Filter

Open

Groundless Threats for Patent Infringement: Analysing S.106 of Patents Act,1970

06

APR

2022

INTRODUCTION

A groundless threat is one when a party threatens another party with legal proceedings without having a basis for the threats. The threat could be produced in the form of either written communication or orally. For instance, if a threat to prosecute for infringement is made where there has been no infringement, or the IP right of the owner is invalid, then the threat is held to be groundless.

PROTECTION AGAINST GROUNDLESS THREATS

To curb the problem of groundless threats, the Intellectual Property Laws has incorporated regulations which prohibit the owners of IP rights from making such aimless threats against individuals and businesses. Section 106 of the Patents Act, 1970 provides for a mechanism to protect the interests of individuals and companies against such baseless threats. Any aggrieved person who is being threatened can bring a claim for seeking relief against such a threat.

The aggrieved party of such a groundless threat may bring forward an action in the form of a suit in the Court against the acts as being unjustifiable and baseless. The Court after hearing the contentions made by the Plaintiff on the groundless threats may rule the following:

1) A declaration in the judgement by the court that the threats are groundless and unjustifiable to be faced by the aggrieved.

2) An interim or permanent injunction against the continuance of any groundless threats.

3) Any damages in lieu of monetary losses incurred or reputation being damaged by such groundless threats can be claimed in the Court of Law to be rewarded.

The court may grant all or any one of the reliefs as it may deem fit.

In such a suit, originally the burden of proof lies on the plaintiff to establish that the defendant’s IP rights are invalid. If the aggrieved party fails to establish the invalidity of the Patent, then the burden of proof shifts on the defendant. The defendant then has the responsibility to prove that the alleged infringer encroached upon the IP rights and committed infringement of the Patent thereof. If the defendant fails to prove any act of infringement on the part of the plaintiff, then the plaintiff is entitled to the remedies.

BATA INDIA LIMITED V. VITAFLEX MAUCH GMBH[1]

Background of Facts

Vitaflex is a distributor of shoes marketed under the brand “Nach Dr. Mauch. The shoe was manufactured for five-point pressure of foot and the patent application was also awaiting for this product. On the other hand, Bata was producing shoes that had six pressure point formation. A notice was issued by Vitaflex to Bata contending that there was infringement of Vitaflex’s IP rights.

This s a case of groundless threats by Vitaflex against Bata, and the plaintiff brought into the notice of the Delhi High Court that the threats were unjustified and no IP rights of the defendant were being violated. Bata further claimed damages for the groundless threats made by Vitaflex.

Bata argued that the patent filed by Vitaflex is still pending and is not yet registered to be infringed.

Judgement

The Delhi HC ruled that the threats made by Vitaflex in the form of legal notices were unjustifiable and wrong and Bata was entitled to seek injunction against any such threats under section 106 of the Patents Act, 1970.

BAJAJ AUTO LTD V. TVS MOTOR COMPANY LTD[2]

Background of Facts

TVS Motor launched its TVS Flame 125 CC Bike which eroded the excitement generated by plaintiff’s product Bajaj XCD 125 CC planned to launch on 9 September 2007, i.e. 10 days after unveiling of TS Flame. Bajaj Auto Ltd filed a suit under Section 108 of Patents Act, 1970 alleging that TVS Motor was infringing their patented technology by using the technology in manufacturing TVS Flame Bike. In the said suit, Bajaj Auto demanded for an injunction restraining TVS from infringing their patent in any manner.

In response to this suit, TVS filed another suit under Section 106 of the patents Act, 1970 stating that Bajaj Auto is making unjustified and groundless threats against them. They asked for permanent injunction forbidding the defendant from continuing the issuance of any such threats and demanded that the defendant should not interfere with the manufacturing, marketing, launch and sale of their new product TVS Flame. Additionally, they directed the defendant to compensate them by way of damages in lieu of the losses sustained by them due to the groundless threats.

Judgement

While pronouncing the judgement, the factors considered by the Honourable Supreme Court were- Whether TVS infringed Bajaj Auto’s patented technology and whether Bajaj Auto made groundless threats for acquiring monopoly over the automobile market.

The Court held that if the exact technological combination as patented was copied by TVS, then it would have amounted to infringement but since there were considerable improvements made, it was not to be considered as infringement[3].

The Court further ruled that even if a slightest variation or modification is made in the technology used, then it can not amount to infringement and hence ruled in favour of TVS Motor holding the threats made by Bajaj Auto as unjustified and groundless.

CONCLUSION

Groundless threats in IPR can hamper the research and development process and hence to protect individuals and businesses from such abuse, this provision of Patents Act, 1970 exists. It protects legitimate legal right of the aggrieved parties and promotes innovations and inventions among them without any scope of hesitation.

Author: Rushika Bakshi, an intern at Khurana & Khurana, Advocates and IP Attorney., in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com.

References:

[1] 2015 SCC OnLine Del 11505

[2] LNIND 2010 Mad 431

[3] Milind Parekh, Analysis on TVS Motor Company Limited v/s Bajaj Auto Limited (2009) Supreme Court, Legal Services India, https://www.legalserviceindia.com/legal/article-3886-analysis-on-tvs-motor-company-limited-v-s-bajaj-auto-limited-2009-supreme-court.html (Last Visited March 01, 2022, 4 PM)

About the Firm

Khurana and Khurana, Advocates and IP Attorneys
Address E-13, UPSIDC, Site-IV, Behind-Grand Venice, Kasna Road, Greater Noida - 201310, UP, National Capital Region, India.
Tel 91-120-4296878, 91-120-4909201, 91-120-4516201
Fax 91-120-4516201
Email info@khuranaandkhurana.com
Link www.khuranaandkhurana.com

Related Articles

22
NOV
2022
An Overview Of Arbitrability Of Intellectual Property Disputes
22
NOV
2022
INTRODUCTION The number of patents, trademarks and domain name registrations has increased exponent...

Read More

22
NOV
2022
MakeMyTrip Pvt. Ltd. v. Booking.com & ors. - Trademark Infringement by a Third Party Using Google Ad Words
22
NOV
2022
Introduction The internet or the cyberspace has had a significant impact on our personal and social...

Read More

04
NOV
2022
Protection of Copyrights in Indonesia
04
NOV
2022
Copyright law in Indonesia is a legal framework that encourages entrepreneurs to run their business ...

Read More

14
OCT
2022
Naked Licensing in the United States
14
OCT
2022
Introduction The term license is derived from the Latin word “license” which means to a...

Read More

08
OCT
2022
Trademark Licensing in Malaysia
08
OCT
2022
Introduction Licensing is a business arrangement commonly regarded as an alternative to franchising...

Read More

08
OCT
2022
Protection of Geographical Indications in the United States
08
OCT
2022
The use of GIs has become a contentious international trade issue, particularly for U.S. wine, chees...

Read More

14
SEP
2022
Vietnam Joins WIPO Copyright Treaty
14
SEP
2022
Copyright is an important part of intellectual property rights. Copyright protection plays a cruc...

Read More

08
SEP
2022
Compulsory Licensing in Indonesia
08
SEP
2022
Introduction Hepatitis C is one of viral diseases that requires special medication. As a viral dise...

Read More

08
SEP
2022
Interplay Between Intellectual Property Rights and Competition Law in the USA
08
SEP
2022
The relationship between intellectual property (IP) and disciplines regulating competition has attra...

Read More

15
AUG
2022
Patentability Search of Plants
15
AUG
2022
A patent search or patentability search is also known as a prior art search or a novelty search. Thi...

Read More

15
AUG
2022
Patent Laws of Malaysia
15
AUG
2022
Malaysia is a common law country and is governed by the doctrine of judicial precedent (stare decisi...

Read More

03
AUG
2022
Single Colour Trademarks - A Prevailing Conundrum
03
AUG
2022
There was a strong need to compete in the business sector due to expanding industrialization. ...

Read More

20
JUL
2022
Copyright Authorship to Artificial Intelligence
20
JUL
2022
Copyright is an exclusive right granted to the author of an original work. It is a protection provid...

Read More

20
JUL
2022
Removal of Unified GCC Patent System
20
JUL
2022
The Gulf Cooperation Council, also known as the Cooperation Council for the Arab States of the Gulf,...

Read More

15
JUL
2022
Compulsory Licensing For Expensive Medicines 
15
JUL
2022
The Belgian Health Care Knowledge Centre (KCE) has released a...

Read More

17
JUN
2022
Intellectual Property Risks with Respect to Digital Technology
17
JUN
2022
Introduction Throughout the life of an IP right, intellectual property risk management is the...

Read More

09
JUN
2022
All Comic Cons Titles Are Not Generic in Nature!!
09
JUN
2022
The case involves Dan Farr Production (Defendants) usage of the term “Salt Lake Comic Con&r...

Read More

27
MAY
2022
Patent of Addition under Indian Patents Act, 1970
27
MAY
2022
The possibility of improving or modifying an invention remains open once an invention has been devel...

Read More

18
MAY
2022
Frappuccino: Made By Starbucks and Used ONLY By Starbucks
18
MAY
2022
Introduction Who doesn’t like to indulge in the sweet, creamy and chilled Starbucks FRAPPUCCI...

Read More

09
MAY
2022
Trade Mark Dilution: A Case to be Looked Upon
09
MAY
2022
Adidas is a leading manufacturer of athletic apparel and footwear. Skechers is one of the largest f...

Read More

26
APR
2022
IP Protection in The Metaverse
26
APR
2022
Introduction Metaverse is a virtual reality world in which people are supposed to socialize, pla...

Read More

13
APR
2022
Fanfiction, Fan-Culture , Fan Art, and Copyright Law
13
APR
2022
Fanfiction, Fan-Culture, Fan art ,And Copyright Law In popular culture, fans take up a space of sign...

Read More

11
MAR
2022
Identical Trademarks: A dilemma of Textual interpretation v. Contextual interpretation of a Statute
11
MAR
2022
Introduction In the case of Renaissance Hotel Holdings INC Vs B Vijaya Sai (2022), an appeal was re...

Read More

03
MAR
2022
Indian Advent in Any Types of Arbitration of IP Dispute - The Need to Clear the Judicial Enigma
03
MAR
2022
The Indian advent in any types of arbitration of IP dispute judiciary has been active and diligent i...

Read More

11
FEB
2022
DRS Logistics Vs Google: Liability for Using Third Party Trademarks as Keywords
11
FEB
2022
INTRODUCTION With advancements in technology and the introduction of the Internet, our personal ...

Read More

  • 1
  • 2
  • 3
  • 4