A Googly From the Madras High Court

Parties, Forum and Decision
Plaintiff/Patentee/Registered Proprietor of the Design
: A.R.Safiullah
Defendants: Daniel, Indira Daniel, Rajapudeen and Mariappan
Forum: High Court of Madras
Decision: Ad interim injunction against the defendants for design infringement upheld, non-grant of ad interim injunction against defendants for patent infringement confirmed

Details of the Patent and the Technology Involved
Title of the Patent
: Food-grade laminated paper, method and apparatus for manufacturing the laminated paper
Patentee: A.R.Safiullah
Patent Number: 198079 (in para 3 of the judgment, it states 189079)
Date of Filing: 29th August, 2000 (the judgment inconsistently records it as 29th October 2000 in certain portions)
Date of Grant: 20th January, 2006

From what I could glean from the judgment, it appears that the patent relates to a process for manufacturing laminated paper in the shape of a banana leaf coated with food-grade green colour. Not only does this paper resemble a natural banana leaf, it smells like one too, according to the patentee. Further, he claims that the product is devoid of defects associated with natural banana leaves; what exactly are its features which make it better than a natural banana leaf is not elaborated upon in the judgment. As to the question if this patent claims a product as well, the Court held it didn’t.

Facts of the Case
The plaintiff claims that he first got a design registered for artificial paper in the shape of a banana leaf which design was later infringed by the fourth defendant. After a successful action against the fourth defendant, the plaintiff applied for a patent on a process for manufacture of food-grade laminated paper in the shape of a banana leaf and allegedly this patent was for the product as well.

During the course of an enquiry pursuant to an action against an infringer in Kerala, it was revealed that the third and fourth defendants had colluded to imitate the plaintiff’s patented process. Accordingly, the plaintiff filed an infringement suit under the Patents Act; in addition to this, he sought to enjoin the defendants from passing off the scheme and layout of his product (in short, trade dress) and also from infringing his registered design. Applications for temporary injunctions during the pendency of the suit for all the aforementioned causes were prayed for. It must be pointed out here that the prayer for common law relief was not pleaded for in the plaint or the affidavits submitted to the Court.

The case was transferred to a Single Judge of the High Court under s.104A of the Patents Act, 1970 after a counterclaim of invalidity was filed by the defendants. The Single Judge granted an ad interim injunction against the defendants preventing them from infringing the design and denied grant of the same for the patent. Both parties filed interlocutory appeals asking for part reversal of the order.

1. Is the Court empowered to grant ad interim injunctions when it is expressly not provided for under the Patents Act, 1970?
2. If a common law relief has not been pleaded for in the plaint, can the Court grant such a relief on its own?
3. Is the order on ad interim injunctions passed by the Single Judge valid?

I thought only Salman Rushdie was capable of authoring a literary roller coaster which usually leaves the reader in a daze and unsure of where the head or tail is; I guess this judgment from the Madras High Court could teach him a few things in weaving a periphrastic and soporific yarn, replete with errors, with not much value addition at the end of it all.

The instant case involves design and patent infringement issues besides passing off of trade dress, which could and should have been addressed with better coherence. However, the judgment keeps veering off course like a whimsical Ganges tributary, making it difficult to understand the ratio decidendi. I shall try to make it lucid for the readers.

A. Infringement of the Design and Passing off
The question which needs to be answered here first of all is if the principles for the grant of a temporary injunction have been satisfied. These general equitable principles have been dealt with in several posts on SpicyIP (most notably Mihir’s post, which is recommended reading for it questions certain fundamental aspects of grant of interim injunctions). In applications for an interlocutory injunction, the Court needs to ask if:

1. the plaintiff has shown that there is a serious question to be tried as to his entitlement to relief;
2. that the plaintiff is likely to suffer injury for which damages will not be an adequate remedy; and
3. that the balance of convenience favours the grant of an injunction.

These are the organising principles which are to be applied having regard to the nature and circumstances of the case under which issues of justice and convenience are addressed. But this judgment doesn’t reflect the application of these principles, atleast to the issues of design infringement and passing off.

Paras 37 and 43 of the judgment are the only ones which remotely touch the issue of design infringement with no articulation on substantive issues which have a bearing on the grant of an ad interim injunction. And these two paras too somehow manage to get squeezed in the rest of the judgment which discusses patent infringement at length, albeit with scant clarity.

The plaintiff claims to have a registered design; mysteriously enough, nowhere are the details of the registration mentioned in the judgement and from the looks of it, no evidence to this effect was produced before the Court. The Court seems to have proceeded with the assumption that a validly registered design exists in the name of the plaintiff.

The supposedly registered design was granted for the design of a banana leaf incorporated in a laminated paper. The defendants pointed out that the same design has previously been incorporated using silver, stainless steel, glass and ceramic and there is nothing novel, new or original about the design. This should have rightly led the Court to discuss, in brief, the novelty and originality of the impugned design.

Here’s my tuppence worth on the originality of the design. Under the Designs Act, 2000, a registrable design must be “new” or “original”; new refers to a situation where the design is wholly new in itself and “original” refers to application to a new subject-matter (A similar provision exists in the Registered Designs Act 1949 of the UK, where the “or” has been interpreted as being used in a conjunctive sense). In the instant case, obviously the design is not new, but does it qualify to be original?

The originality contemplated in the Designs Act requires that the design originate from a person by the exercise of his intellectual activity in rendering applicable a particular shape or a pattern to a particular object (or “article” as the Act calls it). Such application should not have occurred to anyone before. It bears out while in a “new” design, it is the design which takes precedence, in an “original” design, the subject-matter of application is the centre of attention.

