Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

Judgement date:06.10.2022
Suit No.CS(COMM) 308 of 2021
Name of Court: Delhi High Court
Name of Hon'ble Justice: Sanjeev Narula, H.J.
Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

In a case for infringement of registered Trademark, the Trademark registration is prima facie evidence of validity. It has also been laid down by various courts that in a case for infringement of Trademark, mere production of Trademark Registration Certificate is sufficient.

If Plaintiff is able to show that the trademark of the Defendant is similar to registered Trademark of the Plaintiff , then Plaintiff is not required to show any thing more. Thus in a Suit for infringement, mere production of Trademark registration is sufficient and Plaintiff is not required to show any other evidence.

Section 31 of Trademarks Act 1999 also stipulates so. It creates prima facie presumption in favour of validity of a Registered Trademark. Section 31 of Trademarks Act 1999 is reproduced as under:

31. Registration to be prima facie evidence of validity:

(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registerable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

From bare perusal of Section 31 of Trademarks Act 1999 , it is apparent that in a Suit for infringement of Registered Trademark, the Court will always presume the Registered Trademark of Plaintiff to be invalid.

But what will happen if the registration of the Plaintiff prima facie appear to have been obtained by fraud. In case the dishonesty on the Part of the Plaintiff is apparent in obtaining the registration, can a defendant be estopped from challenging the validity of registered Trademark?

Filing of cancellation Petition against the registered Trademark may be another remedy available to the Defendant. But what if cancellation petition is pending for long time. Is defendant not entitled to request the Hon'ble Court to look into the validity of a fraudulent registration obtained by the Plaintiff.

This issue has been dealt with by the Hon'ble Division Bench, High Court of Delhi, while passing the Judgement dated 06.10.2022 passed in Suit bearing No. CS(COMM) 308 of 2021 titled as Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

Fact of the case was that the Plaintiff filed Suit for infringement against the infringement of registered trade mark SHAMROCK. On the other hand, the Defendant was alleging prior use of Trademark SHAMROCK in India.

Two Suits were pending before the Hon'ble High Court of Delhi. The Hon'ble High Court Delhi was dealing with Suit for infringement as well as counter suit for passing off. The Plaintiff was heavily relying upon the Trademark Registration. While the Defendant was asserting right by virtue of passing off.

The Defendant also assailed Trademark registration of the Plaintiff being dishonest registration. The Hon'ble High Court of Delhi observed that in a suit for infringement of Registered Trademark, the court can look into validity of a registered trademark, if the registration prima facie appears to be fraudulent or dishonest.

In the facts of the case, while dealing and assessing the rights and contention of parties, the Hon'ble High Court of Delhi reached the conclusion that plaintiff has filed the subject matter Trademark registration as proposed to used and actually have not put on record any document showing user of the subject matter registered Trademark.

This was the reason why the Hon'ble High Court refused to grant injunction in favour of the Plaintiff as , according to the Hon'ble Court, the subject matter Trademark registration of the Plaintiff was pima facie suspect.

After discussing the provisions of Section 27, 28 and Section 34 of the Trademarks Act 1999, the court observed that that rights of a registered proprietor are not absolute or indefeasible. Registration under the Act only gives a presumption as to the validity of a mark, which may be rebutted by claims of prior use.

On the contrary, the Defendant put on record various documents showing user of subject matter registered Trademark SHAMROCK. It is well settled proposition of law that registration of trademark does not have any effect on the prior user. Having observed so, the Hon'ble High Court of Delhi was pleased to grant injunction in favour of the Defendant in the counter suit of passing off action.

Thus it is apparent that the Hon'ble High Court of Delhi , while dealing with the Suit for infringement of Trademark, has not only looked into validity of Plaintiff's registered Trademark, but was also pleased to return the finding that the subject matter Trademark registration to be dishonest registration.

The outcome of this Judgement is that though in a suit for infringement of Trademark , the Trademark registration is prima facie evidence of validity, however in case of fraudulent or dishonest registration, the Hon'ble Court may always look into validity of registered Trademark.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Reliance Entertainment Studios Vs Bharat Sanchar Nigam Ltd.

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Judgement/Order Date:23.09.2022
CNR No.HCMA01-155519-2022
Registration Date: 28-09-2022
Case No. O.A. No.640 of 2022 in C.S.(Comm.Div) No.210 of 2022
Name of the Court: Madras High Court
Name of Hon'ble Judge: M.Sundar, H.J.
Cause Title of Case: Reliance Entertainment Studios Vs Bharat Sanchar Nigam Ltd.

