Delhi High Court
Strix Limited vs Maharaja Appliances Limited on 10 September, 2009
Author: S. Muralidhar
Bench: S. Muralidhar
IN THE HIGH COURT OF DELHI AT NEW DELHI
I.A. No.7441 of 2008 in C.S. (OS) No.1206 of 2008
Reserved on : 4th September, 2009
Decision on: 10th September, 2009
STRIX LIMITED ..... Plaintiff
Through: Ms. Anuradha Salhotra with
Ms. Bhawna Gandhi, Mr. Aminesh
Mishra and Ms. Doyel Sen Gupta,
Advocates.
versus
MAHARAJA APPLIANCES LIMITED .... Defendant
Through: Mr. Manav Kumar,
Mr. Sushant Singh, Ms. Neha Kapoor
and Mr. Akash Chandra Akya,
Advocates.
CORAM:
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether reporters of the local newspapers be allowed to
see the judgment? No
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in the Digest? Yes
JUDGMENT
S. Muralidhar, J.
1. This is an application filed by the Plaintiff under Order XXXIX Rules 1 & 2 CPC seeking an ad-interim injunction to restrain the Defendant from infringing the registered design and patented invention of the Plaintiff under No. 192511/95 or any part thereof as detailed in the claim of the patent. An interim injunction is also sought against the Defendant to restrain it from manufacturing, using, selling and/or importing the „Maharaja Whiteline‟ electric kettle Model No. EK 172. C.S. (OS) No.1206/2008 Page No.1 of 14
2. The Plaintiff states that it is a company incorporated in the year 1951 under the name and style of „Castletown Thermostats‟ and existing under laws of the Isle of Man having its registered address at Forrest House, Ronaldsway, Isle of Man, IM92RG, British Isles. The name of the Plaintiff was changed to „Strix Limited‟ in the year 1981.
3. The Plaintiff claims to be the world‟s leading manufacturer, inter alia, of temperature controls and cordless interfaces for kettles, jugs and a wide range of water boiling appliances, selling in over 40 countries in the world. It is stated that Strix Controls are presently used over one billion times a day worldwide by over 20 per cent of the population across the globe.
4. The controls/inventions of the Plaintiff are used by the kettle manufacturers to give their products extra features. They are designed to work in conjunction with the heating element of kettles and are the means to the kettle switching off when the water boils, thus protecting them from getting damaged in case the appliance is not filled with liquid. A list of the famous brands selling appliances that contain the Plaintiff‟s controls has been set out in paragraph 6 of the plaint. It is claimed that these include Philips, Tefal, Rowenta, Morphy Richards, Russell Hobbs, Braun, Kenwood and Bosch Siemens.
5. The Plaintiff holds a product patent number 192511/95 in respect of „Liquid Heating Vessels‟. A certified copy of the certificate granting the above patent in favour of the Plaintiff is enclosed with the list of C.S. (OS) No.1206/2008 Page No.2 of 14 documents filed by the Plaintiff. The Plaintiff‟s patent was granted on 11th November, 2005 and is valid for a period of twenty years from the date it was applied for, i.e. 9th June, 1995.
6. According to the Plaintiff in terms of Section 48 of the Patents Act, 1970, a patent holder can enforce its rights against all third parties who are enjoined to use the patent only with the prior permission of the patent holder. The Plaintiff claims that Strix U10 Series Controls were sold by it first in 1996. It is claimed that the product patent was first used in India in the year 2002. The principal claim of the patent is that of a liquid heating vessel comprising a liquid receiving container and an electrical heating element provided in thermal contact with the base of the container. It is stated to contain a thermally sensitive overheat control comprising of at least two thermally responsive sensors arranged "in good thermal contact with and at spaced apart locations on the base of the container or the element said sensors individually being operable, in the event of said element overheating due to the vessel being switched on dry or boiling dry but not during normal boiling operation of the vessel so as to interrupt or reduce the supply of electrical energy to the element." In other words, the control works based on sensing the temperature of the element. The element gets switched off once a certain temperature is reached. For the sensors of the Plaintiff‟s patented product to work, therefore, there is no need for the container itself to contain the liquid.
C.S. (OS) No.1206/2008 Page No.3 of 14
7. The Defendant is an Indian company engaged in the business of manufacturing and selling of electrical appliances including electric kettles. According to the Defendant, electric kettles were earlier being supplied by the Plaintiff to the Defendant in the years 2005-2006. The Defendant states that the products of the Plaintiff were of inferior quality and, therefore, the Defendant commenced importing electric kettles containing the impugned heating element, from China. The Defendant states that it did not at any point in time manufacture the said heating element installed in the kettles. The Defendant states that they are traders and have not undertaken any manufacturing activity. The Defendant claims to have imported the product bona fide from China and states that the supplier in China from whom the Defendant imported the product in question held a patent inclusive of the heating element installed in the kettle.
