Patent

The Clash of the Titans: Bajaj v TVS once again!


The motorcycle mega houses, Bajaj and TVS are at loggerheads yet again. The two companies are currently fighting it out over patents as well as disparaging advertisements. This post shall explore the recent developments in this controversy.

In 2007, TVS filed for a patent for its invention titled “Shock Absorber with helper spring” which Bajaj opposed. The Chennai Patent Office, in the pre-grant opposition found in favour of Bajaj and refused the patent filed by TVS. The orders of the Patent Office, passed on 5th July 2016 are summarized below.

The Patent Office Order

The invention related to a shock absorber for a vehicle and in particular, one with a helper spring (to aid the shock absorber). The applicants claimed that the helper spring had the property of absorbing and dissipating energy efficiently, thereby increasing the passenger ride comfort and durability of the shock absorber. Usually, there is a time lag of the damper in absorbing the energy and then releasing it to the surroundings which results in discomfort to the passengers.

In 2015, the applicant had replied to the First Examination Report (FER) issued by the Patent Office with amendments to its claims. The Patent Office was not satisfied with this reply and felt that the invention did not comply with the requirement of inventive step under Section 2(1)(ja) of the Patents Act.

During the opposition proceedings, the applicants amended their claims several times, both voluntarily and to comply with the requirements of the Patent Office. The Deputy Controller set aside the amendments as new matter was added by way of amendment which was outside the scope of Section 57(6) and Section 59 of the Patents Act, according to which the scope of the claims cannot be increased by amendments.

The opponents contested the grant primarily on grounds of lack of novelty and inventive step. The applicant cited the case of UK case of General Tire and Rubber Co. Ltd. v Firestone Tire and Rubber Co. Ltd., which explains the reverse infringement test. According to this test, if prior publication contains clear instructions to arrive at an invention which would infringe the impugned patent (if considered valid), then the requirement of novelty would not be satisfied. However, the Deputy Controller found that the opponents failed to prove enablement under Section 25(1)(b) of the Act.

The reverse infringement test, as mentioned above has hardly ever been used in India. This test was propounded in the Australian case of Meyers Taylor Pty Ltd v Vicarr Industries Ltd which held “[t]he basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”. Read more about this test here.

Unfortunately, the Deputy Controller failed to appreciate the subtle difference between the test of enablement and that of reverse infringement. The test of enablement is a straightforward test according to which if the impugned patent could have been reached by simply following the directions or descriptions of the prior art, it would be considered anticipated. On the other hand, the reverse infringement test lays down that if any invention reached by simply following the directions/descriptions of the prior art would infringe the impugned patent; the impugned invention would be anticipated. It would have interesting to see the Patent Office’s take on this test.

With respect to the requirement of inventive step, the Deputy Controller firstly held that the use of non-linear springs instead of the usual linear springs did not qualify as an inventive step because the non-linear spring was in fact, composed of several small linear springs put together. Secondly, it was held that the use of the cheaper Grade 2 steel instead of the commonly used Grade 3 steel was not an inventive step but a mere cost reducing substitution which would be obvious to a person skilled in the art. Thirdly, the court opined that the “Helper Spring” as claimed by the applicants was actually nothing but the old “PU Bump stop” which the applicants were simply calling by a different name. Hence, it was held that despite the fact that the invention had economic significance, it did not fulfill the criterion under Section 2(1)(ja) and was liable to be rejected on this ground alone.

On Section 3(f), under which the opponents had argued that the invention was a mere rearrangement, it was held that it must be shown that the devices were functioning independently of each other to prove non-patentability under this section. It was found that the shock absorber and helper spring were functioning dependently. Thus, this argument was rejected. However, the Patent Office found insufficiency of disclosure and ambiguity in the dependent claims and held that the patent was liable to be refused on this ground as per Section 25(1)(g), which states that  a patent may be opposed if complete specification does not sufficiently and clearly describe the invention.

This setback for TVS came right after it locked horns with Bajaj on the issue of disparaging advertisements and emerged victorious.

Disparaging Advertisement Claims

Right about the time the two companies were quarrelling over patents, TVS filed an application in the Madras High Court seeking an order of temporary injunction restraining Bajaj from continuing the advertisement which allegedly disparaged the TVS XL 100 by comparing fuel efficiency on the basis of allegedly false figures. According to the advertisement issued by Bajaj, the fuel efficiency of TVS’s product is less than 50% of Bajaj’s product. TVS contended that Bajaj was making false claims of being more cost effective, and superior to their products, thereby inducing the public to purchase Bajaj products only.

The court held that while puffing was allowed, there must be no disparagement of rival products. In the present case, it felt that the advertisement was comparing the two products on grounds of fuel efficiency alone and creating a false inducement in the minds of consumers. Hence, the court issued an interim injunction in public interest, restraining Bajaj from continuing its advertisements for two weeks.

Backstory

In 2008, two major motorcycle manufacturers- Bajaj and TVS started their battle which went all the way to the Supreme Court and gave us India’s first major non-pharmaceutical patent controversy. The dispute involved TVS Motor Co. Ltd.’s motorcycle “Flame” which used a twin spark plug technology. Bajaj claimed that it had a patent for this technology and that TVS was infringing this patent. It thus, filed a suit for permanent injunction to restrain TVS from using this technology in their products. Without dwelling on the merits, the Supreme Court directed that the suit be heard in the Madras High Court itself and allowed TVS to manufacture Flame motorcycles in the interim.

Further, the Court observed that parties in suits pertaining to intellectual property fought for years about the temporary injunction and hardly any suits were decided finally, which was not proper. The court directed that all Tribunals and Courts hear copyright, patent and trademark matters on a day to day basis and give final judgements within four months from the date of filing suit.

However, sadly, these directions of the Supreme Court are often flouted by Courts and Tribunals across the country; so much so that even in this very case, no final judgement has been given by the Madras High Court and the suit drags on!

The end of this saga is nowhere in sight. Spicy IP has covered the previous controversy extensively and shall continue to do so in the future.

(image from here)

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Vasundhara Majithia

Vasundhara Majithia is a fifth year student at National Law University, Jodhpur and a Senior Content Editor at the Journal of Intellectual Property Studies (JIPS). Intellectual property was introduced to her in her third year and she hasn’t quite gotten over it since. Her interests include an eclectic mix of Intellectual Property, Trade laws, Constitutional law, and commercial laws. When not frantically blogging, she can be found nose deep in fiction, researching serial killers, or cooking to escape hostel food.

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