rejoinder to it.
By its order dated 6th December, 2022, the learned court below dismissed
the interim application of the appellant. The learned judge expressed the
views or made the findings enumerated below:-
a) Prima facie, the court could go into the distinctiveness and
distinguishing characteristics of the product in respect of which exclusive
rights were claimed under the PPVFR Act. The appellant had the obligation
of establishing these features before the court, prima facie.
b) Borrowing on the practice of the courts to compare marks, works,
designs in intellectual property matters, the court could embark on the
same exercise in matters under the PPVFR Act.
c) The appellant had sought an injunction restraining the respondents
from producing, marketing or distributing or otherwise dealing with the
seeds of PAN 804 variety. Going by the documents annexed to the
amendment application submitted by the appellant on 1st April, 2013
before the Registrar including answers to a technical questionnaire
attached to it, particularly Clause 10 of it containing the statement of
distinctiveness of the variety, no uniqueness or distinctiveness was claimed
in the seeds.
d) The certificate of registration did not indicate any distinguishing and
destructive characteristics of the appellant's variety.
e) The appellant was unable to make out a prima facie case. The balance
of convenience was in favour of refusal of the order of injunction prayed for
by them.
The main point taken by Mr. Ranjan Bachawat, learned senior counsel for
the appellant is that under Section 89 of the PPVFR Act the civil court had
no authority to decide the validity of the registration, finally or even prima
facie which power, vested in the authority or the Registrar specified in the
Act. The court erroneously went into that question prima facie.
The appellant also contends that as long as the registration remains with
the appellant in the records of the authority, they have the exclusive right
to produce, sell and otherwise deal with the plant variety. If anyone has
objection to the validity of the registration, he has to apply to the Registrar
or the authority under Sections 34 and 36 of the PPVFR Act for rectification
of the register or expunging the entry from it or for cancellation of the
certificate of registration. Only this authority had the power to do so. As
long as the registration remained, the appellant was entitled to exclusive
use of the variety.
The appellant also contends that an application has been filed by Seed
Association of Bengal for revocation of the appellant's registration before the
Registrar or authority. The association said relying on a DUS report of
Gubba Biotech Laboratory that the appellant and the respondents' plant
varieties were identical. For this similarity, the appellants were not entitled
to any relief, for lack of distinctiveness of their variety.
Furthermore, the appellant say that their application for registration under
the PPVFR Act was widely advised by the authorities inviting opposition.
The respondents had not filed any opposition to it nor contested the grant
of registration in favour of the appellant. The Registrar in the absence of
any opposition but considering the merits of the case established after
detailed testing was of the opinion that the appellant's variety was entitled
to registration. Hence, the Registrar granted registration to the appellant.
The appellant says that in May, 2020 they discovered that the respondent
No.2 had been distributing and selling seeds identical to the appellant's
plant variety PAN 804 under the name JAMUN, having a white stigma. In
May, 2022 the said respondents were selling the same goods under the
name of "DURONTO".
The appellant has founded their case on infringement and passing off.
Mr. Bachawat submits that the endeavour of the learned court below to
embark on an adjudication into the validity of the registration and the
prima facie case of the appellant for exclusive use of the variety rendered
the exercise wholly erroneous, in excess of its jurisdiction and perverse.
Since registration of the appellant's mark is still undisturbed and its
validity not interfered with by any competent authority, the appellant is
entitled to an order of injunction restraining the respondents from dealing
with the subject variety.
Mr. Jishnu Saha, learned senior counsel, appearing for the respondents
makes the following submissions:-
The learned judge of the court below did consider the application of the
appellant prima facie at the motion stage. Even at the motion stage a
respondent is entitled to produce documents and rely on them for the
purpose of resisting an interim order. These documents, which the
respondents wanted to rely upon were embodied in an affidavit which was
served on the appellant on 30th November, 2022 and subsequently used
before the learned judge. Mr. Saha submits that the impugned order was
made at the motion stage after considering those documents which the
appellant had the opportunity of perusing and dealing with, in their
argument.
The registration document does not describe the variety and is not
indicative of its distinctiveness or characteristics.
If one compares the variety of the appellant with that of the respondents,
the only distinctive characteristic of the appellant's variety as claimed by
them is that its spikelet or stigma is white. If one peruses the DUS reports
obtained by the respondents, this distinctive feature is absent. (Item No. 27,
page 1107, also pages 406, 407 and 411). The stigmas of both are white.
On 9th May, 2016 the Registrar General of the Protection of Plant Varieties
and Farmers' Rights Authority wrote to the appellant stating that as per the
DUS report, the only distinct essential character of the appellant's variety
appeared to be the white colour of the stigma. In the circumstances, the
appellant was directed to amend Column X of the application so as to
incorporate this distinctiveness.
This is contrary to the DUS reports which declared the spikelet of the three
varieties, PAN 804, BHU11 and JAMUN (SONALI FOSAL) to be white,
learned counsel argued.
The respondents claim that PAN 804 was not distinctive or distinguishable.
It is the existing variety BB 11 presented with a different denomination PAN
804 and ought not to have been registered.
Learned counsel placed Section 76 of the PPVFR Act which is in the
following terms:-
"76. Procedure where invalidity of registration is pleaded by the
accused.--
(1) Where the offence charged under this Act is in relation to a variety or
its propagating material or essentially derived variety or its propagating
material registered under this Act and the accused pleads that the
registration of such variety or its propagating material or essentially
derived variety or its propagating material, as the case may be, is invalid
and the court is satisfied that such offence is prima facie not tenable, it
shall not proceed with the charge but shall adjourn the proceedings for
three months from the date on which the plea of the accused is recorded
to enable the accused to file an application before the Registrar under this
Act for the rectification of the Register on the ground that the registration
is invalid.
(2) If the accused proves to the court that he has made such application
within the time so limited or within such further time as the court for
sufficient cause allow, the further proceedings in the prosecution shall
stand stayed till the disposal of such application for rectification.
(3) If within a period of three months or within such extended time as may
be allowed by the court, the accused fails to apply the Registrar for
rectification of the Register, the court shall proceed with the case as if the
registration were invalid.
(4) Where before institution of a complaint of an offence referred to in sub-
section (1), any application for the rectification of the Register concerning
the registration of the variety or its propagating material or essentially
derived variety or its propagating material, as the case may be, in
question on the ground of invalidity of such registration has already been
properly made to and is pending before the Registrar, the court shall stay
the further proceedings in the prosecution pending the disposal of the
application aforesaid and shall determine the charge against the accused
in conformity with the result of the application for rectification."
He argued that since in a criminal proceeding the point of prima facie
invalidity of registration can be raised, it may equally be raised in a civil
proceeding.
VIEWS
The appellant is the breeder of the plant variety PAN 804. On 23rd
August, 2010 they made an application for registration of this variety under
the PPVFR Act, 2001. The variety was tested which included the DUS
testing (Distinctiveness, Uniformity and Stability) under Section 19 by the
registry read with the PPVFR Regulations, 2006 and PPVFR (Criteria for
Distinctiveness, Uniformity and Stability for Registration) Regulations,
2009. These tests are carried out by the registering authority to ascertain
the distinctiveness, uniformity and stability of the variety, which are the
essential requirements to be fulfilled by an applicant to claim
registration. On prima facie satisfaction with the above characteristics of
the appellant's PAN 804 variety, the registry advertised this application in
the journal to invite any opposition to its registration. No opposition
forthcoming, on 28th May, 2008 PAN 804 variety was registered under
Section 24.
Now, Section 28 of the said Act confers on the breeder of a registered
variety an exclusive right to sell, market, distribute, import or export etc.
the variety.
It is set out below:-
"28. Registration to confer right.--
(1) Subject to the other provisions of this Act, a certificate of registration
for a variety issued under this Act shall confer an exclusive right on the
breeder or his successor, his agent or licensee, to produce, sell, market,
distribute, import or export the variety: Provided that in the case of an
extant variety, unless a breeder or his successor establishes his right, the
Central Government, and in cases where such extant variety is notified
for a State or for any area thereof under section 5 of the Seeds Act, 1966
(54 of 1966) the State Government, shall be deemed to be the owner of
such right.
(2) A breeder may authorise any person to produce, sell, market or
otherwise deal with the variety registered under this Act subject to such
limitations and conditions as may be specified in the regulations.
(3) Every authorisation under this section shall be in such form as may be
specified by regulations.