8. Ms. Anuradha Salhotra, learned counsel for the Plaintiff, points out that the patent has been validly granted to it and has not been revoked till date. The patent has been worked for over six years as its product was introduced in the market in the year 2002 itself. The product has an electrical sensor which is linked to the element and senses the increase in the temperature of the said element. It is however not a sensor vis-a-vis the liquid in the vessel. It is submitted that the attempt by the Defendant to sell an electric kettle using a similar product (sensor) is a blatant infringement of the Plaintiff‟s patent.
9. Paragraph 14 of the application indicates in a chart form that the C.S. (OS) No.1206/2008 Page No.4 of 14 features of the product of the Defendant are more or less a copy of the features of the invention of the Plaintiff. It is pointed out that even in the written statement, the Defendant has not denied that it is infringing the Plaintiff‟s patent but has only raised an objection as to the validity of that patent by contending that it was based on a prior art in the form of an European Patent.
10. It is also pointed out that the Defendant has till date not indicated the name of the supplier in China from whom the electric kettles have been imported and sold by it in India. The Plaintiff states that it has successfully litigated in China against the infringement of its patent by three Chinese companies. Reliance is placed on the judgment in M/s. National Research Development Corporation of India, New Delhi v. The Delhi Cloth & General Mills Co. Ltd. AIR 1980 Delhi 132.
11. Appearing for the Defendant Mr. Manav Kumar, learned Advocate refers to the decision in M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Industries AIR 1982 SC 1444 and, in particular, paragraphs 18, 19 and 21 thereof. Referring to Sections 3 (d) and 3 (f) of the Act, it is pointed out that in order to be patentable, the product must be an improvement on a known substance and something more than a mere workshop improvement. The process must satisfy the test of constituting an inventive step. The improvement must produce a new result or a new or a better article.
C.S. (OS) No.1206/2008 Page No.5 of 14
12. According to the Defendant, the electric kettle of the Plaintiff containing the sensors was a normal feature and did not constitute an inventive step. It is submitted that the European Patent constituted the prior art which taught the patent for which the Plaintiff holds registration. Moreover, the drawings submitted to the European Patent Office created a doubt as to the validity of the patent. It is contended that the invention that has been patented is, in fact, not a new one but is at best a re-arrangement of an existing invention which in any way was taught by the prior art which is available for anyone to commercially exploit. Reference is also made to the decision in Niky Tasha India Private Ltd. v. Faridabad Gas Gadgets Private Ltd; AIR 1985 Delhi
136.
13. As regards the patent of the Chinese supplier, it is submitted that the Defendant has written to it and is awaiting a reply. Reference is made to Section 107A of the Act which stipulates that the importation of patented products by any person from a person who is duly authorized under the law to produce and sell or distribute the product shall not be considered as an infringement of the patent. It is submitted that as and when the Chinese supplier informs it of the patents held by it, the Defendant cannot be held to be infringing any patent in terms of Section 107A of the Act.
14. It is then pointed out that the patent in order to be held to be valid has actually to be worked. According to the Defendant, no evidence has C.S. (OS) No.1206/2008 Page No.6 of 14 been placed on record by the Plaintiff to show that the patented invention had been worked by it in India. According to the counsel for the Defendant no document has been placed on record by the Plaintiff to show that these kettles have been available since 2002 or that they have been manufactured and sold in India. Reliance is placed on the judgments of the Division Bench of this court in Franz Xaver Huemer v. New Yash Engineers 1996 PTC (16) (DB) and Dart Industries Inc. v. Techno Plast 2007 (35) PTC 129 (Delhi).
15. It is submitted by counsel for the Defendant that a trade variant of an existing product will not make an article a patentable one. This is the ground on which a counter claim has been filed in the present suit by the Defendant to challenge the validity of the patent. It is pointed out that the judgment of the Chinese Judicial Authority does not deal with the validity of the patent and, therefore, cannot help the case of the Plaintiff.
16. Finally, it is submitted that the Defendant is not a fly-by-night operator. It has a business turnover of several crores. If an injunction as prayed for is granted to the Plaintiff it will cause irreparable harm to the Defendant and, therefore, the balance of convenience is not in favour of the Plaintiff. It is submitted that the Plaintiff has not shown how it has worked the patent in India and, therefore, is not entitled to an injunction. Damages are an adequate remedy in the event of the Plaintiff succeeding and, therefore, no injunction should be granted at this stage. C.S. (OS) No.1206/2008 Page No.7 of 14
17. The submissions of learned counsel for the parties have been considered. One of the main grounds on which the grant of an injunction is being resisted by the Defendant is that it has raised a credible challenge to the validity of the Plaintiff‟s patent and, therefore, as long as the Defendant is able to show that the validity of the patent is vulnerable to challenge, injunction should be refused.