This matter Pertains to infringing activities done through more than 1300 rogue websites pertaining to movie VIKRAM VEDHA.

The Plaintiff roped in 40 internet service provider as Defendants in this matters. The details of the same are as hereunder:

1) BHARAT SANCHAR NIGAM LIMITED,
2) MAHANAGAR TELEPHONE NIGAM LTD.,
3) BHARTI AIRTEL LIMITED,
4) AIRCEL CELLULAR LIMITED,
5) HATHWAY CABLE AND DATACOM LIMITED,
6) TATA COMMUNICATION LIMITED,
7) VODAFONE INDIA LIMITED,
8) IDEA CELLULAR LIMITED,
9) RELIANCE COMMUNICATIONS INFRASTRUCTURE LIMITED,
10) TATA TELESERVICES LTD,
11) GTPL HATHWAY LTD,
12) TIKONA DIGITAL NETWORKS PRIVATE LIMITED,
13) BG BROADBAND INDIA PRIVATE LIMITED,
14) SIFY TECHNOLOGIES LIMITED,
15) SITI BROADBAND SERVICES PVT.LTD.,
16) YOU BROADBANK AND CABLE INDIA LTD.,
17) ASIANET SATELLITE COMMUNICATIONS,
18) DATA INFOSYS LIMITED,
19) READYLINK INTERNET SERVICES LIMITED,
20) OPTO NETWORK PRIVATE LIMITED,
21) NETTLINX LIMITED,
22) CITY ONLINE SERVICES LIMITED,
23) PIONEER eLABS LIMITED,
24) AT AND T GLOBAL NETWORK SERVICE INDIA PVT.LTD.,
25) NEXTGEN COMMUNICATIONS LIMITED,
26) SOUTHERN ONLINE BIO TECHNOLOGIES LIMITED,
27) MYNET SERVICES INDIA PRIVATE LIMITED,
28) RELIANCE JIO INFOCOMM LTD.,
29) LIMRASERONET BROADBAND SERVICES PRIVATE LIMITED,
30) RS BROADBANK SERVICE INDIA PRIVATE LIMITED,
31) SPECTRA ISP NETWORKS PVT.LTD.,
32) PULSE TELESYSTEMS PRIVATE LIMITED,
33) ESSEISHYAM COMMUNICATIONS LTD.,
34) FIVE NETWORK SOLUTION (I) LTD.,
35) ATRIA CONVERGENCE TECHNOLOGIES LIMITED,
36) ACTION LANE,
37) JAK COMMUNICATIONS PVT LTD.,
38) C32 CABLE NET PVT.LTD.,
39) THAMIZHAGA CABLE TV COMMUNICATION PVT LTD.,
40) THIRU NEGAR SATELLITE VISION PVT LTD.,

This is the case, where Hon'ble High Court of Madras was pleased pass injunction order against more than 1300 web sites which were indulged in illegally displaying the movie namely VIKRAM VEDHA, Starring Hritik Roshan and Saif Ali Khan.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Vivek Kochar and another Vs KYK Corporation Limited and Ors.

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Judgement/Order Date:23.09.2022
Case No. RFA (OS) (Comm) 03 of 2022
Name of the Court: High Court of Delhi
Name of Hon'ble Judge: Vibhu Bakhru and Amit Mahajan, H.J.
Cause Title of Case: Vivek Kochar and another Vs KYK Corporation Limited and Ors.

If a registered trademark of a party is cancelled by the Intellectual Property Appellate Board [IPAB], does it mean that an action of passing off has to be allowed against that party? Or in other words, what could be the effect of the finding of IPAB in the rectification petition on the litigation pertaining to passing off action? 

This was the question, which happened to crop up before the Hon'ble Division Bench, High Court of Delhi in a Commercial Appeal bearing RFA (OS) (Comm) 03 of 2022 titled as Vivek Kochar and another Vs KYK Corporation Limited and Ors , wherein the Hon'ble Division Bench was pleased to deal with such issue by passing the Judgement dated 23.09.2022. 

The subject matter appeal was filed by the Appellants/Plaintiffs whereby the suit filed by the Appellants was dismissed and the counter claim filed by the Respondent No.1 was partly allowed, whereby the Appellants were restrained from using the subject matter trademark/copyright KYK, amounting to passing off and infringement of Respondent No.1's copyright. 

The reason for passing the impugned judgement was that the registered trademark of the Appellants was cancelled by the Ld. IPAB on the cancellation petition filed by the Respondent No.1.