(4) Where an agent or a licensee referred to in sub-section (1) becomes
entitled to produce, sell, market, distribute, import or export a variety, he
shall apply in the prescribed manner and with the prescribed fee to the
Registrar to register his title and the Registrar shall, on receipt of
application and on proof of title to his satisfaction, register him as an
agent or a licensee, as the case may be, in respect of the variety for which
he is entitled for such right, and shall cause particulars of such
entitlement and conditions or restrictions, if any, subject to which such
entitlement is made, to be entered in the register: Provided that when the
validity of such entitlement is in dispute between the parties, the
Registrar may refuse to register the entitlement and refer the matter in
the prescribed manner to the Authority and withhold the registration of
such entitlement until the right of the parties in dispute so referred to has
been determined by the Authority.
(5) The Registrar shall issue a certificate of registration under sub-section
(4) to the applicant after such registration and shall enter in the certificate
the brief conditions of entitlement, if any, in the prescribed manner, and
such certificate shall be the conclusive proof of such entitlement and the
conditions or restrictions thereof, if any.
(6) Subject to any agreement subsisting between the parties, an agent or
licensee of a right to a variety registered under sub-section (4) shall be
entitled to call upon the breeder or his successor thereof to take
proceedings to prevent infringement thereof, and if the breeder or his
successor refuses or neglects to do so within three months after being so
called upon, such registered agent or licensee may institute proceedings
for infringement in his own name as if he were the breeder, making the
breeder or his successor a defendant.
(7) Notwithstanding anything contained in any other law, a breeder or his
successor so added as defendant shall not be liable for any costs unless
he enters an appearance and takes part in the proceedings.
(8) Nothing in this section shall confer on a registered agent or registered
licensee of a variety any right to transfer such right further thereof.
(9) Without prejudice to the registration under sub-section (4), the terms of
registration--
(a) may be varied by the Registrar as regards the variety in respect of
which, or any condition or restriction subject to which, it has effect on
receipt of an application in the prescribed manner of the registered
breeder of such variety or his successor;
(b) may be cancelled by the Registrar on the application in the prescribed
manner of the registered breeder of such variety or his successor or of the
registered agent or registered licensee of such variety;
(c) may be cancelled by the Registrar on the application in the prescribed
manner of any person other than the breeder, his successor, the
registered agent or the registered licensee on any of the following
grounds, namely:--
(i) that the breeder of a variety or his successor or the registered agent or
registered licensee of such variety, misrepresented, or failed to disclose,
some fact material to the application for registration under sub-section (4)
which if accurately represented or disclosed would have justified the
refusal of the application for registration of the registered agent or
registered licensee;
(ii) that the registration ought not to have been effected having regard to
the right vested in the applicant by virtue of a contract in the performance
of which he is interested;
(d) may be cancelled by the Registrar on the application in the prescribed
manner of the breeder of a registered variety, or his successor on the
ground that any stipulation in the agreement between the registered
agent or the registered licensee, as the case may be, and such breeder or
his successor regarding the variety for which such agent or licensee is
registered is not being enforced or is not being complied with;
(e) may be cancelled by the Registrar on the application of any person in
the prescribed manner on the ground that the variety relating to the
registration is no longer existing.
(10) The Registrar shall issue notice in the prescribed manner of every
application under this section to the registered breeder of a variety or his
successor and to each registered agent or registered licensee (not being
the applicant) of such variety.
(11) The Registrar shall, before making any order under sub-section (9),
forward the application made in that behalf along with any objection
received by any party after notice under sub-section (10) for the
consideration of the Authority, and the Authority may, after making such
inquiry as it thinks fit, issue such directions to the Registrar as it thinks
fit and the Registrar shall dispose of the application in accordance with
such directions."
If you consider the definition of 'variety' under Section 2(za) and
"propagating material" under Section 2(r), you will find that plant variety
includes the propagating material which in turn includes the seeds. In
other words, registration of a variety would confer exclusive right on the
breeder over the plant as well as the seeds.
Note the difference between this section and section 28 of The Trade Marks
Act, 1999, which is inserted hereinunder:-
"28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade
mark shall, if valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered and to obtain
relief in respect of infringement of the trade mark in the manner provided
by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section
(1) shall be subject to any conditions and limitations to which the
registration is subject.