18. An internet print out of the extract of the specification in relation to EP0469758 has been placed on record by the Defendant. It talks of "a temperature control device for a fluid heating vessel". It further states:
"The control device serves to sense ambient temperature and control or adjust the set point at which power is reduced to an element for heating the fluid in the heating vessel, in order to prevent boil over of the fluid".
The prior art cited by the Defendant as teaching the invention in respect of which the Plaintiff holds the patent is the European Patent (EP 19910306560). According to the Defendant, the said European Patent is also in respect of a liquid heating vessel. The said patent appears to have been granted on 3rd April, 1998. It is for a temperature control device for a liquid heating vessel which device comprises liquid temperature sensing means adopted to provide an indication of the temperature of liquid in the vessel and control means adopted to regulate the supply of heat to the liquid during heating action which increases with the set point temperature.
19. It appears from the literature associated with the above European Patents that they envisage a mechanism by which the temperature C.S. (OS) No.1206/2008 Page No.8 of 14 control device senses the temperature of the boiling liquid and then prevents over heating or over boiling of the liquid. However, the patent of the Plaintiff appears to work on a different principle.
20. Learned counsel for the Plaintiff has placed a chart listing out the points of comparison between the Strix Patent and the European Patent. The essential difference between the Plaintiff‟s product and that manufactured using of the European patent would be that the Plaintiff‟s product prevents the overheating of the element. In the Plaintiff‟s product, the two sensors are placed in the vicinity of the heating element. Both in the Plaintiff‟s product, and in the product imported by the Defendant from the Chinese supplier, the two sensors are proximate to each other and are arranged to detect the temperature of the element. Both sensors are bimetallic actuators and are of the thermo-mechanical type. On the contrary, the European Patent sensors are not placed in the vicinity of the heating element. The drawings relevant to the European Patent have been seen by the Court. They show that one of the sensors is on the wall of the heating vessel and the other sensor is inside the vessel itself. Further, the two sensors in the European Patent are meant to detect the temperature of the liquid. They are not bimetallic actuators but "thermistors". They are not thermo-mechanical devices but purely electrical devices. Apart from the above features which distinguish the European Patent from the Strix Patent, it is seen that the Strix Patent sensors do not require any additional devices or circuit whereas the European Patent requires additional circuitry. In the European Patent, both the sensors have to work together whereas in the Strix Patent, they C.S. (OS) No.1206/2008 Page No.9 of 14 can operate independent of each other. As far as the carrier plate is concerned, the Strix Patent sensors are supported on a single carrier plate. The European Patent sensors are placed at different locations on the vessel. Further, the control device in the Strix Patent provides a double pole protection whereas the one in the European Patent does not.
21. The essential difference between the product manufactured using the Strix patent and the product made using the European Patent is this: the Strix patent product is a temperature control device which is linked to the element itself and, therefore, when the element reaches a certain temperature, the circuit is broken and the device is switched off. This prevents the overheating of the element itself. Therefore, even if there is no liquid in the vessel and the vessel is switched on, the element will not get damaged on account of overheating. As far as the European Patent is concerned, its mechanism operates by the temperature control device sensing the temperature of the liquid and not of the element. If there is no liquid in the vessel, the sensor will not get activated and therefore the overheating of the element cannot be avoided thus leading to it being damaged. It cannot, therefore, prima facie be said that the Strix Patent is not an inventive step over the European Patent and, therefore, is not patentable as such. Of course, these are only tentative views at an interlocutory stage. A final view will be taken by the Court, at the end of the trial, upon an independent assessment of the evidence, uninfluenced by this order.
22. It was contended by learned counsel for the Defendant that at an C.S. (OS) No.1206/2008 Page No.10 of 14 interlocutory stage, the Defendant should be held to have discharged its burden of raising a „credible challenge‟ to the validity of the Plaintiff‟s patent by merely pointing out the existence of the European Patent. This court is unable to agree. In order to raise a credible challenge to the validity of a patent, even at an interlocutory stage, the Defendant will have to place on record some acceptable scientific material, supported or explained by the evidence of an expert, that the Plaintiff‟s patent is prima facie vulnerable to revocation. The burden on the Defendant here is greater on account of the fact that there was no opposition, pre-grant or post-grant, to the Plaintiff‟s patent. In Beecham Group Ltd. v. Bristol Laboratories Pty Ltd. (1967-68) 118 CLR 618 and Australian Broadcasting Corporation v. O'Neill (2006) 229 ALR 457 it was held that the defendant alleging invalidity bears the onus of establishing that there is "a serious question" to be tried. In Hexal Australia Pty Ltd. v. Roche Therapeutics Inc. 66 IPR 325 it was held that where the validity of a patent is raised in interlocutory proceedings, "the onus lies on the party asserting invalidity to show that want of validity is a triable question."
