SpicyIP is now given to believe that the orders by the Mumbai and Chennai commissioners were challenged by Ramkumar in a writ petition and have been stayed by the Madras High Court. We’re not sure about the Delhi Customs order and if any of you have information on this, please let us know.
We haven’t seen the writ petitions or the stay orders yet, but are informed by sources that the writ petitions question the ability of Customs officials to decide issues of patent infringement. Paradoxically, this was the same issue that was raised by Samsung in the writ petition filed before the Delhi High Court, which was subsequently withdrawn.
I’m not entirely sure what the effect of the stay would be? As noted in earlier posts, most of the customs orders merely find that the importers do not infringe Ramkumars patent. And they then go on to ask Ramkumar to pay demurrage and warehousing charges. The stay would presumably absolve Ramkumar of pauying such charges for the moment? Does it have any other impact? Perhaps it might also impact the seriousness with which the Madras High Court (deciding the infringement issue) will view the customs orders? In any case, one hopes that this stay order by the Madras High Court is a well reasoned one, unlike the cryptic ex parte restraining order by the Madras High Court earlier.
But this stay does raise two interesting jurisdictional issue? If customs does not have jurisdictional competence to decide patent issues, can it block allegedly (patent) infringing goods at all? Ought it not to ask the patentee to obtain an order from the court declaring that there has been an infringemnt before it seizes the allegedly infringing goods?
Secondly, Ramkumkar has actively submitted to the jurisdiction of the customs authorities by arguing before them. Can he now challenge their jurisdictional competence? Can any of our readers point us to interesting precedent in this regard?
shamnad,
this stay is in tune with what i have already commented in your other blog (on delhi custom commissioner’s order) just a few minutes ago. i had not read this article while making that comment. but this article’s news doesnt come as a surprise to me. logically, the chennai n mumbai orders should be suffering from jurisdiction lacunae, at least prima facie. n hence the stay. however, in the final adjudication, the outcome may go either way on the jurisdiction issue, as it will depend upon the facts which i am not aware of n, hence, incompetent to comment upon.
(addendum to earlier comment)
dear shamnad,
u ve raised two ‘interesting’ jurisdictional issues. as i ve always maintained (n u also had the same view in ur earlier blog articles), one of the appropriate mechanisms that can be adopted in such cases is that the onus of getting the order regarding patent infringement should lie on the patentee and absent such an order, the customs officials should not be withholding clearance of goods. (shamnad, i really wonder what/how the european authorities/MNCs would feel/react if this position gets translated to and holds good in the recent cases of indian generic drug consignments seizures by the border/customs authorities across europe.). interesting times ahead.
Absolutely mnbc,,,
if this logic were part of the international framework as well (that admin authorities must not adjudicate patent disputes), we would never have had the seizure issues…
u know what, shamnad? it seems that v (‘south’) r progressing on the front of ‘just’ law/rules, while the traditionally mature jurisdictions seem to b regressing in this regard. at a very fundamental level, its all basically a “war of positions / war of manoeuvres”. between two seemingly conflicting interests (north vs. south), a topic which, inter alia, i ve touched in a paper which has been submitted for publication in a journal n hence i cannot reveal the contents thereof at this stage. once it gets published, i ll let u know. it further builds upon ur famous article [SCRIPT-ed, 5(2) (2008)] regarding 3(d) and other postings at this blog and it attempts to counteract the rather skewed ‘north’ view, as exemplified by, e.g., D. Christopher Ohly’s paper. i ve given u guys due acknowledgments therein.
Dear Mnb..,
i very much look forward to reading your paper. please let me know when its published. and thanks for the acknowledgement.
dear shamnad,
sure i wud send it to u, as in any case, it extensively refers to your, amongst others’, writings. u pls send me your email address. also, one more clarification – i aint a regular writer/academician n this is my first paper. n the offer to write it came up just by chance. recently, i had been invited to give a lecture/presentation on 3(d) at a premier scientific research institute of the country on the IPR day. there, i happen to meet some of the other guests/participant lecturers and scholars who were involved in the process of policy-making (regarding IPR) of the govt. (i.e. formulating the stand taken by india at various international fora). a few days after the said seminar, i was pleasantly surprised by a call from the editor of an IPR journal to write on the topic of my lecture/presentation made at the seminar. thats how this maiden effort came about. u judge the quality n lemme know.
Answer to the first issue: No, the Customs authorities have no jurisdiction in the absence of a Court Order specifically directing them to act and seize the infringing goods. Otherwise the Customs officials are merely bound by and their powers circumscribed by the Customs Tariff Act, 1975.
Answer to the second issue: Just because Ramkumar has submitted to the customs authorities’ jurisdiction he is not bound to accept their decision and such a decision of the customs authorities can be challenged at even the second appeal stage, as such proceedings before the customs authorities would be coram non judice, and thus such decision of the customs authorities would be a nullity ab initio. See Chief Engg. Hydel Project v. Ravinder Nath, (2008) 2 SCC 350 (para 25, 26).
SS
Dear Shamnad,
w.r.t the first issue – the customs authorities should not block allegedly infringing goods. Appropriate remedy would be to go to a Court under S.104 of The Patents Act, 1970 and seek an interim injunction under O.39 of CPC. In case the Court grants an injunction, the Customs authorities are duty bound to execute it.
w.r.t. the second issue – consent of a party, as to jurisdiction, is not at all relevant. It neither confers nor ousts the jurisdiction. Thus, he is free to go to a Court.