(3) Where two or more persons are registered proprietors of trade marks,
which are identical with or nearly resemble each other, the exclusive right
to the use of any of those trade marks shall not (except so far as their
respective rights are subject to any conditions or limitations entered on
the register) be deemed to have been acquired by any one of those
persons as against any other of those persons merely by registration of
the trade marks but each of those persons has otherwise the same rights
as against other persons (not being registered users using by way of
permitted use) as he would have if he were the sole registered proprietor."
Under this section of the Trade Marks Act, 1999, the registration of a
trademark gives the proprietor the exclusive right to use it, provided the
registration is valid.
Section 31 of the said Act provides that registration of a mark would only
be prima facie evidence of its validity. It is inserted below:-
"31. Special provisions relating to application for registration from citizens
of convention countries.--
(1) With a view to the fulfilment of a treaty, convention or arrangement
with any country outside India which affords to citizens of India similar
privileges as granted to its own citizens, the Central Government may, by
notification in the Official Gazette, declare such country to be a convention
country for the purposes of this Act.
(2) Where a person has made an application for the granting of a
breeder's right to a variety or for entering such variety in the official
register of varieties in a convention country and that person, or any
person entitled to make application on his behalf under section 14 or
section 23, makes an application for the registration of such variety in
India within twelve months after the date on which the application was
made in the convention country, such variety shall, if registered under
this Act, be registered as of the date on which the application was made
in the convention country and that date shall be deemed for the purposes
of this Act to be the date of registration.
(3) Where applications have been made for granting of a breeder's right to
a variety or for entering such variety in the official register of varieties in
two or more convention countries, the period of twelve months referred to
in sub-section (2) shall be reckoned from the date on which the earlier or
earliest of those applications were made.
(4) Nothing in this Act shall entitle the breeder of a registered variety for
infringement of rights other than protected under this Act which took
place prior to the date of application of registration under this Act."
There is no such condition in the PPVFR Act. Therefore, registration by
itself gave the appellant the exclusive right to produce and deal with the
variety, not subject to fulfilling the validity test.
If the civil courts had the power to adjudge the validity of registration of a
variety, it could have only gone into the question prima facie at the motion
stage. The final adjudication, would determine the ultimate validity. The
intention of the legislature is otherwise. Section 89 of PPVFR Act like its
corresponding Section 93 in the Trade Marks Act, 1999 imposes a bar on
the civil courts to determine any matter over which the authority or the
Registrar has jurisdiction.
Once a plant variety is registered under Section 24, it is not subject to the
test of validity by the civil courts. If it is not so subject, even prima facie it
could not have gone into that question.
Only the Registrar or the authority under the Act has the power to rectify
the register or cancel the registration on the ground that a variety's
registration is invalid. No such order from any authority declaring the
registration invalid or even prima facie invalid is on record. On a combined
interpretation of Section 28 chapter 5 and Section 89 of the said Act, the
learned court below had no jurisdiction to go into the question of validity of
the registration. The learned court below ought to have proceeded on the
footing that the registration was valid and on that basis, proceeded to
adjudicate upon the interim application.
It was said by Mr. Jishnu Saha that the application of the appellant for
registration before the Registrar or before the learned court below was
wanting for absence of a detailed description of the appellant's variety.
Unless such details were disclosed, it was not possible for any person to
come to any kind of conclusion as to whether the variety of which
registration was sought, was unique or distinctive in characteristics. If the
exact detailed specification of the plant variety was not disclosed, the
appellant could not have claimed novelty of its product.
In my opinion, the appellant's application before the Registrar was in no
way deficient. It had the necessary details. The Registrar on the basis of the
information supplied, had come to a prima facie conclusion that the
appellant's variety was unique and distinctive. Thereafter, the variety was
advertised. No opposition was forthcoming. Thereafter, the application was
considered by the authority and registered.
More fundamentally, it was not required of the appellant to disclose in the
application for interim relief more details of the variety because the civil
court, as I have discussed above, had no jurisdiction to go into the question
of validity of registration. It had only the obligation to disclose the
registration in its favour and to show that the respondents' variety was
similar to theirs to obtain an order of injunction. It is quite plain that the
appellant was able to show such similarity.
Mr. Saha proceeded on a different note. He tried to show that because the
respondents' variety was similar, the appellant was not entitled to
registration, its registration was invalid and therefore, not entitled to an
order of injunction. That is the roundabout way. Once the appellant had
been able to show registration in its favour, the court had no other option
but to restrain the respondents from dealing with the same variety.
