Strix Limited vs Maharaja Appliances Limited
2009 Latest Caselaw 3659 Del

       IN THE HIGH COURT OF DELHI AT NEW DELHI

          I.A. No.7441 of 2008 in C.S. (OS) No.1206 of 2008

                                         Reserved on : 4th September, 2009
                                         Decision on: 10th September, 2009

  STRIX LIMITED                                        ..... Plaintiff
                                      Through: Ms. Anuradha Salhotra with
                                      Ms. Bhawna Gandhi, Mr. Aminesh
                                      Mishra and Ms. Doyel Sen Gupta,
                                      Advocates.

                             versus

  MAHARAJA APPLIANCES LIMITED            .... Defendant
                       Through: Mr. Manav Kumar,
                       Mr. Sushant Singh, Ms. Neha Kapoor
                       and Mr. Akash Chandra Akya,
                       Advocates.

   CORAM:
   HON'BLE DR. JUSTICE S. MURALIDHAR

       1. Whether reporters of the local newspapers be allowed to
          see the judgment?                                       No

       2. To be referred to the Reporter or not?                      Yes

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


                             JUDGMENT

S. Muralidhar, J.

1. This is an application filed by the Plaintiff under Order XXXIX Rules

1 & 2 CPC seeking an ad-interim injunction to restrain the Defendant

from infringing the registered design and patented invention of the

Plaintiff under No. 192511/95 or any part thereof as detailed in the claim

of the patent. An interim injunction is also sought against the Defendant

to restrain it from manufacturing, using, selling and/or importing the

„Maharaja Whiteline‟ electric kettle Model No. EK 172.

2. The Plaintiff states that it is a company incorporated in the year 1951

under the name and style of „Castletown Thermostats‟ and existing under

laws of the Isle of Man having its registered address at Forrest House,

Ronaldsway, Isle of Man, IM92RG, British Isles. The name of the

Plaintiff was changed to „Strix Limited‟ in the year 1981.

3. The Plaintiff claims to be the world‟s leading manufacturer, inter alia,

of temperature controls and cordless interfaces for kettles, jugs and a

wide range of water boiling appliances, selling in over 40 countries in

the world. It is stated that Strix Controls are presently used over one

billion times a day worldwide by over 20 per cent of the population

across the globe.

4. The controls/inventions of the Plaintiff are used by the kettle

manufacturers to give their products extra features. They are designed to

work in conjunction with the heating element of kettles and are the

means to the kettle switching off when the water boils, thus protecting

them from getting damaged in case the appliance is not filled with liquid.

A list of the famous brands selling appliances that contain the Plaintiff‟s

controls has been set out in paragraph 6 of the plaint. It is claimed that

these include Philips, Tefal, Rowenta, Morphy Richards, Russell Hobbs,

Braun, Kenwood and Bosch Siemens.

5. The Plaintiff holds a product patent number 192511/95 in respect of

„Liquid Heating Vessels‟. A certified copy of the certificate granting the

above patent in favour of the Plaintiff is enclosed with the list of

documents filed by the Plaintiff. The Plaintiff‟s patent was granted on

11th November, 2005 and is valid for a period of twenty years from the

date it was applied for, i.e. 9th June, 1995.

6. According to the Plaintiff in terms of Section 48 of the Patents Act,

1970, a patent holder can enforce its rights against all third parties who

are enjoined to use the patent only with the prior permission of the patent

holder. The Plaintiff claims that Strix U10 Series Controls were sold by

it first in 1996. It is claimed that the product patent was first used in

India in the year 2002. The principal claim of the patent is that of a

liquid heating vessel comprising a liquid receiving container and an

electrical heating element provided in thermal contact with the base of

the container. It is stated to contain a thermally sensitive overheat control

comprising of at least two thermally responsive sensors arranged "in

good thermal contact with and at spaced apart locations on the base of

the container or the element said sensors individually being operable, in

the event of said element overheating due to the vessel being switched

on dry or boiling dry but not during normal boiling operation of the

vessel so as to interrupt or reduce the supply of electrical energy to the

element." In other words, the control works based on sensing the

temperature of the element. The element gets switched off once a certain

temperature is reached. For the sensors of the Plaintiff‟s patented product

to work, therefore, there is no need for the container itself to contain the

liquid.

7. The Defendant is an Indian company engaged in the business of

manufacturing and selling of electrical appliances including electric

kettles. According to the Defendant, electric kettles were earlier being

supplied by the Plaintiff to the Defendant in the years 2005-2006. The

Defendant states that the products of the Plaintiff were of inferior quality

and, therefore, the Defendant commenced importing electric kettles

containing the impugned heating element, from China. The Defendant

states that it did not at any point in time manufacture the said heating

element installed in the kettles. The Defendant states that they are traders

and have not undertaken any manufacturing activity. The Defendant

claims to have imported the product bona fide from China and states that

the supplier in China from whom the Defendant imported the product in

question held a patent inclusive of the heating element installed in the

kettle.