The Appellants filed a Writ Petition against the order of IPAB, but the same was also dismissed. This was the order of Ld. IPAB, on which the Hon'ble Single Judge primarily relied upon while allowing an action of passing off against the Appellants. 

The Appellants filed the subject matter suit on the basis of the registered trademark KYK and also on the basis of common law rights under the said trademark in relation to the business of marketing and selling of automobile parts and fittings, including bearings, filters, gears and gear parts, v-belts, fan belts, and machinery parts used in motor land vehicles. 

When Respondent No.1 appeared in the suit, he filed the written statement as well as the counter claim on the basis of proprietary rights in the trademark KYK; the business of manufacturing, marketing, selling, and exporting inter alia all types of bearings, including parts of land vehicles, bearings (axle) for vehicle wheels, and bearings (carrying for wheels). 

The counter claim of the respondent No.1 was allowed primarily on the basis of the order passed by Ld. IPAB , which cancelled the subject matter trademark of the Appellants.

The Ld. IPAB cancelled the subject matter trademark of the Appellants on the ground that the Appellants failed to prove their use in relation to their trademark prior to 2005. In view of said finding of Ld. IPAB, the Hon'ble Single held that the Appellants can not be allowed to claim user prior to that.

The Hon'ble Division Bench agreed with the finding of the Hon'ble Single Judge with respect to the dismissal of the Appellant's suit pertaining to infringement of trademark as the trademark of the Appellants has been cancelled by the Ld. IPAB. Hence, the relief pertaining to infringement of copyright could not have survived.

However, the Hon'ble Division Bench disagreed with that portion of the judgement where by the counter claim of the Respondent No.1 , in so far as the same pertaining to passing off was allowed.

The reasoning given by the Hon'ble Division Bench was that the fact that the Appellants were unable to prove their use in sustain their registered trademark, however, the same could not have been sufficient for the purpose of allowing the claim of passing off made by the Respondent No.1. 

It is submitted that the reason for passing such a judgement is very clear. The criterion for cancelling a registered trademark is quite different and distinct from the action of passing off. A registered trademark may be cancelled on various grounds, inter alia on the ground of non-use, similarity to other trademarks, etc.

However, in order to succeed in an action for passing off , the right holder has to establish tremendous goodwill and reputation. Merely because a party has succeeded in an action for rectification petition does not mean that this party will succeed in an action for passing off action. 

This is the reason why the finding of Ld. IPAB can not be binding in an action for passing off. In the subject matter suit, Respondent No.1 was not the registered proprietor of the trademark. Hence, in order to succeed in an action for passing off, tremendous goodwill and reputation were required to be established.

Simply because the Appellants' registered trademark was cancelled does not mean that the Respondent No.1's passing off action should have been permitted. Hence, the Hon'ble Division Bench was pleased to set aside the impugned judgement whereby the counter claim claim of the Respondent No.1 was allowed.

The Hon'ble Division Bench remanded the matter to the Hon'ble Single Judge for adjudication of the counter claim claim of the Respondent No.1 , in so far as the same pertains to the relief of passing off action.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Atomberg Technologies Private Limited Vs Polycab India Limited

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Important Note of the Case: This case was pertaining to infringement of Registered Design of the Plaintiff's product namely electric fan. Ex Parte injunction in relation to Infringement of Plaintiff’s Design of fan was granted by the Hon'ble High Court of Mumbai as the Defendant have copied identical design in relation to identical kind of product namely electric fan.

Judgement/Order Date:14.09.2022
Case No. Interim Application (L) No. 28883 of 2022 in Commercial IPR Suit (L) No. 28877
Name of the Court: Bombay High Court
Name of Hon'ble Judge: R.I. Chagla Hon'ble Judge
Cause Title of Case: Atomberg Technologies Private Limited Vs Polycab India Limited

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Gopal Sabu and Others Vs The State of Madhya Pradesh and another

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Judgement Date:23.09.2022
Case No. MCRC No. 43601 of 2022
The High Court of Madhya Pradesh at Indore Bench
Hon'ble Justice Shree Rajendra Kumar Verma
Gopal Sabu and Others Vs The State of Madhya Pradesh and another

The Petitioner filed the subject matter Petition seeking ad interim relief against the Respondents 1-3. The subject matter criminal complaint was filed against the Respondent No.1 to 3 being aggrieved of use of Trademark SACHAMOTI Poha.