The division bench judgment of the Delhi High Court in F. Hoffmann-LA
Roche Ltd. & Anr. Vs. Cipla Ltd. reported in 2009 (40) PTC 125 (Del.)
(DB) cited by Mr. Saha was with regard to a suit where the court was
adjudicating upon the issue whether the defendant's patent infringed the
appellant/plaintiff's patent. In those circumstances, the court had
remarked:-
"(iii) In an application seeking ad interim injunction in a suit for
infringement of patent, it would be incumbent on the plaintiffs to make
a full disclosure of the complete specification of the product whose
patent is claimed to have been infringed. The plaintiffs will also have to
disclose to Court the x-ray diffraction data of the product, particularly if
it is a pharmaceutical drug. The plaintiffs have to make an unequivocal
disclosure that the patent they hold covers the drug in question;
whether there are any other pending applications seeking the grant of
patent in respect of any derivatives or forms of the product for which
they already hold a patent and the effect of such applications on the
suit patent."
Since the civil court had no jurisdiction to determine the validity of the
registration, such an obligation to furnish the minute details of the variety
did not rest with the appellant. Even assuming that the application before
the court had to contain the necessary details, I am convinced that the
necessary details were contained in the application of the appellant.
Mr. Saha has made extremely formidable arguments. He argued that in the
DUS test report dated 6th December, 2020 obtained by the appellant, their
variety PAN 804 was compared with other varieties, BHU 11 and JAMUN.
There was no distinctiveness at all in the appellant's variety. Their claim to
distinctiveness based on the white colour of the spikelet was demolished by
the report which stated that all the spikelets were white. According to the
Gubba Biotech laboratory, the spikelets of nine varieties tested were white.
That the appellant's variety is a common variety devoid of distinctiveness,
may be a very substantial ground in a proceeding to annul the registration
before the Registrar or the authority. As long as the appellant's registration
of the variety is subsisting, this point cannot be urged in a civil court for
the reasons given above.
The argument of Mr. Saha that since under Section 76 of the said Act the
criminal court can go into the validity of registration of a variety prima
facie, a civil court has similar power, is without merit. Section 89 imposes
bar on the courts exercising civil jurisdiction to determine the validity of
the mark. If one has to establish the validity or invalidity of a mark, one
has to do so only in a civil court. The bar only applies to a civil court. The
criminal court cannot make any declaration or pass any injunction in civil
matters. Now, if in a criminal case the validity or invalidity of registration
would determine conviction, the court cannot held two trials to try one
alleged offence. If the variety is registered and on that basis the plea of
invalidity is rejected and the accused convicted and thereafter in a civil
proceeding, the registration is held to be invalid, the case cannot be
reopened to set aside the conviction. That is why the criminal court has
been given the power to prima facie adjudge the question of validity and if
on that basis it finds prima facie that the offence is not sustainable, it may
adjourn the criminal proceedings to enable the accused to obtain an order
of rectification of the register or annulment of registration from the
Registrar.
The other two cases cited by Mr. Saha Shree Ganesh Besan Mill and Ors.
Vs. Ganesh Grains Limited and Ors. reported in AIR 2022 Cal 171 =
(2022) 89 PTC 233 and Lupin vs. Johnson and Johnson reported in AIR
2015 Bom 50 were under the Trade Marks Act, 1999 (the 1999 Act).
When the Lupin judgment was pronounced, Section 93 of the 1999 Act was
in force barring the jurisdiction of the civil courts over matters inter alia
regarding validity of the mark. This power was vested in the tribunal. Now,
if the final determination of the validity of the mark was with the tribunal
and registration was only prima facie proof of validity, while considering the
interim application for infringement of a mark where the question of
validity was raised, the court was entitled to prima facie scrutinise the
validity of registration of the mark as held in that case and followed in
Shree Ganesh Besan Mill and Ors. Vs. Ganesh Grains Limited and Ors.
reported in (2022) 89 PTC 233. But the PPVFR Act is completely different.
Section 28 confers on the breeder exclusive right without any condition and
this right cannot be adjudged and the validity of this registration cannot be
tested in any civil court. It can only be adjudged by the authority or the
Registrar under the PPVFR Act. Till the time the registration is declared to
be invalid by the forum under the PPVFR Act, the breeder is entitled to
prevent any other breeder from dealing with the variety. Hence, the above
cases do not have any application to the facts of this case.