8. Ms. Anuradha Salhotra, learned counsel for the Plaintiff, points out

that the patent has been validly granted to it and has not been revoked till

date. The patent has been worked for over six years as its product was

introduced in the market in the year 2002 itself. The product has an

electrical sensor which is linked to the element and senses the increase in

the temperature of the said element. It is however not a sensor vis-a-vis

the liquid in the vessel. It is submitted that the attempt by the Defendant

to sell an electric kettle using a similar product (sensor) is a blatant

infringement of the Plaintiff‟s patent.

9. Paragraph 14 of the application indicates in a chart form that the

features of the product of the Defendant are more or less a copy of the

features of the invention of the Plaintiff. It is pointed out that even in the

written statement, the Defendant has not denied that it is infringing the

Plaintiff‟s patent but has only raised an objection as to the validity of that

patent by contending that it was based on a prior art in the form of an

European Patent.

10. It is also pointed out that the Defendant has till date not indicated the

name of the supplier in China from whom the electric kettles have been

imported and sold by it in India. The Plaintiff states that it has

successfully litigated in China against the infringement of its patent by

three Chinese companies. Reliance is placed on the judgment in M/s.

National Research Development Corporation of India, New Delhi v.

The Delhi Cloth & General Mills Co. Ltd. AIR 1980 Delhi 132.

11. Appearing for the Defendant Mr. Manav Kumar, learned Advocate

refers to the decision in M/s. Bishwanath Prasad Radhey Shyam v. M/s.

Hindustan Industries AIR 1982 SC 1444 and, in particular, paragraphs

18, 19 and 21 thereof. Referring to Sections 3 (d) and 3 (f) of the Act, it

is pointed out that in order to be patentable, the product must be an

improvement on a known substance and something more than a mere

workshop improvement. The process must satisfy the test of constituting

an inventive step. The improvement must produce a new result or a new

or a better article.

12. According to the Defendant, the electric kettle of the Plaintiff

containing the sensors was a normal feature and did not constitute an

inventive step. It is submitted that the European Patent constituted the

prior art which taught the patent for which the Plaintiff holds

registration. Moreover, the drawings submitted to the European Patent

Office created a doubt as to the validity of the patent. It is contended that

the invention that has been patented is, in fact, not a new one but is at

best a re-arrangement of an existing invention which in any way was

taught by the prior art which is available for anyone to commercially

exploit. Reference is also made to the decision in Niky Tasha India

Private Ltd. v. Faridabad Gas Gadgets Private Ltd; AIR 1985 Delhi

136.

13. As regards the patent of the Chinese supplier, it is submitted that the

Defendant has written to it and is awaiting a reply. Reference is made to

Section 107A of the Act which stipulates that the importation of patented

products by any person from a person who is duly authorized under the

law to produce and sell or distribute the product shall not be considered

as an infringement of the patent. It is submitted that as and when the

Chinese supplier informs it of the patents held by it, the Defendant

cannot be held to be infringing any patent in terms of Section 107A of

the Act.

14. It is then pointed out that the patent in order to be held to be valid has

actually to be worked. According to the Defendant, no evidence has

been placed on record by the Plaintiff to show that the patented invention

had been worked by it in India. According to the counsel for the

Defendant no document has been placed on record by the Plaintiff to

show that these kettles have been available since 2002 or that they have

been manufactured and sold in India. Reliance is placed on the

judgments of the Division Bench of this court in Franz Xaver Huemer v.

New Yash Engineers 1996 PTC (16) (DB) and Dart Industries Inc. v.

Techno Plast 2007 (35) PTC 129 (Delhi).

15. It is submitted by counsel for the Defendant that a trade variant of an

existing product will not make an article a patentable one. This is the

ground on which a counter claim has been filed in the present suit by the

Defendant to challenge the validity of the patent. It is pointed out that

the judgment of the Chinese Judicial Authority does not deal with the

validity of the patent and, therefore, cannot help the case of the Plaintiff.

16. Finally, it is submitted that the Defendant is not a fly-by-night

operator. It has a business turnover of several crores. If an injunction as

prayed for is granted to the Plaintiff it will cause irreparable harm to the

Defendant and, therefore, the balance of convenience is not in favour of

the Plaintiff. It is submitted that the Plaintiff has not shown how it has

worked the patent in India and, therefore, is not entitled to an injunction.