This probably means that for a design to be original, its application to a particular subject-matter must stand out and in a sense, it must be unexpected. This is because originality is judged with reference to the kind of article for which it is registered, having regard to the general character or use of the article. Simply put, if one were to incorporate the design of Qutub Minar to the top of a pencil, its individuality is discernible. On the other hand, if the same were to be applied to a clock tower, it’s easier to draw parallels between the two (Qutub Minar and the Clock Tower) which diminishes (or probably extinguishes) any claim of originality.

Another important aspect which did not recieve its due is sourcing a design from nature. Merely because a design has been sourced from nature, it does not fail the test of originality, but where the subject of the design is well-known, narrower is the scope of protection since grant of monopoly to such a design could be unfair to the rest of the competitors or even the general public. Accordingly, application of the design of a banana leaf and that too for an article which is meant to serve and store food isn’t exactly original given that it has been applied to articles of a similar nature and use before.So notwithstanding the factum of registration (which is in doubt), aspersions on originality do make it difficult for the plaintiff to establish a prima facie case.

The plaintiff pointed out that he has earned about Rs.3 lakhs (this again in para 46 is mentioned as 3 Crores) from the product which according to him tilts the balance of convenience in his favour. Had this been a pure patent infringement case, such an argument would have found merit; but unfortunately for the plaintiff he has raised both design and patent issues in the same suit. This should have been avoided because the commercial success of the article could be due to its utilitarian features, which happens to be the plaintiff’s argument on the issue of patent infringement and ironically enough weakens his case on design infringement. This is because functionality of a “design” robs it of registrability under the Designs Act and so it cannot play a role in deciding the balance of convenience. Luckily for the plaintiff, neither of these issues (originality of the design and balance of convenience) were addressed by the Court.

On the issue of passing off, the Court missed out on the opportunity to discuss the issue of trade dress present a registered design. It is clear that trade dress goes beyond the design and in certain cases where the design is not original enough, trade dress may come to its aid. The only issue which the Court addressed in this regard was that absent a pleading in the Plaint for a common law relief, the Court could still grant an injunction under s.151 of the CPC which confers on it power to grant injunctions if the matter is not covered by Rules 1 and 2 of Order 39 of the Code.

And so, the Court upheld the ad interim injunction granted by the Single Judge against infringement of the design.

B. Infringement of the Patent
Similar cases have been discussed before on SpicyIP, so I shall restrict myself to the averments in this case. The defendants alleged there was no invention in making a machine which can manufacture artificial laminated food grade paper in the shape of a banana leaf. The plaintiff countered that nobody had thought of such an idea before and the success of the product was proof enough of its ingenuity.

The Court briefly referred to earlier decisions on the doctrine of immaterial variants and ruled that the plaintiff’s process did not amount to an invention, at best it could be termed an innovation since laminated paper technology was well known all over the world. I wonder if it follows that the use of such a technology in an altered form to produce a specific product lacks inventive step altogether? The 1969 decision of the Bombay High Court in Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning a Corporation etc., v. Unichem Laboratories and Ors is instructive in this regard for it lays down certain principles for judging an “invention” consisting of the production of new substances by known methods from known materials which can be supported from the point of view of subject-matter. According to the judgment:

(i) An invention consisting of the production of new substance from known materials by known methods cannot be held to possess subject-matter merely on the ground that the substances produced are new, for the substances produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge (the methods and materials employed being already known) or of useful materials (the substances produced being, ex hypothesis, useless).
(ii) Such an invention may, however be held to possess subject-matter provided the substances produced are not only new but useful, though this is subject to the qualification that the substances produced must be truly new, as opposed to being merely additional members of a known series (such as the homologues) and that their useful qualities must be the inventor’s own discovery as opposed to mere verification by him of previous predictions.
(iii) Even where an invention consists of the production of further members of a known series whose useful attributes have already been described or predicted, it may possess sufficient subject-matter to support a valid patent provided the somewhat stringent conditions prescribed by Maugham J., as he then was, in I.G. Farbenindustrie A. G.’s Patents, (1930) 47 RPC 289 as essential to the validity of a selection patent are satisfied, i.e. the patent must be based on some substantial advantage to be gained from the use of the selected members of the known series or family of substances, the whole (or substantially the whole) of the selected members must possess this advantage, and this advantage must be peculiar (or substantially peculiar) to the selected group.
In the instant case, the plaintiff’s invention may fall under the second or third category which may be further supported by its commercial success. Yet the Court denied an interim injunction with reason for such a ruling being fuzzy. In para 66, the judgment reads thus:
“Therefore, applying the principles laid down in the above cited decisions, we hold that even though the banana leaf is a natural product, the invention on the part of the applicant/plaintiff to use artificial laminated food-grade shape in the form of banana leaf with its colour with artificial scented smell is prima facie innovative and that in view of the Patent granted in his favour for the said product, he is entitled for protection pending disposal of the suit.”

And in para 71, it says:

“Since applications for opposition of grant of patent are pending adjudication before the appropriate authority, and that we are of the prima facie view that the concept of artificial banana leaf prima facie appears to be innovative only, we are not inclined to interfere with the order passed by the learned single Judge”…

…thereby confirming the denial of interim injunction against infringement of the patent. The only coherent part of this judgment is where it says, on the basis of a combined interpretation of ss.48 and 108, that a patentee is entitled to interim relief pending the disposal of the suit and that presumptive validity is indeed a factor to be considered at an interlocutory stage.

Both parties deserve a better judgment; one hopes that Courts apply precedents instead of merely citing them for the sake of citing them.


  1. AvatarAnonymous

    Since I am a Rushdie + SpicyIP fan, how about posting a link to the judgment… wont like to miss this delectable reading fare….

    Frequently Anon.


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