YASHRAM LIFESTYLE BRANDS PVT. LTD., A COMPANY DULY

28/09/2021, 13:18 High Court of Karnataka Official Web Site

karnatakajudiciary.kar.nic.in/case_details_new.php 1/31

H.P.SANDESH 25/09/2021

ORDER ON I.A.NO.1/2020 INO.S.NO.4/2021 BETWEEN: 1. M/S.YASHRAM LIFESTYLE BRANDS PVT.LTD., A COMPANY DULYINCORPORATED UNDER THEPROVISIONS OF THE INDIANCOMPANIES ACT 1956, HAVINGREGISTERED OFFICE AT: 139/2,HOSUR ROAD, KORAMANGALA,BENGALURU-560095. KARNATAKA -INDIA, REPRESENTED BY ITSAUTHORIZED SIGNATORY MS.DEEPAA.KUMAR, MAJOR. 2. MS.DEEPA A.KUMAR, W/O MR. ANIL KUMAR, MAJORIN AGE, HAVING OFFICE AT 139/2,HOSUR ROAD, KORAMANGALA,BENGALURU-560095, KARNATAKA -INDIA. … PLAINTIFFS (BY SRI DYANCHINNAPPA, SR. COUNSEL FOR SRIPRANAV KUMAR, ADVOCATE) AND:M/S. ADITYA BIRLA FASHION ANDRETAIL LIMITED (MADURA F AND LDIVISION), A COMPANY REGISTEREDUNDER THE PROVISIONS OF THEINDIAN COMPANIES ACT 1956, HAVINGREGISTERED OFFICE AT: PIRAMALAGASTYA CORPORATE PARK,BUILDING A, 4TH AND 5TH FLOOR,UNIT NO.401, 403, 501, 502, LBS ROAD,KURLA MUMBAI, MUMBAI CITY MH-400070 IN REPRESENTED BY ITSDIRECTOR. ALSO AT: REGENTGATEWAY PLOT NO.5B,DODDANEKUNDI VILLAGE, KIADBINDUSTRIAL AREA, ITPL ROAD,BENGALURU-560048. ALSO AT: KHATANO.118/110/01, BUILDING 2DIVYASHREE TECHNOPOLIS, OFF HALAIRPORT ROAD, YEMALUR POST,BENGALURU-560037 … DEFENDANT(BY SRI GEORGE JOSEPH, MS.NIDHIPATIL AND MS.MARCHA GOVEAS,



ADVOCATS) THIS I.A.NO.1/2020 ISFILED UNDER ORDER XXXIX RULES 1AND 2 OF CPC PRAYING THIS COURTTO GRANT AN AD-INTERIM EX-PARTETEMPORARY INJUNCTIONRESTRAINING THE DEFENDANT, ITSEMPLOYEES, SERVANTS,ASSOCIATES, AGENTS OR ANYPERSON CLAIMING THROUGH THEDEFENDANT FROM USING,MANUFACTURING, MARKETING,OFFERING FOR SALE, SELLING,ADVERTISING ANY PRODUCT, WHICHIS EMBODIED IN PLAINTIFFS’GRANTED PATENT BEARING NO.IN306901, OR IN ANY MANNERINFRINGING THE PLAINTIFFS’EXCLUSIVE AND STATUTORY RIGHTSCONFERRED IN THE PATENT.I.A.NO.1/2020 HAVING BEEN HEARDAND RESERVED FOR ORDERS ON18.08.2021, THIS DAY, THE COURTPRONOUNCED THE FOLLOWING: Orderon I.A.No.1/2020 filed under Order XXXIXRules 1 and 2 of CPC The plaintiffs havefiled this application praying this Court togrant an ad-interim ex-parte temporaryinjunction restraining the defendant, itsemployees, servants, associates, agentsor any person claiming through thedefendant from using, manufacturing,marketing, offering for sale, selling,advertising any product, which isembodied in plaintiffs’ granted patentbearing No.IN 306901, or in any mannerinfringing the plaintiffs’ exclusive andstatutory rights conferred in the patentunder the name and style of “CottonSensation Stay Dry Period Panty”, “PeriodPanty” and/or under any other name, tillthe disposal of the suit. 2. In support of theapplication, an affidavit is sworn to byplaintiff No.2 that she is an authorizedsignatory of plaintiff No.1. It is further



sworn to that the plaintiffs are seeking fora decree of permanent injunctionrestraining the defendant from infringingthe plaintiffs’ Indian granted PatentNo.306901 and for other allied reliefs. It isthe claim of the plaintiffs that the plaintiffsare being given the exclusive proprietaryrights in respect of the said patent, theunauthorized use by the defendant ofmanufacturing, using, offering for sale,selling the very same product in respect ofwhich plaintiff No.2 was granted a patent,constitutes infringement of plaintiff’sproprietary and statutory rights conferredunder the Patents Act, 1970 and as aresult of the act of infringement, theplaintiffs are suffering irreparable loss andinjury. 3. The plaintiffs by innovativeproduct a “Sanitary Undergarment”claimed and granted the patent. Thepatent application was initially filed in hername and after grant of the patent, thesame has been assigned, withretrospective effect, in favour of plaintiffNo.1 and hence she is an inventor andgrantee of the patent, which is nowassigned in favour of plaintiff No.1. Thepatent is granted for a period of 20 yearsfrom 2009 and hence it is in force till 2029.It is also claimed that the patent granted inIN 306901 has 26 granted claims andspecifically mentioned in paragraphNo.8.1A that a sanitary undergarmenthaving a unique configuration of a fabricbody which is depicted in picture 200,which is of one or more layers configuredin the crotch region (103). The said fabricbody extends from the front portion (101)of the pelvic region to the rear portion(102) of the pelvic region thereby formingan elongated patch covering the crotchregion (103). In one of the embodimentgranted in IN 306901, at the mid-section ofthe crotch region (103), an additional layer



is provided and configured in such amanner that it forms a flap toaccommodate the sides of an absorbentpad. The said flap forms the first layer(701) over the fabric body (200), which isthe second layer (702). Thus, the saidfabric body blocks the flow of the bodyfluid of the wearer outside the saidsanitary undergarment and therebyprevents staining of the outer garment onthe front and rear part of pelvic region,crotch region and inner thigh regions ofthe wearer and thereby ensures comfort tothe wearer by allowing air permeability. Itis contended that upon perusal of theinvention granted under the patent, it canbe inferred that the sanitary undergarmentinvented therein is a sanitaryundergarment configured in a mannerwherein a fabric body is provided on thecrotch region of the sanitaryundergarment. 4. The plaintiffs have alsogiven the details of the invention patent inpictures both in the plaint and also in theaffidavit and details of numbers are alsoreferred in figures how the product hasbeen designed. It is also sworn to that inthe month of May 2019, it came to thenotice of the plaintiffs that a Company byname M/s. Shappon Haute Private Limitedwas infringing the plaintiff’s patent and theplaintiffs instituted action for such aninfringement by filing a suit for patentinfringement before this Court and thesame is numbered as O.S.No.4347/2019.It is contended that after the institution ofthe said suit, the plaintiffs learnt aboutseveral other manufactures infringing theplaintiffs patent number, but not limited tothe defendant herein. The plaintiffs uponlearning about the infringing activities ofthe defendant, conducted market searchand was shocked to learn the extent ofinfringement of the patent. These products



are nothing but a slavish knock off of theplaintiffs’ patented product. It is learnt inthe month of September 2020 that thedefendant is manufacturing, marketing andselling the infringing products. Onexamination of the products and thepatent, described the figures of theproduct for which patent is granted orpresent in the products of the defendantmentioning in pictorial descriptionparticularly in 100, 101, 101a to 101d, 102,102a to d, 103, 103a to 103c, 104, 105,701, 702 and 703. Hence, it is clear thatthe defendant’s products are clearlynothing but the very same inventedproduct for which the plaintiffs have beengranted the patent. 5. The plaintiffs wereshocked to learn that the defendant wasselling certain products by using a similar,same and/or identical mark namely“Cotton Sensation Stay Dry Period Panty”.When the plaintiffs looked into the websiteof the defendant, the plaintiffs were furthershocked to see that the defendant wasselling certain products claiming to be“Made of cotton and stretch blend, thiseveryday panty has innovative, leakprooftechnology at the crotch for thoseunpredictable spills during the day ornight.” It is learnt that the defendant ismanufacturing and selling a sanitaryundergarment as “Cotton Sensation StayDry Period Panty” and further claims themto be made of cotton and stretch blend,this everyday panty has innovative, leakproof technology at the crotch for thoseunpredictable spills during the day ornight. 6. It is also contended that uponperusing the defendant’s products anddescription given by the defendant, it isclearly evident that the defendant isunauthorisedly, blatantly and slavishlyusing and copying the invention claimedand granted in favour of the plaintiffs with



an intent to deceive the public at large. It iscontended that upon learning theuniqueness of the product invented by theplaintiffs over which an Indian patentbearing number IN 306901 and US patenthave been granted, the defendant withulterior motive of usurping the hard work ofthe plaintiffs, has blatantly, fraudulentlyand with dishonesty has infringed thestatutory rights of the plaintiffs grantedunder the provisions of the Indian PatentsAct, 1970. Hence, it is appropriate torestrain the defendant from selling theproduct in the market. 7. The learnedcounsel for the plaintiffs in his argumentsin support of his contentions raised in theplaint and also in the affidavit mainlycontends that the invention over which thesaid patent was granted relates to asanitary undergarment, which is used bywomen during the menstrual cycle. Thelearned counsel would contend that theundergarment has various designs andfittings, namely, boxer, brief, hipster, bikiniand so on. The plaintiff No.2 in herinvention has invented a uniqueundergarment, which provides acomfortable fit to the wearer during themenstrual cycle and further achieves thecharacteristics like preventing leakage ofbody fluid through any portion of thesanitary undergarment, preventing stainingof an outer garment, being washable andreusable and the defendant hasunauthorisedly used the patent of theplaintiffs in its product. 8. The claim of thedefendant is that the same is not infringingthe plaintiffs’ invention since the defendantis not using flaps in the product. It iscontended by the defendant that theessence of the invention is not a leak proofproduct but in creation of flaps for holdingthe wings of a sanitary pad and there is nonovelty in the invention as the same



existed before. The defendant has alsosought for revocation of the plaintiffs’patent and hence the plaintiffs are notentitled for temporary injunction. Thedefendant also contended that theplaintiffs have not commercially exploitedthe patent. 9. The learned counsel for theplaintiffs in his arguments wouldvehemently contend that the plaintiffs havemade out a prima case, balance ofconvenience and the plaintiffs are sufferingirreparable loss and injury. It is contendedthat a sanitary undergarment has variousdesigns in terms of fittings. Some of theimportant designs are a boxer fitting,hipster fitting and brief fitting. Theinvention claimed in the patent relates to asanitary undergarment and in spite of theplaintiffs are having the patent, the veryconduct of the defendant is causinginfringement of the patent right of theplaintiffs. The learned counsel wouldcontend that claim No.1 of the patentrelates to a design having certain essentialfeatures. When claim No.5 is read alongwith claim No.1, it can be inferred that thesanitary undergarment claimed underclaim 1 is that of a boxer fitting and thepictures, which have been mentioned inthe plaint as well as in the affidavit,particularly 101, 102 and 103 i.e., frontportion, rear portion and crotch region ismulti-layered, which is depicted in picture701 and 702 and the same is to preventleakages of menstrual fluid out of theundergarment and staining the outergarment. When claim No.1 is read alongwith claim Nos.10, 11 and 13, it can beinferred that undergarment claimed thereinis that of a design which is not a boxer fit,which is nothing but a hipster or a brief fit.The essential ingredients for hipster fit isalso mentioned in the pictures 101, 102and 103 is multilayer to prevent leakage of



menstrual fluid and staining of outergarment. 10. The learned counsel alsobrought to the notice of this Court relevantfigures of boxer fit and hipster fit andmainly contend that the defendant’sproduct is that of a hipster fit. Uponperusing the defendant’s product with thatof the granted claims, claim Nos.1, 10, 11and 13, it can be inferred that all theessential ingredients present in the saidclaims are present in the defendant’sproduct, thereby infringing the grantedpatent. The learned counsel also broughtto the notice of this Court that similarity isfound in the plaintiffs’ product and thedefendant’s product in the crotch regioni.e., with multi layer, flaps absent andfabric body consists of three or morelayers and particularly in defendant’sproduct four layers. Hence, it is clear thatthe defendant has infringed the patent ofthe plaintiffs. 11. The defendant in thewritten statement at page No.5, paragraphNo.10 has admitted that the crotch regionof the infringing product is made of fourlayers, which is nothing but the inventiongranted in claim No.1, 10, 11 and 13 of thepatent. It is contended that whilecomparing the products, the defendantmischievously, compared the plaintiffs’boxer fit sanitary undergarment with theinfringing product, which is a hipster fit andhence the defendant is infringing the suitpatent in spite of the plaintiffs have anexclusive statutory right under Section 48of the Patents Act to prevent third partiesfrom the act of making, using, offering forsale, selling or importing for thosepurposes that product in India. Hence, it isclear that the statutory right conferredupon the plaintiffs has been violated by thedefendant and the same has to beprevented from carrying the acts of thedefendant making, using, offering for sale,



selling or importing, in a common market.The plaintiffs have never consented forsuch use by the defendant. The defendanthas not made any investmentswhatsoever, whether monetary orintellectually, towards research anddevelopment of the product over which theinvention is granted in favour of theplaintiffs. 12. The learned counsel wouldvehemently contend that on account of theact of the defendant, the plaintiffs havesuffered irreparable loss, harm and injuryas a result of infringement by thedefendant. The learned counsel wouldcontend that in the written statementspecific defence was taken by thedefendant for revocation of the patentcontending that claim Nos.1 to 26 are notan invention and anticipation through priorpublications and hence not patentable bygiving 5 US patent numbers. It is alsocontended that the suit patent lacksinventive steps and the claim specificationdoes not sufficiently and fairly describe theinvention and does not clearly define theclaims. It is also contended that the patentwas obtained on false representations.The plaintiffs have failed to disclose to theController the information required underSection 8 of the Patents Act. The patenthas not been commercially exploited andthese grounds clearly reflects that theplaintiffs have made out a prima facie caseof infringement and that the defendant hasmerely stated that the patent is not validwithout any substantive evidence and/or areport by a technical expert. 13. Thelearned counsel would contend that whilegranting temporary injunction, the Courthas to take note of the infringement of thepatent i.e., an invention cannot be a merearrangement or re-arrangement ofpreviously known integers all functioningindependently in a known way. These



integers, though all themselves previouslyknown, may be combined in a previouslyunknown way, acting independently, eachof them essential, to produce a new andimproved result. Each of the integers mustbe essential. If anyone can be taken outwithout affecting the final result, it is notessential. The patent must be read in apurposive manner to determine whatconstitutes its ‘pith and marrow.’ Whileconsidering the relief of temporaryinjunction at an interim stage, a Court isnot required to examine the validity of apatent so much as its vulnerability and thesame has to be tested not on a mere say-so, but with the aid of cogent andpersuasive technical and scientificmaterial, including reliable expert opinionsand other data. The fact that a patent hasbeen granted is not wholly immaterial atan interim stage. The Court has to lookinto whether the plaintiffs have made out aprima facie case and if any balance ofconvenience in favour of the plaintiffs andwhether the act of the defendant causesinfringement of the patent right of theplaintiffs. 14. The learned counsel for theplaintiffs in support of his arguments hasrelied upon the judgment of High Court ofMadras in the case of BAJAJ AUTO LTD.AND OTHERS v. TVS MOTOR COMPANYLTD. reported in MANU/TN/0174/2008 andbrought to the notice of this Courtparagraph Nos.18, 32, 48 to 51, 54, 55, 61and 63. In paragraph No.18 it is discussedwith regard to while considering the casesof interlocutory injunction, including anypatent action, the principle is the same i.e.,the plaintiff must prove/show prima faciecase, balance of convenience andirreparable loss. In paragraph No.32 takennote of that even after the grant of patentunder Section 43 of the Patents Act, 1970,which is given effect from the date of filing



of application for the patent under Section53(1)(i), it is open to a party, who isopposing the patent to prove that there areno inventive step in the invention of apatentee and therefore, the patent grantedneed not be taken into considerationatleast at the stage of granting an order ofinterim injunction. 15. In paragraph No.48discussed in detail with regard to it is theduty of the plaintiff to prove the prima faciecase, balance of convenience andirreparable injury in the event of notgranting interlocutory injunction. It is alsodiscussed with regard to revocation ofpatent under Section 64 of the Patents Actand mere filing of such an application,presumption should be drawn against thevalidity of patent. The fact that the patentcreates a statutory monopoly, of course,protects the patentee against anyunlicensed user of the patented deviseenabling the patentee to get an order ofinjunction, and considering that a patenthas been in existence for more than 5years, the patentee must be treated asactual user and there is a presumption ofits validity. The Court also discussed withregard to the question of infringement inparagraph No.51 and held that it is not inmuch dispute that except the use of threevalves, the product which is attempted tobe marketed by the respondent is primafacie similar to the applicant’s patentedproduct. It is also observed that for thepurpose of deciding the novel features toconstitute “pith and marrow” a purposiveconstruction has to be given in order tomake it essential requirement of theinvention that any variant would followoutside the monopoly. In paragraph No.61discussed with regard to test of balance ofconvenience that the plaintiffs’infringement has to be protected by theirpatents against completion by the



defendant until those patents expire. 16.The learned counsel also relied upon thejudgment of the Apex Court in the case ofBISHWANATH PRASAD RADHEYSHYAM v. HINDUSTAN METALINDUSTRIES reported inMANU/SC/0255/1978 with regard to theintellectual property rights, specification ofpatent and objectively of tests suggestedby authorities, lacked novelty andinvention patent. 17. The learned counselalso relied upon the judgment of theBombay High Court in the case of CTRMANUFACTURING INDUSTRIESLIMITED v. SERGI TRANSFORMEREXPLOSION PREVENTIONTECHNOLOGIES PVT. LTD. ANDOTHERS reported inMANU/MH/2895/2015 and brought to thenotice of this Court paragraph Nos.73, 74and 81, wherein ‘pith and marrow’ rule ofconstruction has been discussed. It is heldthat the Court should look to the ‘pith andmarrow’ of the invention to see whether apatent infringement had occurred. Inparagraph No.74 discussed with regard toas casting a duty on the Court to ascertainjust what it is over which the patenteeclaims monopoly i.e., to determining whatis essential to the patent, its ‘pith andmarrow’; and second, to deciding whetherthe removal of the so-called essentialwould defeat an infringement claim even ifit made no difference to the final result.The general principles are also discussedwith regard to the principles one maylegitimately draw in a combination patentinfringement case listing out the same in81.1 to 81.9 and observed that at aninterim stage, a Court is not required toexamine the validity of a patent so muchas it is vulnerability; and this is to be testednot on a mere say-so, but with the aid ofcogent and persuasive technical and



specific material, including reliable expertopinions and other data. 18. The learnedcounsel also relied upon the judgment ofthe Gujarat High Court at Ahmedabad inthe case of GALATEA LTD. v. DIYORAAND BHANDERI CORPORATIONreported in MANU/GJ/0977/2018, whereinit is discussed with regard to intellectualproperty rights and infringement when theplaintiff filed an application for grant oftemporary injunction on account ofinfringement suit patent. The Court has tosee whether the plaintiff has made out aprima facie case for grant of temporaryinjunction. 19. The learned counsel alsobrought to the notice of this Court thejudgment of the Delhi High Court in thecase of STRIX LIMITED v. MAHARAJAAPPLIANCES LIMITED reported inMANU/DE/2174/2009 and brought to thenotice of this Court paragraph No.10 and22 wherein it is observed that in order toraise a credible challenge to the validity ofa patent, even at an interlocutory stage,the defendant will have to place on recordsome acceptable scientific material,supported or explained by the evidence ofan expert, that the plaintiff’s patent isprima facie vulnerable to revocation. 20.Per contra, the learned counsel for thedefendant would vehemently contend thatthe case of the plaintiffs is that the patenthas 26 granted claims in terms ofdocument No.7 of the plaint. The patent isgiven for a sanitary undergarment forblocking flow of body fluids outside thesanitary undergarment. Though the patentwas applied on 26.05.2009, the same wasgranted on 06.02.2019. The plaintiff No.2is an inventor and patent was given for 20years and plaintiff No.1 is the assignee ofthe patent. The plaintiffs have continuouslyused the mark “Period Panty” and thedefendant is manufacturing and selling a



sanitary undergarment as “CottonSensation Stay Dry Period Panty” and thedefendant is selling the very same productin respect of which the patent has beengranted in favour of the plaintiffs and as aresult, the act of the defendant constitutesthe infringement of the plaintiffs’ rightsunder the Patents Act, 1970. 21. Thelearned counsel for the defendant wouldcontend that the product sold by thedefendant is a distinct and differentproduct from the plaintiffs’ patent andhence there cannot be any infringement.The essence of the plaintiffs’ invention ashighlighted by the plaintiffs is not in thecreation of a leakproof product, but in thecreation of flaps which allows the wings ofa sanitary pad to be folded inwardlythereby preventing chafing and staining.The defendant’s product does not haveany flaps. There is absolutely no novelty orinvention in the plaintiffs’ patent. Similarproducts have beenpatented/manufactured/sold for manydecades. Similar products are also beingmanufactured/sold by various companiesacross the world including India. Thelearned counsel would contend that thedefendant has sought for revocation of theplaintiffs’ patent by filing a counter-claimunder the proviso to Section 104 read withSection 64 of the Act. The plaintiffs’ patentis liable to be revoked under Section 64 ofthe Act on various grounds. Hence, theplaintiffs are not entitled to an order oftemporary injunction as the validity of thepatent is seriously disputed. 22. Thelearned counsel would contend that thedefendant has been selling the productsince 2018. The patent was granted on06.02.2019. The patent is relatively newand unestablished. The learned counselwould contend that while granting thetemporary injunction, the plaintiffs have to



establish prima facie case and balance ofconvenience but balance of conveniencelies in favour of the defendant because ifthe defendant is prevented from selling theproduct, it would lose out on its marketshare and the sales momentum it couldachieve in the interregnum. This losscannot be accounted for or calculated.Irreparable hardship will be caused to thedefendant if the interim order continues tooperate as the defendant has spent time,effort and money in marketing its productand establishing the same in the market. Ifinjunction is not granted, no hardship willbe caused to the plaintiffs. 23. The learnedcounsel would contend that no prima faciecase is made out by the plaintiffs. Theimpugned patent and defendant’s productare distinct. The plaintiffs’ patent essentialintegers is the fabric body (200) of thepatent consists of three layers; absorbentlayer, laminate layer and fabric layer. Butin the case of defendant’s it is differentfrom plaintiffs’ patent. The basic fabricbody of the product consists of only onelayer. It is only in the crotch portion thatthere are four layers i.e., wicking layerusing MW Tech cotton; absorbent layerwhich uses the moisture absorbent cotton;leakproof layer and body fabric. In thecase of plaintiffs’ patent, crotch portion ofthe patent consists of two additional layersto create flaps to hold the absorbent pad inposition which allows the wings of theabsorbent pad to be folded inwardlythereby preventing chafing. No such flapsare provided in the product of thedefendant. In the plaintiffs’ product, thedescription of the fabric or material used isvague and does not specify the exactmaterial used. But in the case ofdefendant’s product, the body fabric ismade of a cotton stretch blend using 96%cotton and 4% spandex. The crotch



portion consists of three additional layersapart from the body fabric. 24. The learnedcounsel would contend that an importantaspect is that the patent is for a boxer briefdesign in terms of document No.7 of theplaint. While the plaintiffs’ patentedproduct and the defendant’s product areboth hipster designs. The defendant’sproduct and the photos capturing thesame are produced as document No.D24and D25. A comparison chart has beenprovided by the defendant as documentNo.11. Hence, it makes it abundantly clearthat the products are distinct and there isno infringement. The learned counselwould contend that the plaintiffs’ patentclaims as against others it can be seenthat they point out the differences betweentheir claims and differentiate betweenthree and four layers, so as todemonstrate that their claims are differentfrom existing patented products. Theplaintiffs amend their claims to highlightthe subtle differences such as – layers,material used, manner of stitching andunless the defendant’s product is a replicaof the plaintiffs’ product, there cannot beany infringement. The learned counselwould contend that no valid assignmentcreated in favour of plaintiff No.1 and nolocus standi to file the suit. The learnedcounsel would contend that grant of patentis not a guarantee of its validity. 25. Thelearned counsel in support of hiscontentions relied upon the judgment ofthe Apex Court in the case of M/S.BISHWANATH PRASAD RADHEYSHYAM v. HINDUSTAN METALINDUSTRIES reported in (1979) 2 SCC511 and brought to the notice of this Courtparagraph No.32, wherein the Apex Courtheld that grant and selling of the patent, orthe decision rendered by the Controller inthe case of opposition, does not guarantee



the validity of the patent, which can bechallenged before the High Court onvarious grounds in revocation orinfringement proceedings. The learnedcounsel would submit that in the case onhand also the defendant has raised thecounter-claim for revocation of the patent.26. The learned counsel also relied uponthe Delhi High Court judgment in the caseof F. HOFFMANN – LA ROCHE LTD. ANDANOTHER v. CIPLA LIMITED reported in2008 SCC Online Delhi 382 and broughtto the notice of this Court paragraph No.67wherein it is held that in several judgmentsin India, including judgments of this Court,it has been consistently held that wherethe patent is of recent origin and its validityhas not been tested, the Courts should notgrant injunctions where infringement isalleged; it has also been held that if thedefendant alleges that the patent cannotbe sustained, the injunction should berefused. 27. The learned counsel alsorelied upon the judgment in the case of 3MINNOVATIVE PROPERTIES COMPANYAND ANOTHER v. M/S. VENUS SAFETYAND HEALTH PVT. LTD. AND ANOTHERreported in 2014 SCC Online Delhi 3362and brought to the notice of this Courtparagraph No.32 wherein it is held thatfrom the reading of the judgments ofBishwanath Prasad (supra) passed by theSupreme Court and Hoffman (supra) ofthis Court, it is clear that there is nopresumption of the validity attached to thepatent. The scheme of the Act clearlypermits to raise the challenge to the patentby the defendant in an infringementproceedings filed by the plaintiff before theCourt. 28. The learned counsel wouldcontend that burden to prove infringementis on the plaintiffs and they have todischarge the same under Section 104-A(1) of the Act which prescribes that the



burden of proof in cases of suitsconcerning infringement is primarily on thepatentee deriving title or interest in thepatent to prove that the infringing productis identical to the patent. The plaintiffshave failed to prima facie prove that thedefendant is using the same product thatis patented. The learned counsel contendsthat the defendant has made counter claimthat impugned patent is liable to berevoked since the subject of claims 1 to 26is not an invention within the meaning ofthe Act. 29. The learned counsel wouldalso contend that claim Nos.1 to 26 doesnot involve any inventive step and alsoclaim specification does not containsufficient details to enable a person towork the invention as required underSection 64(1)(h) of the Act. The learnedcounsel would contend that patent wasobtained on false representations bymisleading the Controller and the plaintiffshave failed to abide by the mandatorydisclosures under Section 8(1)(a) of theAct. The learned counsel would contendthat the matter involves serious questionsto be tried and cannot be decided at aninterlocutory stage and there is no balanceof convenience in favour of the plaintiffsand if injunction is continued, defendantwill suffer loss and the same cannot becompensated in any terms but the plaintiffsare claiming monopoly over ‘PeriodPanties’ which is a generic term used todescribe a range of underwear andpending revocation proceedings, therecannot be any interim order in favour ofthe plaintiffs. 30. The learned counsel alsorelied upon the judgment of the MadrasHigh Court in the case of TVS MOTORCOMPANY LIMITED v. BAJAJ AUTOLIMITED reported in 2009 (3) CTC 178and brought to the notice of this Courtparagraph Nos.59, 60, 61, 82, 84, 85 and



86. It is held that infringement suit andprinciples relating to grant of injunctionand prima facie validity of registeredpatent, there must be a strong prima faciecase, balance of convenience andirreparable injury are to be considered ininjunction application in intellectualproperty cases also. The plaintiff mustshow prima facie validity of patent andestablish prima facie infringement. TheCourt must consider strength of case ofplaintiff and strength of case of defendantand should be slow in granting injunctionwhere revocation application is pendingand serious controversy exist regardinginvention. No presumption can be drawnas to validity of patent and patent shouldbe construed in such manner thatconstruction which would make patentvalid should be preferred. The Courtshould find out whether infringement hastaken substance of invention ignoringomission or addition of certain parts. 31.The learned counsel also relied upon thejudgment of the Delhi High Court in thecase of SANDEEP JAIDKA v. MUKESHMITTAL AND ANOTHER reported in 2014SCC Online Delhi 2970 and brought to thenotice of this Court paragraph Nos.20, 24to 32 and 36 to 43 wherein it is held that ina case of injunction with regard toinfringement of registered patent, it is thecase of the plaintiff that the defendants arewilfully infringing that said patent i.e. byintroducing in their 4D theatre adevice/system which producesaromatic/heating, cooling and other effectscorresponding to the scene appearing in amovie. No prima facie case is made out bythe plaintiff to grant injunction as prayedfor. It is further observed that if aninjunction order is passed at this stage, thesame would be far greater than the plaintiffwhose device/product has not been



commercially used so far. The balance ofconvenience is in favour of thedefendants. 32. The learned counselreferring this judgment would contend thatthe said judgment is aptly applicable to thecase on hand with regard to the principlesgoverning the grant of injunction in casesof infringement of patent. 33. The learnedcounsel also relied upon the judgment ofDelhi High Court in the case of VRINGOINFRASTRUCTURE INC. AND ANOTHERv. INDIAMART INTERMESH LTD. ANDOTHERS reported in 2014 SCC OnlineDel 3970 and brought to the notice of thisCourt paragraph No.22 wherein it is heldthat onus is on the plaintiff to show that theinfringer is using the same technology thatis patented by them. The comparisonprima facie, at this stage, cannot be doneby the Court as it essentially involvesscientific evidence which needs great dealof specialized knowledge intelecommunications and experience as tohow cell phone technology functions. Thiscan be opined by an expert, who hasexperience in the field oftelecommunication and help the Court inunderstanding the patent. 34. The learnedcounsel also relied upon the judgment inthe case of M/S. NIKI TASHA INDIA PVT.LTD. v. M/S. FARIDABAD GAS GADGETSPVT.LTD. reported in 1984 SCC OnlineDelhi 73 and brought to the notice of thisCourt paragraph Nos.8 to 12 and 25wherein it is held that an interlocutoryinjunction will not normally be grantedwhere damages will provide an adequateremedy should the claim succeed and thequestion is whether the plaintiffs havemade out a prima facie case for the grantof temporary injunction has to beconsidered. 35. Having heard the learnedcounsel for the plaintiffs and the learnedcounsel for the defendant, the points that



arise for the consideration of this Courtare: (i) Whether the plaintiffs have madeout a prima facie case to grant thetemporary injunction against thedefendant? (ii) Whether the balance ofconvenience is in favour of the plaintiffs togrant the interim injunction? (iii) Whetherthere is any irreparable hardship, if interimorder is not granted in favour of theplaintiffs? (iv) What order? Point Nos.(i) to(iii): 36. Having heard the respectivecounsel appearing for the parties and alsothe principles laid down in the judgmentsreferred supra, this court has to analysethe material available on record to come tothe conclusion that whether it is a fit caseto grant an order of temporary injunction infavour of the plaintiffs. On this background,this Court also has to analyse the fact thatif the temporary injunction is granted infavour of the plaintiffs, whether it causesinconvenience and hardship to theplaintiffs or the defendant and alsowhether the plaintiffs have made out aprima facie case to grant an order oftemporary injunction. 37. It is the case ofthe second plaintiff that she is the inventorand granted a patent in respect of herinvention bearing No.IN306901. In supportof the said contention, she has producedthe Document No.4. It is also the case ofthe second plaintiff that she has assignedher rights in favour of the first plaintiff. It isalso not in dispute that the second plaintiffapplied for the patent in respect of herinvention on 26th May 2009 and the samewas granted on 6th February 2019. It isalso the contention of the plaintiffs that theinvention upon which the said patent wasgranted has 26 claims. The same wasgranted relates to a sanitary undergarmentwhich is used by the women during themenstrual cycle. It is the claim of theplaintiffs that their invention regarding



sanitary undergarment has variousdesigns and fittings namely, Boxer,Hipster, Brief and Bikini. It is the furtherclaim of the plaintiffs that the secondplaintiff’s invention is in respect ofinventing a unique undergarment whichprovides a comfortable fit to the wearerduring the menstrual cycle and furtherachieves the characteristics likepreventing leakage of body fluid throughany portion of the sanitary undergarment,preventing staining of an outer garment,being washable and reusable. It is also theclaim of the plaintiffs that the sanitaryundergarment which is designed toprevent leakages of menstrual fluid andthe specification figures also narrated inthe plaint as well as in the affidavit filed insupport of the application seeking for therelief of temporary injunction. 38. On theother hand, it is the contention of thedefendant that the product of thedefendant is not infringing the plaintiffs’invention and in the defendant’s product,there is no flaps. It is also the contention ofthe defendant that the essence of theinvention is not in the creation of leak-proof product but in creation of flaps forholding the wings of a sanitary pad. It isalso further contention that there is nonovelty in the invention as the same isexisted before. The defendant contendsthat it also made the counter claim torevoke the plaintiffs’ patent. 39. The maincontention of the plaintiffs is that they havemade out a prima facie case in their favourand also the balance of convenience liesin their favour. To substantiate theircontention, they have produced some ofthe important designs like boxer fitting,hipster fitting and brief fitting. The maininvention of the aforesaid designs is withregard to blocking the body fluid outsidethe sanitary undergarment preventing



staining of the outer garment andpreventing chafing at the inner thighregion. The said problems are solved bythe plaintiffs by an invention providing asanitary undergarment having theessential ingredients particularly, inrespect of claims No.1, 5, 10, 11 and 13along with the complete specification andthe same has been explained in thedifferent pictures as narrated in the plaintand also in the affidavit. The plaintiffs alsoexplained the same in picture No.101 inrespect of a front portion, picture No.102 inrespect of a rear portion and pictureNo.103 with regard to the crotch region.40. The plaintiffs also brought to the noticeof this Court in respect of the crotch regionwhich is explained in picture No.103having multi-layered and the same is toprevent leakages of menstrual fluid out ofthe undergarment and staining the outergarment. The picture Nos.701 and 702also show the said aspect. In support ofthe claims No.1, 10, 11 and 13, it iscontended that the undergarment claimedtherein is that of a design which is not aboxer fit, which is nothing but a hipster ora brief fit. The same is also explained inthe pictures with regard to the hipster fitand also the boxer fit. The contention ofthe plaintiffs that the defendant’s product isthat of a hipster fit. Upon perusing thedefendant’s product with that of thegranted claims in claims No.1, 10, 11 and13, it can be inferred that all the essentialingredients present in the said claims arepresent in the defendant’s product whichamounts to infringing the patent granted infavour of the plaintiffs. 41. On the otherhand, it is the contention of the defendantthat the defendant’s product is differentfrom the product of the plaintiffs. Theessential ingredients of the plaintiffs’product is of the fabric body consists of



three or more layers and in the case ofdefendant’s product, the basic fabric bodyof the product consists only one layer andin the crotch region, there are four layers.But no flaps in the product of thedefendant and hence, the same is distinct.The body fabric is made of cotton stretchblend using 96% cotton and 4% spandex.The crotch portion consists of threeadditional layers apart from the body fabricand description of the fabric used in theproduct by the plaintiffs is vague and doesnot specify the exact material used.Hence, it does not amounts to anyinfringement but the product of theplaintiffs and the defendant are hipster indesign. When such being the case, thedefendant’s product makes it clear that thesame are distinct and there is noinfringement. 42. After considering thecontentions of the respective counsel andperusal of the material available on recordthis Court has comes to the conclusionthat both the parties are selling theundergarments. The plaintiffs’ patent iswith regard to the period panty and thesame is invented by the second plaintiffand thereafter the right has been assignedto the first plaintiff. On the other hand, thedefendant has marketed the product thatis a sanitary undergarment has cottonsensation stay dry period panty. Hence, itis clear that the product of the plaintiffsand also the product of the defendant arein respect of period panty. It is also not indispute that the plaintiffs’ product havingthe specification of different layers, variousdesigns and fittings like boxer, brief,hipster and bikini. It is the specific claim ofthe second plaintiff that in her invention,she has invented a unique undergarmentwhich provides a comfortable fit to thewearer during the menstrual cycle andfurther achieves the characteristics like



preventing leakage of body fluid throughany portion of the sanitary undergarment,preventing staining of an outer garment.43. Now, the question is whether anyspecific invention and novelty are madeout by the plaintiffs. It is the contention ofthe defendant that there is no inventionand novelty and the same was inexistence prior to bringing the plaintiffs’product into the market and the defendantis also made the counter claim forrevocation of the patent. Whether there isan invention or novelty and also thequestion of revocation of the patent needsa trial and the same has to be provedscientifically. While considering the caseon hand for granting the temporaryinjunction and the same cannot beadjudicated at this stage. If the defendantis marketed the very same product givingdifferent name, it causes hardship to theplaintiffs and balance of conveniencewould be the consideration for grantingtemporary injunction. No doubt, in thedefendant’s product, there is no flaps ascontended by the defendant but the otheraspects with regard to the designs andfittings, are similar. But only in the absenceof flaps it will not make the same asdistinct product. 44. The similarity is foundwith regard to the claim No.1 of the patenta design having certain essential featuresand also claim No.5 is read along withclaim No.1, it can be inferred that sanitaryundergarment is that of a boxer fitting. Theother claim is read along with the claimNos.10, 11 and 13, it cannot be inferredthat undergarment claim therein is that ofa design which is not a boxer fitting whichis nothing but a hipster fitting and exceptthe flaps, the product of the plaintiffs andthe defendant are quite similar. It is alsonoted that the crotch region is multi-layered and the same is made with an



intention to prevent the leakages of bodyfluid through any portion of the sanitaryundergarment and staining of an outergarment. 45. No doubt, the very contentionof the defendant is that the product of thedefendant is distinct and there is no anyinfringement and also the said productwas existed prior to the plaintiffs’ product.The defendant also does not dispute thefact that the plaintiffs’ product consists of afabric body of three layers but it is thecontention of the defendant that its productis consists of only one layer. It is only inthe crotch portion, there are four layers.But the fact that there are three layers andfour layers in the product of the plaintiffsand the defendant is not in dispute.Similarly, the product of the plaintiffs andthe defendant is not in dispute except thefact that the flaps are not provided in theproduct of the defendant. The crotchportion of the product of the plaintiffsconsists of two additional layers to createflaps to hold the absorbent pad in positionwhich allows the wings of the absorbentpad to be folded inwardly therebypreventing chafing. But only the contentionof the defendant is that body fabric ismade of a cotton stretch blend using 96%cotton and 4% spandex makes nodifference if fabric is used is different andthe same will not makes out any distinctfeatures in the product. 46. Havingconsidered the products of the plaintiffsand the defendant except the flaps, all thespecifications and designs are similar andalso the said product is manufactured inorder to give protection during themenstrual cycle preventing leakage of thefluid but having the similar specifications.When such being the case, if the productof the defendant is marketed, it causeshardship to the plaintiffs and hence, thereis a balance of convenience lies in favour



of the plaintiffs since, the plaintiffs in theyear 2009 itself sought for a patent withthe specification in respect of the periodpanty. No doubt, the same was given inthe year 2019. But the fact is that thedefendant also marketed the very sameproduct recently. The contention of thedefendant is that there is no invention andnovelty in the product of the plaintiffs andalso sought for revocation of the patentgiven in favour of the plaintiffs. The furthercontention of the defendant that the patenthad obtained by misrepresentation and itis not an invention and all these aspectshas to be considered only after recordingthe evidence and it needs a trial. 47. Nodoubt, the defendant also invokedSections 104 and 64 of the Patent Act,1970 for revoking the patent given infavour of the plaintiff. The same cannot beadjudicated at this stage. The Court has toonly look into whether the plaintiffs havemade out a prima facie case and whetherthere is balance of convenience lies infavour of the plaintiffs. It is the specificcase of the plaintiffs that a sanitaryundergarment having various designs interms of fittings and some of the importantdesigns are boxer fitting, hipster fitting andbrief fitting which was invented by thesecond plaintiff having 26 claims in thepatent of the plaintiff and similar designsand fittings are made by the defendantwhich causes infringement to the statutoryright given to the plaintiffs. When thedefendant’s product is also having thesimilar specification particularly, in respectof the claim Nos.1, 5, 10, 11 and 13, itcannot be contended that the said productis distinct and different from the plaintiffs’product. 48. Having considered thematerial available on record and also thepictures which have been shown both inboxer fitting and hipster fitting, specifically



in pictures No.10, 102, 103, 701, 702, 703and also taking note of multi-layeredspecifications and all the essentialingredients present in the plaintiffs’ patent.The claim of the plaintiffs are foundsimilarity in the product of the defendantwhich amounts to infringing the statutoryright granted in favour of the plaintiffsunder the patent. Crotch region in theplaintiffs’ product also which is mentionedin pictures No.103, 701 and 702 alsopresent in the defendant’s product. In thecrotch region, except the flaps, the fabricbody consists of three of more layers inthe plaintiffs’ product and four layers in thedefendant’s product. When suchsimilarities are found in the product of thedefendant and the plaintiffs having thepatent from the year 2009 and granted inthe year 2019, it affects the statutory rightof the patent of the plaintiffs. Thedefendant also did not dispute the fact thatthe crotch region of the defendant’sproduct is also having the layer which ismade of four layers and when such beingthe case, the very contention of thedefendant is that it is not an invention,cannot be accepted at this stage. 49.Comparing the products of the defendantparticularly in respect of the plaintiffs’boxer fitting sanitary undergarments whichinfringes the statutory right of the plaintiffsin respect of the hipster fitting also. Whenthe defendant marketed the similarproduct, it is evident that it amounts toinfringing the right of the plaintiffs. It is thespecific contention of the plaintiff that theyare having an exclusive statutory rightunder Section 48 of the Patent Act, 1970and it is necessary to prevent the thirdparties from making, using, offering thesale of the similar product without theconsent and authorization from theplaintiffs, it amounts to infringing the right



of the plaintiffs. No doubt, the principleslaid down in the judgments referred supra,it is clear that the Court should be veryslow in granting the temporary injunctionbut when the material placed before theCourt prima facie evident that a patentright is infringed by the defendantmarketing the similar type of sanitaryundergarment giving any different nameusing different fabric body amounts to aninfringement. Under the circumstances,the Court has to see the prima facie caseand balance of convenience and causinghardship to invoke the discretion. 50. Theprinciples laid down in the judgmentsreferred supra and the submission of boththe plaintiffs and the defendant’s counsel,it is clear that unless a prima facie case ismade out infringing the right of theplaintiffs, there cannot be any temporaryinjunction. But as already discussed abovein detail with regard to the product whichare marketed by the plaintiffs as well asthe defendant and when the secondplaintiff has invented the same with anobject to prevent the leakage of body fluidduring the menstrual cycle and the sameis brought in the market, the same productcannot be marketed by the defendant. Ifthe said act of the defendant is accepted,it amounts to infringement as held by theApex Court as well as the High Courtsparticularly, Delhi and Madras High Courts.The principles with regard to granting oftemporary injunction is one and the same,they have to make out a prima facie case,balance of convenience and take note ofthe hardship. 51. Having considered thecase of the plaintiffs, the plaintiffs havemade out a prima facie case and there is abalance of convenience lies in their favourand if infringement is not prevented, itcauses hardship to the plaintiffs since theplaintiffs invented the said product and



brought the same into the market makinghuge investment and the plaintiffs have notgiven any authorization to the defendant tosimilarly place the period panty in themarket. 52. The very contention of thedefendant that such product was existedprior to the patent of the plaintiff cannot beaccepted at this juncture and it requires atrial both in respect of the contention of theinvention and also the grounds urged inthe written statement with regard to therevocation of the patent of the plaintiffs.Admittedly, there is a patent in favour ofthe plaintiffs and the same was applied inthe year 2009 and granted in the year2019. Under the circumstances, I do notfind any force in the contention of thedefendant that its product is distinct anddifferent from the plaintiffs’ productexclusively. The product of the defendantis having similar claims and similarspecifications comparing to the product ofthe plaintiffs. Merely because of absenceof flaps, it will not make it as distinct anddifferent product. If temporary injunction isgranted, it will not cause any hardship tothe defendant or otherwise it amounts tocausing hardship to the plaintiffs andbalance of convenience is in favour of theplaintiffs. Under the circumstances, I am ofthe opinion that the plaintiffs have madeout a case to grant the temporaryinjunction and ad-interim temporaryinjunction is already granted and the sameis in force, hence, this Court only has tomake it as absolute instead of vacating thead-interim temporary injunction granted infavour of the plaintiffs. Point No.(iv): 53. Inview of the discussions made above, Ipass the following ORDER The applicationfiled by the plaintiffs under Order XXXIXRules 1 and 2 of CPC is allowed and thetemporary injunction granted earlier ismade as absolute.



Documents

YASHRAM LIFESTYLE BRANDS PVT. LTD., A COMPANY DULY