Summary
In the case of Versuni Holding B.V. Trading as Preethi v. Maya Appliances Private Limited, the Madras High Court held that a stand alone revocation petition was not maintainable once the defendant had already taken the invalidity route in the pending patent infringement suit. The court treated the plea for revocation in the written statement before the Delhi High Court as an election of remedy. The court also held that the challenge could not be pursued again in another forum, since that would amount to re agitating the same defence and forum shopping.
Background
Versuni Holding B.V. (hereinafter referred to as Versuni/ Philips / Preethi), a Netherlands based company, trading as Preethi filed a suit for infringement before the Delhi High Court against Maya Appliances Private Limited (hereinafter referred to as Maya Appliances). Versuni is a former business division of the Royal Philips Group and was formerly known as ‘Philips Domestic Appliances’. Versuni filed a patent application in 2014 before the Indian Patent Office for an invention titled “AN APPARATUS AND METHOD FOR PROCESSING A FOOD STUFF”. The application filed in the name of Koninklijke Philips N.V. was subsequently granted on 23rd November 2020, bearing patent no. 351954. Maya Appliances contested the infringement and sought a dismissal of the suit, a declaration that the patent was invalid, and a direction to revoke the patent and strike it off the Patent Register. After doing so, the defendant also filed a separate revocation petition before the Madras High Court. Versuni therefore, filed the present proceeding before the Madras High Court to dismiss the said revocation petition.
Issues
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- Whether Maya Appliances Private Limited could maintain a stand alone revocation petition after seeking revocation of the same patent in the infringement suit filed by Versuni Holdings.
- Whether the remedies under Section 64 and the invalidity defence under Section 107 could be pursued in parallel on the same patent dispute.
- Whether filing the separate revocation petition before the Madras High Court amounted to forum shopping since Maya Appliances had already sought revocation in the Delhi proceedings.
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Arguments presented by the Parties
Versuni’s Arguments
Relying on Section 64, Section 107, and the Supreme Court ruling in Alloys Wobben v. Yogesh Mehra Versuni argued that :
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- Maya Appliances had already participated in the Delhi infringement suit and had filed a written statement with a specific plea seeking revocation of Patent No. IN 351954.
- Once Maya Appliances had taken that route, it could not maintain a separate revocation petition before another High Court.
- The separate revocation petition amounted to forum shopping.
- Apart from India, there were seven other countries where a patent had been granted for the same invention and Maya Appliances had not filed any pre-grant or post-grant oppositions.
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Maya’s Arguments
Maya Appliances argued that:
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- despite the counter claim for revocation before the Delhi High Court, it was still entitled to file the revocation petition before the Madras High Court.
- the petition sought revocation of the patent and removal of the patent from the register, and that this relief could be pursued separately.
- since its head office was in Chennai, the filing of the revocation petition before the Madras High Court was appropriate.
- previous rulings such as in the case of Macleods Pharmaceuticals Ltd. v. Controller of Patents and Another made it clear that revocation petition under Section 64 and an invalidity defence under Section 107 are different in scope and effect.
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Court’s Analysis
On hearing and perusing the arguments put forward by both the parties, the court firstly noted that Maya Appliances had not raised any objection at the pre grant stage or the post grant stage of the patent granted in favour of Versuni Holding B.V/ Philips. The Court then focused on the more important fact that Versuni had already filed an infringement suit before the Delhi High Court and that Maya Appliances had filed a written statement there containing a specific prayer for revocation of the patent. According to the court, once that course had been adopted, Maya Appliances could not maintain a separate revocation petition before another forum.
The Court said that Section 107 makes every ground of revocation under Section 64 available as a defence in an infringement suit. The Court also noted that the written statement in the Delhi suit contained a specific prayer to direct revocation of the suit patent and removal of the patent from the register. In the eyes of the Court, this showed that Maya Appliances had already exercised its remedy in the infringement action.
The Court observed that the Versuni had relied on Alloys Wobben v. Yogesh Mehra, where the Supreme Court held that the remedies under Section 64 are alternative and cannot be pursued simultaneously for the same purpose. The Court accepted this proposition and observed hat once the available defence had been exercised in the infringement suit, the same issue could not be re agitated before another forum or in another manner.
The Court also did not accept Maya’s attempt to maintain the separate revocation petition on the basis of a difference between Section 64 revocation and Section 107 invalidity defence. Although the Maya Appliances relied on Macleods Pharmaceuticals, the court stated that the judgments relied on by both sides ultimately pointed to the same position in the present facts, namely that Maya Appliances had already chosen its route in the infringement action and could not reopen the matter elsewhere.
The Court further said that allowing the separate petition would amount to re agitating the same defence in another forum. As per the Court, this was impermissible. The Court therefore treated the separate revocation petition as barred once the challenger (Maya Appliances) had already sought revocation in the Delhi proceedings.
Findings
In view of the arguments and observations, the Court allowed the application seeking dismissal of the revocation petition. The court held that Maya Appliances could not pursue a separate revocation petition after having already sought revocation in the pending Delhi infringement suit. The court made no order as to costs.
Case Citation: Versuni Holding B.V. Trading as Preethi v. Maya Appliances Private Ltd., (PT) A No. 3 of 2024 & O.P. (PT) No. 1 of 2024, Madras High Court, decided on December 19, 2025. Avilable on https://indiankanoon.org/doc/93839496/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels