Image source: Patent No. 223184
IN THIS ISSUE
Vitaflex Mauch GMBH (herein referred to as the ‘Defendant’) issued a Legal notice on April 03, 2006, to Bata India Limited (herein referred to as the ‘Plaintiff’) claiming that the shoes being manufactured by the Plaintiff are infringing upon the Defendant’s trade mark and patent rights.
The Plaintiff filed a suit against the Defendant seeking declaration that the threats made by the Defendant with respect to patent infringement are groundless, unjustifiable and wrongful.
The Delhi High Court, on August 24, 2015, restrained the Defendant from issuing any such threat to the Plaintiff on the ground that the Defendant had not been able to show that the patent pertaining to the shoe was granted in India.
Facts of the Case
- The Defendant filed Indian patent application No. 1521/CHENP/2003 on September 26, 2003 entitled “An inner sole for shoes”. The said patent application was granted on September 05, 2008 (Patent No. 223184).
- The Defendant issued a Legal Notice to the Plaintiff on April 03, 2006, inter alia alleging that:
- The insole of the shoes is characterized by a 5 points design;
- The defendant has a pending trade mark application in India under no. 1264384 for “5 POINTS (fig.)”;
- The Defendant has a pending patent application in India (Application No. 1521/CHENP/2003; Patent No. IN 223184;
- The Plaintiff is making “copies” of the Defendant’s products with respect to appearance and functionality;
- The general impression of the shoe is similar in Plaintiff and the Defendant’s shoe whereas the differences were:
– Plaintiff’s shoe has 6 points instead of 5 points in the Defendant’s product;
– Plaintiff’s shoe is of “low quality” as compared to Defendant’s shoe.
- The Plaintiff infringes the Defendant’s trademark rights;
- The Plaintiff’s product infringes the Defendant’s patent;;
The Plaintiff sought the relief of injunction to restrain the Defendant from issuing groundless, unjustifiable or wrongful threats to the Plaintiff and also from circulating threats through circulars or advertisements or by communications (oral or written) to the Plaintiff or any other person, in this regard. The Plaintiff also sought damages of Rs.20 lacs on account of the unjustifiable and wrongful threats issued by the defendant.
- The Defendant had just filed a Patent Application pertaining to pressure points whereas it falsely alleged that the shoe or the insole is patented in India;
- The PCT application from which it claims priority claims novelty only in the material and the thickness of the insole and not in the configuration of pressure points. Therefore, the Defendant could not go beyond the claims of PCT Application.
According to the provisions of Section 106 of the Patents Act, the Plaintiff is entitled to file suit seeking
– declaration to the effect that the threats are unjustifiable;
– injunction against groundless threats,
– such damages, if any, as he has sustained thereby.
unless in such suit the Defendant proves that the acts in respect of which threats are being issued are arising from patent infringement or from the publication of a complete specification.
In view thereof, in this case the onus was on the Defendant to show that the Defendant has a patent right over the reflex/pressure points.
A conjoint reading of Section 48, 52 and 70 of the Patents Act shows that in order to be successful to claim infringement, there must be granted a patent to the person who has issued the threat/legal notice that the Plaintiff should not violate the rights of the patentee. Since the Defendant had been unable to show that it has a valid patent pertaining to five pressure points/reflex points, the Defendant was restrained to issue any groundless threats through circulars or advertisements or by communication to the Plaintiff with respect to five pressure points/reflex points.
It was thus declared that the threats made by the defendant to the plaintiff are groundless, unjustifiable and wrongful.
The complete order can be found at the below link: