Supreme Court Transfers Patent Infringement Suit to Bombay High Court: Prior Suit for Groundless Threats Prevails

In the matter of competing transfer petitions arising from intellectual property disputes between two manufacturers of home appliances the Supreme Court transfers the suits to Bombay High Court where the petitioner, Atomberg Technologies Private Ltd., initiated suit (in Bombay) (COMMERCIAL IP (L) No. 19837 of 2025) on 01.07.2025, seeking relief under Section 106 of the Patents Act, 1970, against the respondent’s alleged groundless threats of patent infringement made to their distributors and customers.

Later, the respondent, Eureka Forbes Limited, instituted a suit (in Delhi) on 07.07.2025, for patent infringement under Section 104 of the Patents Act, 1970. However, the jurisdiction in Delhi was allegedly established through an online purchase and delivery of the petitioner’s product within the territory.

The Supreme Court was tasked with resolving two competing transfer petitions: one by the petitioner seeking to transfer the Delhi Suit to Bombay, and the other by the respondent seeking to transfer the Bombay Suit to Delhi.

On examining the merits of the matter, the Supreme Court allowed the petitioner’s request, for Transfer Petition (Civil) No. 1983 of 2025, directing the transfer of the Delhi Suit to the Bombay High Court, and that it should be tried alongside the prior instituted suit in Bombay for Groundless Threat of Infringement. The Apex Court also, dismissed the concurrent petition filed by the respondent seeking the relief to trasfer the suit from Bombay to Delhi.

Observations of the Court: The Supreme Courtobserved that while it would not determine which suit had a wider scope, the primary consideration was judicial expediency and avoiding the risks associated with multiple proceedings.

Additionally, the Court made significant legal observation centered on the interpretation of the Patents Act, 1970., and highlighted that the 1970 Act deleted a critical proviso that existed in the predecessor legislation, the Indian Patents and Designs Act, 1911.

Under the 1911 Act, a suit for groundless threats would not apply if an infringement action was commenced and prosecuted diligently. By deleting this negatory provision, the Apex Court affirmed that a suit for Groundless Threat of Infringement under Section 106 of the Patents Act, 1970, possesses an independent cause of action from a suit for infringement under Sections 104 and 108.

Furthermore, the Supreme Court emphasized that the issues involved in both the Delhi Suit and the Bombay Suit were substantially overlapping. Relying on precedent (specifically Chitivalasa Jute Mills v. Jaypee Rewa Cement), the Court noted that having separate trials would lead to "duplication of recording of evidence" and create the possibility of "findings inconsistent with each other and conflicting decrees". Given that the Bombay Suit was prior in time (filed on 01.07.2025) [18.i], and to ensure consistency, prevent multiplicity, and preserve judicial resources, it was found expedient to transfer the subsequent suit to the forum where the first proceeding was pending.

Coram: Justice J.B. Pardiwala and Justice Manoj Misra.