The Respondents alleged suppression by the Petitioner. The Petitioner suppressed that there is dispute between the parties regarding “SACHAMOTI” trade mark and the dispute of civil status are pending before the High Court of Delhi and the Delhi High Court allowed the

petitioners and respondent no.3 to use the trade mark but it also directed them not to claim themselves to be the true owner of trade mark “SACHAMOTI.

The Hon'ble High Court of Madhy Pradesh refused to grant any interim relief to the Petitioner after placing reliance of Hon'ble Supreme Court of India in S.P. Chengalvaraya Naidy vs. Jagannath reported as AIR 1994 SC 853 at p. 855 has elucidated this doctrine thus:

“The Courts of law are meant for imparting justice between the parties. One, who comes to the Court, must come with clean hands. We are constrained to say that more often than not, process of the Court is being abused. Property grabbers, tax evaders, bank loan dodgers and other unscrupulous persons from all walks of life find the Court process a convenient lever to retain the illegal gains indefinitely. We have no hesitation to say that a person, whose case is based upon falsehood, has no right to approach the Court. He can be summarily thrown out at any stage of the litigation.”

As in the given case, the Petitioner suppressed the factum of pendency prior civil dispute between the party. The Hon'ble High Court of Madhya Pradesh did not grant any relief to the Petitioner.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Claim Construction in a Process Patent

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Judgement Date:19.09.2022
Case No. CS COMM 349 OF 2022
Hon'ble High Court of Delhi
Jyoti Singh, H.J.
FMC Corporation Vs Natco Pharma

The Subject matter Suit pertains to infringement of Plaintiff's patent under Indian Patent No. 298645 (IN 645). The subject matter Suit relates to claim construction of a process patent and applicability of Doctrine of Equivalence in this regard.

The Plaintiff filed the subject matter Suit basing it's right in IN 645 which was a process Patent. The allegation of the Plaintiff in this case was that the Defendant was infringing the process patent of the Plaintiff. On the other hand, the defendant was, off course denying the infringement of the process Patent of the Plaintiff. This was the issue which was to be decided by the Hon'ble High Court of Delhi.

Vide its Judgement dated 19.09.2022 passed in Suit bearing CS COMM 349 of 2022 , the Hon'ble High Court of Delhi, in the matter titled as FMC Corporation and Ors Vs Natco Pharma Limited not with dealt with the issue of applicability of doctrine of equivalence in a process patent but also clarified this position as to what weightage has to be given to expert opinion of Scientific advisers appointed by the Court.

The subject matter Indian Patent No. 298645 (IN 645) was granted by the Controller of Patents, in favour of the Plaintiff on 06.12.2005. As per assertion of the Plaintiff, this Patent was a novel method for preparing "anthranilic diamide insecticide compounds" with a total of 12 claims.

This Patent was a process Patent for preparing "anthranilic diamide insecticide compounds" in which a carboxylic acid compound, an aniline compound and a sulfonyl chloride are combined together.

This case was filed against the Defendant alleging that the Defendant was also using similar method of activation of carboxylic acid moiety, in substantially the same way, i.e., coupling of carboxylic acid with aniline to achieve the same result, i.e., yield CTPR.

However the Defendant denied by asserting that in the Plaintiff's Patent, sulfonyl chloride is used as reagent for coupling carboxylic acid intermediate with aniline intermediate in a single step. While Defendant's process involves two separate and discrete stages , carboxylic acid intermediate is converted to an acid chloride using thionyl chloride in a first reactor and the bio-products so formed viz. SO2 and HCl gases are scrubbed in caustic soda solution to give NaCl and NaHSO3, which are useful in food and cosmetic industries; and acid chloride of step is reacted with amide intermediate in a second reactor to obtain CTPR. Thus allegation of infringement of Patent was denied by the Defendant.

The Plaintiff invoked the doctrine of equivalence to allege that even if the Defendant's process does not literally infringe the suit patent, it may be found to infringe on the bedrock of ‘equivalence. The Doctrine of Equivalents mandates that in the absence of literal infringement, a product may be found to infringe a patented product, if it is found to be its substantial equivalent.

While Defendant was asserting that element to element test has to be applied. The basic foundation of the Defendant argument was that the reagent used by the Plaintiff in the subject matter Patent i.e. sulfonyl chloride was an essential element in Plaintiffs’ process, on the contrary the Defendant uses thionyl chloride as the reagent.

Now the question was that , whether the Defendant can evade the doctrine of equivalence as alleged by the Plaintiff by relying upon this fact that the reagent used by the Plaintiff in their Patent was sulfonyl chloride and that the reagent used by the Defendant is thionyl chloride , which is different.

