Check Your Rights Before You Sue

August 22, 2015

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
term has expired.


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 2009.

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.

The original judgment can be found here.

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