Damages are an adequate remedy in the event of the Plaintiff succeeding

and, therefore, no injunction should be granted at this stage.

17. The submissions of learned counsel for the parties have been

considered. One of the main grounds on which the grant of an injunction

is being resisted by the Defendant is that it has raised a credible

challenge to the validity of the Plaintiff‟s patent and, therefore, as long

as the Defendant is able to show that the validity of the patent is

vulnerable to challenge, injunction should be refused.

18. An internet print out of the extract of the specification in relation to

EP0469758 has been placed on record by the Defendant. It talks of "a

temperature control device for a fluid heating vessel". It further states:

"The control device serves to sense ambient temperature and control or

adjust the set point at which power is reduced to an element for heating

the fluid in the heating vessel, in order to prevent boil over of the fluid".

The prior art cited by the Defendant as teaching the invention in respect

of which the Plaintiff holds the patent is the European Patent (EP

19910306560). According to the Defendant, the said European Patent is

also in respect of a liquid heating vessel. The said patent appears to have

been granted on 3rd April, 1998. It is for a temperature control device for

a liquid heating vessel which device comprises liquid temperature

sensing means adopted to provide an indication of the temperature of

liquid in the vessel and control means adopted to regulate the supply of

heat to the liquid during heating action which increases with the set point

temperature.

19. It appears from the literature associated with the above European

Patents that they envisage a mechanism by which the temperature

control device senses the temperature of the boiling liquid and then

prevents over heating or over boiling of the liquid. However, the patent

of the Plaintiff appears to work on a different principle.

20. Learned counsel for the Plaintiff has placed a chart listing out the

points of comparison between the Strix Patent and the European Patent.

The essential difference between the Plaintiff‟s product and that

manufactured using of the European patent would be that the Plaintiff‟s

product prevents the overheating of the element. In the Plaintiff‟s

product, the two sensors are placed in the vicinity of the heating element.

Both in the Plaintiff‟s product, and in the product imported by the

Defendant from the Chinese supplier, the two sensors are proximate to

each other and are arranged to detect the temperature of the element.

Both sensors are bimetallic actuators and are of the thermo-mechanical

type. On the contrary, the European Patent sensors are not placed in the

vicinity of the heating element. The drawings relevant to the European

Patent have been seen by the Court. They show that one of the sensors is

on the wall of the heating vessel and the other sensor is inside the vessel

itself. Further, the two sensors in the European Patent are meant to detect

the temperature of the liquid. They are not bimetallic actuators but

"thermistors". They are not thermo-mechanical devices but purely

electrical devices. Apart from the above features which distinguish the

European Patent from the Strix Patent, it is seen that the Strix Patent

sensors do not require any additional devices or circuit whereas the

European Patent requires additional circuitry. In the European Patent,

both the sensors have to work together whereas in the Strix Patent, they

can operate independent of each other. As far as the carrier plate is

concerned, the Strix Patent sensors are supported on a single carrier

plate. The European Patent sensors are placed at different locations on

the vessel. Further, the control device in the Strix Patent provides a

double pole protection whereas the one in the European Patent does not.

21. The essential difference between the product manufactured using the

Strix patent and the product made using the European Patent is this: the

Strix patent product is a temperature control device which is linked to

the element itself and, therefore, when the element reaches a certain

temperature, the circuit is broken and the device is switched off. This

prevents the overheating of the element itself. Therefore, even if there is

no liquid in the vessel and the vessel is switched on, the element will not

get damaged on account of overheating. As far as the European Patent is

concerned, its mechanism operates by the temperature control device

sensing the temperature of the liquid and not of the element. If there is

no liquid in the vessel, the sensor will not get activated and therefore the

overheating of the element cannot be avoided thus leading to it being

damaged. It cannot, therefore, prima facie be said that the Strix Patent is

not an inventive step over the European Patent and, therefore, is not

patentable as such. Of course, these are only tentative views at an

interlocutory stage. A final view will be taken by the Court, at the end of

the trial, upon an independent assessment of the evidence, uninfluenced

by this order.

22. It was contended by learned counsel for the Defendant that at an

interlocutory stage, the Defendant should be held to have discharged its

burden of raising a „credible challenge‟ to the validity of the Plaintiff‟s

patent by merely pointing out the existence of the European Patent. This

court is unable to agree. In order to raise a credible challenge to the

validity of a patent, even at an interlocutory stage, the Defendant will

have to place on record some acceptable scientific material, supported or

explained by the evidence of an expert, that the Plaintiff‟s patent is prima

facie vulnerable to revocation. The burden on the Defendant here is

greater on account of the fact that there was no opposition, pre-grant or

post-grant, to the Plaintiff‟s patent. In Beecham Group Ltd. v. Bristol

Laboratories Pty Ltd. (1967-68) 118 CLR 618 and Australian

Broadcasting Corporation v. O'Neill (2006) 229 ALR 457 it was held

that the defendant alleging invalidity bears the onus of establishing that

there is "a serious question" to be tried. In Hexal Australia Pty Ltd. v.