The Hon'ble High Court of Delhi summurized the applicabilty of Doctrine of Equivalence as advanced by the Plaintiff and Doctrine to element to element test, as argued by the Defendant by observing that the Doctrine of Equivalents must be applied to individual elements of the claim and an analysis of the role played by each element in the context of the specific patent claim will thus inform the enquiry as to whether a substitute element matches the function, way and result of the claimed element or whether the substitute element plays a role substantially different from the claimed element.

In such a situation , the role of different reagent applied by the Plaintiff in their process became important. For this Scientific advisors were appointed by the Hon'ble High Court of Delhi , who given their finding to the effect that sulfonyl chloride is an essential element of the suit patent. Thionyl chloride used as a reagent in the Defendant process, differs from sulfonyl chloride in its physical and chemical properties.

As Scientific advisers gave their finding to the effect that the essential element used by the Plaintiff and the Defendant in their respective Patent and respective product , i.e. sulfonyl chloride and Thionyl chloride are different in their physical and chemical property, the natural consequence would be that allegation of infringement has to fail.

The Hon'ble observed that weightage of of Scientific advisers has to be given and that Courts are not experts and should not substitute their views or opinion for those of the experts or specialists in the field. Thus Court declined the injunction to the Plaintiff as the Plaintiff was unable to establish that the process used by the Defendant in their product was equivalent to the Suit Patent Process.

From the afore mentioned discussion it is apparent that in cases pertaining to Process Patent, the Plaintiff is required to establish that the process used by the Defendant in its product is equivalent to the process used in the Plaintiff's Process Patent.

Doctrine of Equivalent does not require the element to element comparison of Plaintiff's and Defendant's Process. What court is required to see whether the essential feature of Defendant's process and Plaintiff's process are same or different? In doing so , the trifling differences has to be ignored. Thus if the Defendant imitates the essential feature of the Plaintiff's Process Patent then the same falls within the trap of Doctrine of equivalence.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Vasundhara Jewellers Vs Kirat Vinodbhai Jadvani

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Judgement Date:21.09.2022

Case No. CS COMM 363 OF 2022

Hon'ble High Court of Delhi

Navin Chawla,H.J.

Vasundhara Jewellers Vs Kirat Vinodbhai Jadvani

Plaintiff Trademark: VASUNDHARA

Plaintiff's Product: Jewellery

Plaintiff is registered proprietor of VASUNDHARA Composite Label

Defendant's Trademark: VASUNDHARA FASHION

Defendant's Product:Textile product

Injunction refused on the following ground.

1. VASUNDHARA is common name.

2. Plaintiff does not have word per se registration. Its only have label registration. Hence by virtue of Section 17,it can canot assert individual right in the Trademark VASUNDHARA.

3. Goods of the Plaintiff and defendant are thought , cognate, still not identical.

4. Plaintiff is based in Delhi, while Defendant is based in Gujarat

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Tata Sons Pvt.Ltd. Vs Hakunamata Tata

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Judgement  Date:19.09.2022
Case No. FAO OS COMM 62 OF 2022
Hon'ble High Court of Delhi
Mukta Gupta and Manoj Kumar Ohri , H.J
Tata Sons Pvt.Ltd. Vs Hakunamata Tata

The Appeal was filed against the Order where by the Hon'ble Single Judge casted his doubt on the jurisdiction of the Hon'ble Court  to entertain the suit.

Still suit was entertained by the Single Judge, still injunction was refused.

The Hon'ble Division Bench allowed the Appeal and granted the injunction by observing that web sites of the Defendant was interactive in nature. Hence the Court was having Jurisdiction to entertain the Suit.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Laboratoire Griffon Vs Harrissa Healthcare

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Judgement Date:15.09.2022

Case No. Interim Application (L) No.25388 of 2022 in Commercial IP Suit No.25387 of 2022

Hon'ble High Court of Bombay

R.I.Chagla , H.J

Laboratoire Griffon Vs Harrissa Healthcare

Plaintiff's Trademark:GLIMET

Defendant's Trademark:ALMET

Ex parte injunction granted 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Sterlite Technologies Limited Vs HFCL Limited

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Judgement Date:14.09.2022
Case No. CS (COMM) 19/2022
Hon'ble High Court of Delhi
Prathiba M Singh , H.J
Sterlite Technologies Limited Vs HFCL Limited

What are the circumstances where a defendant could be allowed to use the principle of mosaicing to defeat a patent? Or in other words, how the Hon'ble Court would evaluate which of the prior arts cited by the Defendant are relevant for the purpose of mosaicing.