To my mind, when a suit is filed alleging infringement under the PPVFR Act
and a plea is made by the defendant that the registration relied upon is
invalid, the court is left with no option but to take the registration as valid
and deal with the suit accordingly. However, if it is shown to the court that
steps have been taken by the defendant diligently before the Registrar or
the authority under the PPVFR Act to obtain cancellation of the registration
on the ground of invalidity, the court would have a discretion to adjourn
hearing of the suit to give a chance to the defendant to prove his point. This
procedure was provided in the Trade Marks Act, 1999 before its
amendment in 2021 when a suit was filed, the defence of invalidity taken
and the issue pending before the Board/tribunal. The principle may be
followed in cases arising out of the PPVFR Act. I hasten to add that only the
suit may be adjourned and not any interim application which has to be
determined on the basis of the status of the registration on the date the
interim order is made.
The learned court below completely failed to appreciate that registration of
a variety included "propagating material" which included seed, under
Section 2(r) and 2(za) of the PPVFR Act. Hence, registration of the plant
variety protected its seeds also.
The learned judge of the court below has wrongly exercised his jurisdiction
by going into the prima facie case on the question of validity of the
appellant's registration. While doing so, the learned judge has
unnecessarily made an investigation into the characteristics,
distinctiveness and stability of the appellant's variety. He also exceeded his
jurisdiction by making a comparative analysis of the diverse varieties.
In my opinion, once the appellant has been able to register its variety, it is
entitled to protect it by restraining others from growing, selling, marketing
or otherwise dealing with the said variety. The court could only go into the
question whether the appellant and the respondents' varieties were similar,
for the purpose of consideration whether injunction should be granted. In
my opinion, it is an admitted fact that the two varieties are similar and an
injunction ought to have been granted.
One more point needs to be answered. Where a court is concerned with an
application for grant of an interim order, the respondent does not have a
chance to use an affidavit, at that point of time, to resist the order. The
courts do permit and rightly so, the respondent to rely upon whatever
documents he has in his possession to resist the interim order. In this case
the court permitted the respondents to use a voluminous compilation of
papers running into 1500 pages to oppose the grant of an interim order.
However, if on the basis of such documents, the appellant's prima facie
case was demolished, in the eyes of the court and the interim application
liable to be dismissed, which the court ultimately did, the learned judge
ought to have given an opportunity to the appellant to deal with those
documents or the affidavit containing those documents and to consider
passing an order of injunction or refusing it on the basis of the appellant's
disclosure and arguments based on it. In my opinion, solely relying on the
documents produced by the respondents without an opportunity to the
appellant to deal with them, was violation of the principles of natural
justice and fairness.
For all those reasons, a very gross error has been committed by the learned
court below. It is certainly not a type of case where the appellate court
would respect the discretion of the learned trial court and exercise restraint
in interfering with it. The order of the learned court below can be called
perverse.
We allow this appeal (FMAT 11 of 2023). The stay/injunction application
(CAN 1 of 2023) is also disposed of. The judgment and order under appeal
is set aside. An order of injunction is issued restraining the respondents
from breeding, growing, selling, marketing or otherwise dealing with the
plant variety PAN 804 including the seeds till the disposal of the suit.
Nothing remains of the interim application before the learned court below.
It is disposed of by this order. Let this order be formally incorporated in the
records of that court.
We direct that the suit be expedited and for this purpose either party may
make an appropriate application before the learned trial judge to pass the
necessary directions for expediting the suit.
Any observation or finding of fact made by us on the merits of the case is to
be taken to be prima facie.
Certified photocopy of this order, if applied for, be supplied to the parties
upon compliance with all requisite formalities.
I agree.
(BISWAROOP CHOWDHURY, J.) (I. P. MUKERJI, J.)
F.M.A.T 11 of 2023
CAN 1 of 2023
Pan Seeds Pvt. Ltd.
Vs.
Ramnagar Seeds Farm Pvt. Ltd. and Ors.
LATER:
Learned Counsel for the respondents prays for stay of operation of this
judgment and order which is considered and refused.
(BISWAROOP CHOWDHURY, J.) (I. P. MUKERJI, J.)
