Mahesh Gupta & Anr. vs Tej Singh Yadav & Anr.
2009 Latest Caselaw 2824 Del

*          HIGH COURT OF DELHI: NEW DELHI

+                      CS (OS) No.1004/2008

%                      Judgment reserved on:         2nd July, 2009

                       Judgment pronounced on:      24th July , 2009

Mahesh Gupta & Anr.                              ..... Plaintiffs
                   Through: Mr. Sanjeev K. Tiwari, Adv. with
                            Ms. Rajeshwari, Adv.

                                 Versus

Tej Singh Yadav & Anr.                              ..... Defendants
                   Through : None

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                                     No

2. To be referred to Reporter or not?                                  Yes

3. Whether the judgment should be reported                             Yes
   in the Digest?

MANMOHAN SINGH, J.

1. The present suit has been filed by the plaintiffs, inter alia,

seeking injunction against the defendants restraining them from

infringing the registered patent no. 199716 of the plaintiff, copyright in

the product brochure as well as for delivery of the infringing materials,

rendition of account and damages.

2. The plaintiff no. 1 is the Managing Director of plaintiff no. 2

company. It is averred in the plaint that the plaintiff no. 1 introduced

the revolutionary reverse osmosis (RO) based domestic water purifiers

for the first time in India in 1999 and obtained registered Patent

No.199716. The copy of the said patent no. 199716 is proved and is

Exhibit PW1/1. The suit patent has also been tested at the renowned

Shriram Institute for Industrial Research and Spectro Analytical Labs

Pvt. Ltd. These water purifier system were/are being sold by the

plaintiff no. 2 under the mark KENT Mineral RO.

3. It is submitted that the plaintiff no.1 developed a system and

apparatus whereby water could be purified and yet essential minerals

may be retained therein. This revolutionary technology was called

„Mineral RO‟. The said unique and new technology - mineral water

purification has gained immense popularity among the general public.

Over the years, the plaintiffs have made substantial investment in

market research, development of new technology, advertising and

promotion of its unique patented mineral water purifier under the brand

name KENT & KENT Mineral RO. The products of the plaintiff have

been advertised regularly on television (SONY, STAR, ZEE TV etc.),

print media (Times of India, Economic Times, Hindustan Times etc.).

In fact, the plaintiffs were an associate sponsor of the ICC Cricket

World Cup 2007 which was aired on Set Max channel. Film stars such

as Hema Malini, Esha Deol, Ahana Deol also endorse the plaintiff‟s

mineral water purifier product under the mark KENT Mineral RO.

Copies of product brochure and instruction manual of plaintiffs are

exhibited as Exhibit PW1/6 and PW1/7 respectively. Copies of the

advertisements of the plaintiffs‟ products are on record and exhibited as

Exhibit PW1/8 to PW1/11.

4. It is stated that due to the extensive advertising of products of

the plaintiffs, the mineral water purifier of the plaintiffs has over a short

span of time gained immense popularity amongst the general public

such that the public associates water-purifiers embodying this

technology exclusively with the plaintiffs. The mineral water purifier

has been so successful and popular that it won the „Best Domestic

Purifier 2006-07‟ award at Water Awards Ceremony organized by

Water Digest in association with UNESCO and CNBC-TV18. It is

submitted that the plaintiffs have acquired and enjoyed substantial

goodwill and reputation on account of their innovative products.

Various Indian national dailies like, Times of India, Economic Times,

Hindustan Times etc. have carried articles and features on and about

plaintiff‟s patented mineral water purifier, which articles are Exhibit

PW1/13 and PW1/14.

5. It is submitted that the plaintiffs have been manufacturing

and selling the patented water purifier systems embodying the aforesaid

mineral water purification technology since February, 2006 under the

mark KENT Mineral RO. The products are sold not only in India but

also in countries such as Kenya, Nepal, UAE, Sri Lanka, New Zealand

etc. The sales of the plaintiffs‟ product is over Rs.10 crores.

6. On or about May 2008, the plaintiffs had come across a

newspaper advertisement of a mineral water purifier styled as

PUROCOM. Upon investigations, it was learnt that defendant No.2 was

manufacturing and selling a water purifier that infringed the intellectual

property rights of the plaintiffs. Accordingly, the plaintiff filed civil suit

CS (OS) No. 776/2007 against the said defendant in this Court.

Ultimately, the defendants in the said suit compromised the matter and

filed an application under Order 23 Rule 3 CPC that they will not

infringe the designs, copyrights and trade dress of the plaintiffs.

7. The plaintiffs conducted further investigations which

revealed that defendant No.2 has changed the shape of their water

purifier cabinet which was the subject matter of CS (OS) No.776/2007.

However, the plaintiffs noticed that the new water purifier of the

defendants fully and completely adopted and copied the patented

technology of the plaintiff. Thus, the present suit was filed by the

plaintiff for restraining the defendant from infringing the patent and

copyright of the brochures of the plaintiff.

8. It is alleged that the water purifier of the defendants fully

and completely infringes claim 1 and other claims of the plaintiff‟s

patent. It is further averred that the defendant slavishly copied most

of the essential and key aspects of the plaintiff No.1‟s patent

No.199716. A comparison chart of the claims of the plaintiff No.1‟s

patent with the defendant is given as under:-

Claim 1 of IP 199716                    Process of Defendants
A reverse osmosis based drinking        The raw water is purified by RO
water purifier having ability to        process that      consists of a
control natural mineral content of      Sediment     Filter,    Activated
raw water in purified water,            Carbon Filter, high pressure
comprising of :                         pump followed by RO membrane.
A reverse osmosis membrane              Essential natural mineral are then
means for subjecting the water to       intelligently released into RO
reverse   osmosis process       to      purified water by our with
provide    treated   demineralized      Mineral RO process. A control
water and a control valve to mix        valve is also provided to adjust
water containing natural minerals       T.D.S. of the purified water on


 with said treated demineralized         site.
water and a further means of
filtration and/or treatment to purify   The        essential    mineral
the mixture and free it from            incorporated RO water is further
bacteria and viruses to thereby         purified by UF process to give
provide for reverse osmosis treated     double protection from bacteria
water having controlled natural         and viruses.
minerals.

9. The defendants are therefore, guilty of infringement of the

suit patent of the plaintiff. The defendants are guilty of infringement

of copyright, passing off, unfair trading and competition. It is submitted

that the defendants have adopted identical material in their brochure in

toto and thus, generated an identical brochure without the plaintiffs‟

authority which amounts to a blatant and flagrant violation of the

plaintiffs‟ copyright in its brochure. The plaintiffs have made huge

investment in research, development, promotion, protection and

advertisement of its water purifier (mineral RO technology) registered

as Patent No.199716. As such the plaintiffs have acquired substantial

reputation and goodwill in its products (water purifier using mineral

RO technology) and the general public has now come to associate the

said product exclusively with the plaintiffs and its mark, KENT

MINERAL RO. The use by the defendant of impugned water purifier

embodying the plaintiff‟s patented technology is inherently in bad faith

with an intent to misrepresent to the general public that the

defendant‟s products and business owe their origin to/or are licensed

by the plaintiff and calculated to cause damage to the plaintiffs

exclusive proprietary rights and the goodwill in the said water purifier.

10. It is submitted that the defendants are offering for sale and

selling the infringing products to a common market. The defendants

are trying to make unreasonable profit using the plaintiffs‟ intellectual

property in the said water purifiers, thereby causing unlawful loss to the

plaintiffs. It is further submitted that the plaintiffs have suffered and are

likely to suffer irreparable loss, harm and injury as a result of

infringement by the defendants of the plaintiffs‟ registered Patent

No.199716 and identical product brochure.

11. In the plaint, the plaintiff prayed as under :

"(i) an order of permanent injunction restraining the defendants jointly and severally by themselves, their directors, proprietors, officers, servants, representatives, stockiest, dealers, agents and all other persons claiming under or through them or acting in concert with them or otherwise howsoever from manufacturing, selling, distributing, offering for sale, advertising, directly or indirectly deal with water purifier embodying the claims of plaintiffs‟ registered Patent No.199716 in any manner;

(ii) an order of permanent injunction to restraining the defendants jointly or severally by themselves, their partners, servants, agents, representatives and all those acting in concert with them or claiming under or through them or otherwise howsoever from infringing the plaintiffs‟ copyright in its product brochure in respect of their water purifier products;

(iii) an order of permanent injunction to restraining the defendants jointly or severally by themselves, their partners, servants, agents, representatives and all those acting in concert with them or claiming under or through them or otherwise howsoever from adopting or passing off plaintiffs‟ mineral water purifier system;

(iv) an order for delivery up for destruction of all water purifier and purifier type products, dies, labels, printed materials such as brochures, instruction manual, letterhead, stationery, visiting cards, promotional material, cash memos, cartons, blueprints or any other material of whatsoever description and nature, embodying the plaintiff

No.1‟s registered patent bearing No.199716 which would offend against the foregoing injunction;

(v) an order for rendition of accounts of profit illegally earned by the defendants on account of use of purifiers employing the plaintiff‟s registered patent and a final decree for the ascertained amount be passed in favour of the plaintiffs;

(vi) an order directing the defendants to pay damages to the tune of Rs.21 lac to the plaintiffs; and

(vii) an order for costs of this suit and the proceedings."

12. In the case of Raj Parkash Vs. Mangat Ram Chowdhry

and Ors. AIR 1978 Delhi1 it was held as under :

"That invention is to find out something or discover something not found or discovered by anyone before. Whether a patent sets out an invention is to be determined by a true and fair construction of the specifications on the basis of which an inventor claims that he is the first inventor of an invention which is to be patented. In order to properly construe the specifications, one should give ordinary meaning to the words, but where necessary the words must be construed in the sense in which they are used in a particular trade, a sphere in which the invention is sought to have been made. The grant of patent, no doubt, creates a monopoly in favor of the patentee but then law throughout the free world recognises that an inventor must first get the benefit of his invention, even if it means creating a monopoly. According to Clause (8) of Section 2 of the Act of 1911 an invention means any process of new manufacture and includes an improvement in an alleged invention. Clause (11) of Section 2 defines patent to mean one granted under the provisions of the Act. It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentee or alleged violaters. It is not necessary that the invention should be anything complicated. The essential thing is that the inventor was the first one to adopt it. The principle, thereforee, is that every simple invention that is claimed, so long as it is something which is novel or new, it would be an invention and the claims and specifications have to be read in that light,

.........The patented article or where there is a process then the process has to be compared with the infringing article or

process to find out whether the patent has been infringed. This is the simplest way and indeed the only sure way to find out whether there is piracy. Unessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that the is no piracy. A person is quality of infringement, if he makes what is in substance the equivalent of the patented article.

13. On 27th June, 2008 summons were issued to the defendant

and ex-parte interim order against the defendant was passed. On the

same date, a Local Commissioner was also appointed to visit the

premises of the defendant and to take into custody the infringing goods

of the plaintiff including brochures and literary material.

14. The Local Commissioner filed his report on 2nd August, 2008

wherein he stated that no infringing product of the plaintiff has been

found in the premises of defendants. Neither any brochure or other

literary material of the plaintiff was found by the Local Commissioner.

15. The defendants were proceeded ex-parte as they have neither

put any appearance before the court nor filed the written statement. The

interim order was made absolute on 2nd April, 2009. The case has gone

unrebutted. The plaintiffs have filed affidavit by way of examination-

in-chief of Mr. Mahesh Gupta which is exhibited as Ex. PW 1/A to

prove its case. Considering that the case of the plaintiff is not being

controverted by the defendants and in other suit being CS(OS)

No.776/2007 pending before this Court, the settlement has been arrived

between the parties wherein the defendants agreed to pay to the

plaintiffs the damages to the tune of Rs.25 lac and stated that they will

stop using the plaintiffs registered design bearing No.200427 in Class-

23-01 and also will not infringe the plaintiffs‟ copyright and its

brochures, plaintiffs‟ tradedress, getup, over all look etc., I am of the

view that the plaintiffs have established the case for grant of the relief of

permanent injunction in terms of para 33(i), (ii) & (iii) of the plaint.

The plaintiffs have also urged for the relief of damages to the tune of

Rs.21 lac in the suit. However, when the Local Commissioner was

appointed, he did not find any infringing material from the premises of

the defendants. Thus in the absence of any cogent evidence on record,

to award damages to the plaintiff, relief as prayed in para 33 (vi) cannot

be granted to the plaintiffs.

16. The case has been otherwise proved by the plaintiff. The suit

is accordingly decreed for the relief of permanent injunction in favour of

the plaintiffs and against the defendants. Decree sheet be drawn

accordingly.

MANMOHAN SINGH, J JULY 24, 2009 nn