The Hon'ble High Court of Delhi, in its recent judgement dated 14.09.2022 passed in Suit bearing CS (COMM) 19 of 2022 titled as Sterlite Technologies Limited Vs HFCL Limited, considered this argument of the Plaintiff regarding mosaicing of prior art and put some light on this issue. 

The subject matter suit was filed seeking infringement of Patent No. IN335369, which was granted to the Plaintiff in relation to Optical Fiber Cables, which was granted to the Plaintiff on 20.03.2020 with a priority date of 29.03.2016. The suit was filed by the Plaintiff on the grounds inter alia that the optical fibre cables of the Defendant's are violating the subject matter patent and, accordingly, an ex parte injunction dated 12.01.2022 was obtained. 

Vidé In the judgement dated 14.09.2022 passed by the Hon'ble High Court of Delhi in the afore mentioned suit, the application of the Plaintiff under Order 39 Rule 1 and 2 CPC and the application of the Defendant under Order 39 Rule 4 CPC was disposed off. 

As per the case of the plaintiff, the earlier optical fibre cables were of bigger diameter and required large ducts for installation. While the subject matter suit pertains to optical fibre cables, which have a smaller diameter and reduced weight, 

The main claim of the Suit Patent was that it had 16 optical fibers, whereas the Defendant's product only had 12 optical fibers. The defendant relied upon two basic prior arts. 

The Plaintiff sought to disregard these prior arts by raising the objection that these prior arts should be rejected as the defendant was trying to defeat the patent of the Plaintiff by mosaicing prior arts. 

However, the Hon'ble High Court of Delhi rejected this argument of the plaintiff by holding that mosaicing of prior art is applicable only in those cases where the defendant relies upon multiple prior arts which are totally unconnected to each other. As in the subject matter suit, the defendant relied upon only two prior arts and they are connected, hence it cannot be said that the defendant is trying to do the mosaicing of prior arts. 

The Hon'ble High Court of Delhi, in this case, was pleased to discuss two of the prior arts in order to defeat the novelty of the subject matter patent. The Hon'ble High Court of Delhi made a comparison between the basic features of the cited 2 prior arts with the subject matter patent and observed the basic similarity between all three are as under: 

Water swella tubes/sleeves are included in the suit patent. All three disclose the presence of jelly within the buffer tubes.

All three OFCs have ripcords and an outer sheath.

In the RJIL OFC cable, an aramid yarn is used for cross-binding of the buffer tubes along with a water-blocking tape.

The Gigacom uses a polyethylene lining and water-blocking yarn around the CSM;

 the suit patent OFC discloses a strengthening and a binding polyester, aramid or propylene layer and a water-blocking material. 

As per the observation of the Hon'ble Court, all the basic features of the suit patent were available in the 2 cited prior arts. Hence, the subject matter patent was liable to be defeated on the ground of lacking inventive step. 

Another reason for declining the injunction was that in the defendant's Optical Fiber Cables , only 12 fibre cables were used, while in the subject matter suit patent, 16 fibre cables were used. 

Though the Plaintiff sought to argue that the number of 16 fibre cables used is merely illustrative in nature and the defendant's product is covered under the Indian Patent, even if it uses only 12 optical fibres. This argument could not be appealed to the Hon'ble Court. 

The reason for rejecting this argument was that the Plaintiff itself had applied another patent application in which the number of optical fibres was not specified, while in the subject matter patent, the number of 16 optical fibres was specially mentioned.

Hence, it cannot be said that the number of optical fibres used in the subject matter patent, i.e. 16, was merely illustrative. Actually, it was one of the basic features and the defendant, by using 16 optical fibres, was out of scope of the subject matter patent. 

Thus, the Hon'ble High Court of Delhi, though rejected the interim injunction on the ground of lacking inventive step , also considered the 2 cited prior arts with respect to lacking novelty also. 

Prior art mosaicing is only applicable when multiple and completely unrelated prior arts are used to defeat the patent on the grounds of lack of inventive step. However, in this case, the defendant relied on only two prior arts that were linked, so it cannot be said that the defendant was attempting to mosaic prior arts. 

The result was that the Hon'ble High Court of Delhi, in the subject matter suit, considered two of the prior arts cited by the Defendant, which were similar and connected to some extent, for the purpose of lacking novelty. This is another aspect that the Hon'ble Court observed that these two cited prior arts may not be relevant for destroying the novelty but certainly for the purpose of lacking inventive step.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539