23. In the instant case, the prior art cited by the Defendant, i.e. the European Patent, is not even prima facie a prior art that teaches the Plaintiff‟s invention. It works on a very different principle. Further, the Defendant has been unable to show that the Chinese supplier from whom it is purchasing the infringing product, holds a patent for it. It is not even the Defendant‟s case that the said product per se does not infringe the Plaintiff‟s patent. The only defence is that the Plaintiff‟s patent lacks C.S. (OS) No.1206/2008 Page No.11 of 14 novelty and its validity is vulnerable on the ground of obviousness. This, for the reasons already discussed, has not even prima facie been established by the Defendant. It is not possible to agree with the contention that the Plaintiff‟s patent is a mere trade variant of a known product. The Plaintiff has been able to prima facie show that it has been validly granted the patent which appears to be an inventive step in comparison with the prior art cited by the Defendant, viz., the European Patent. There is no merit in the contention that in terms of Section 3 (f) of the Act, the patent ought not to have been granted since the invention is a mere re-arrangement of known elements. In the considered view of this court, such a contention cannot be accepted on a mere averment by the Defendant. The Defendant will have to place on record some scientific literature supported by some credible expert opinion to show even prima facie that the Defendant‟s product is a mere re-arrangement of already known products. This burden has not been discharged by the Defendant.
24. The submission that the Plaintiff has not worked its patent in India is also without merit. It is the Defendant‟s own case that it was purchasing the product from the Plaintiff in the year 2005-2006 and when it found that the products were defective, it started importing the product from China. It matters little whether the product of the Plaintiff was defective. What is evident is that the Plaintiff did commercially exploit its patent by marketing the product in India since 2005. It is not in dispute that the Defendant was purchasing the said product in India from the Plaintiff. C.S. (OS) No.1206/2008 Page No.12 of 14 The decision in Franz Xaver Huemer, therefore, has no application to the facts of the present case.
25. In Niky Tasha, the court observed "when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made" an injunction can be refused as long as damages can provide an adequate remedy. In the considered view of this court, the said decision can also have no application in the instant case. It cannot be said that the challenge to the validity of the patent as raised by the Defendant here is a "serious" one.
26. As regards the applicability of Section 107A of the Act, the Defendant has merely averred that it has written to Chinese supplier to give information on the patent held by it and is awaiting a reply. The Plaintiff cannot be made to wait indefinitely for an injunction just because the Defendant is awaiting information from the Chinese supplier. As long as the Defendant is not able to produce any information about the patent held by the Chinese supplier, the court will proceed on the footing that there is no such valid patent held by the Chinese supplier. In any event, it cannot delay the protection that the Plaintiff is entitled to seek on the basis of the patent registered validly granted to it.
27. The contention that the Defendant is not a fly-by-night operator and its business turnover is in several crores of rupees is a contention that should work against the Defendant for the simple reason that the Defendant is not expected to import a product without first checking if the Chinese supplier holds a valid patent. The Defendant knew that the Plaintiff held a valid patent for the product that the Defendant was C.S. (OS) No.1206/2008 Page No.13 of 14 marketing viz., the electric kettle. Even according to the Defendant, it was purchasing this electric kettle from the Plaintiff in the years 2005- 2006. Therefore, there was an obligation on the Defendant, even while it imported the same product from China, to ensure that it was not violating the Plaintiff‟s patent.
28. In the considered view of this court, the Plaintiff is entitled to enforcement and protection of its patent vis-a-vis other manufacturers, sellers and importers. Section 48 of the Act gives the patent holder a right to prevent all other users from making use of the patent or commercially exploiting the patent held by the Plaintiff except with the prior permission of the Plaintiff.
29. Accordingly, this application succeeds. An interim injunction will issue during the pendency of the suit restraining the Defendant, its agents, servants and all others working for it from manufacturing and/or marketing the Maharaja Whiteline electric kettle Model No.EK172 or otherwise infringing in any manner the Plaintiff‟s patent No. 192511/95 or any part thereof.
30. This order has been passed on the basis of the pleadings and documents on record. The final decision in the suit, at the end of the trial, will be based upon an independent assessment uninfluenced by any of the observations made in this order.
31. IA No.7441 of 2008 is accordingly disposed of.
S. MURALIDHAR,J.
SEPTEMBER 10, 2009 'AA' C.S. (OS) No.1206/2008 Page No.14 of 14