Roche Therapeutics Inc. 66 IPR 325 it was held that where the validity

of a patent is raised in interlocutory proceedings, "the onus lies on the

party asserting invalidity to show that want of validity is a triable

question."

23. In the instant case, the prior art cited by the Defendant, i.e. the

European Patent, is not even prima facie a prior art that teaches the

Plaintiff‟s invention. It works on a very different principle. Further, the

Defendant has been unable to show that the Chinese supplier from whom

it is purchasing the infringing product, holds a patent for it. It is not even

the Defendant‟s case that the said product per se does not infringe the

Plaintiff‟s patent. The only defence is that the Plaintiff‟s patent lacks

novelty and its validity is vulnerable on the ground of obviousness. This,

for the reasons already discussed, has not even prima facie been

established by the Defendant. It is not possible to agree with the

contention that the Plaintiff‟s patent is a mere trade variant of a known

product. The Plaintiff has been able to prima facie show that it has been

validly granted the patent which appears to be an inventive step in

comparison with the prior art cited by the Defendant, viz., the European

Patent. There is no merit in the contention that in terms of Section 3 (f)

of the Act, the patent ought not to have been granted since the invention

is a mere re-arrangement of known elements. In the considered view of

this court, such a contention cannot be accepted on a mere averment by

the Defendant. The Defendant will have to place on record some

scientific literature supported by some credible expert opinion to show

even prima facie that the Defendant‟s product is a mere re-arrangement

of already known products. This burden has not been discharged by the

Defendant.

24. The submission that the Plaintiff has not worked its patent in India is

also without merit. It is the Defendant‟s own case that it was purchasing

the product from the Plaintiff in the year 2005-2006 and when it found

that the products were defective, it started importing the product from

China. It matters little whether the product of the Plaintiff was defective.

What is evident is that the Plaintiff did commercially exploit its patent

by marketing the product in India since 2005. It is not in dispute that the

Defendant was purchasing the said product in India from the Plaintiff.

The decision in Franz Xaver Huemer, therefore, has no application to

the facts of the present case.

25. In Niky Tasha, the court observed "when there is a serious question

as to the validity of the design to be tried in the suit and an application

for cancellation has been made" an injunction can be refused as long as

damages can provide an adequate remedy. In the considered view of this

court, the said decision can also have no application in the instant case.

It cannot be said that the challenge to the validity of the patent as raised

by the Defendant here is a "serious" one.

26. As regards the applicability of Section 107A of the Act, the

Defendant has merely averred that it has written to Chinese supplier to

give information on the patent held by it and is awaiting a reply. The

Plaintiff cannot be made to wait indefinitely for an injunction just

because the Defendant is awaiting information from the Chinese

supplier. As long as the Defendant is not able to produce any information

about the patent held by the Chinese supplier, the court will proceed on

the footing that there is no such valid patent held by the Chinese

supplier. In any event, it cannot delay the protection that the Plaintiff is

entitled to seek on the basis of the patent registered validly granted to it.

27. The contention that the Defendant is not a fly-by-night operator and

its business turnover is in several crores of rupees is a contention that

should work against the Defendant for the simple reason that the

Defendant is not expected to import a product without first checking if

the Chinese supplier holds a valid patent. The Defendant knew that the

Plaintiff held a valid patent for the product that the Defendant was

marketing viz., the electric kettle. Even according to the Defendant, it

was purchasing this electric kettle from the Plaintiff in the years 2005-

2006. Therefore, there was an obligation on the Defendant, even while it

imported the same product from China, to ensure that it was not violating

the Plaintiff‟s patent.

28. In the considered view of this court, the Plaintiff is entitled to

enforcement and protection of its patent vis-a-vis other manufacturers,

sellers and importers. Section 48 of the Act gives the patent holder a

right to prevent all other users from making use of the patent or

commercially exploiting the patent held by the Plaintiff except with the

prior permission of the Plaintiff.

29. Accordingly, this application succeeds. An interim injunction will

issue during the pendency of the suit restraining the Defendant, its

agents, servants and all others working for it from manufacturing and/or

marketing the Maharaja Whiteline electric kettle Model No.EK172 or

otherwise infringing in any manner the Plaintiff‟s patent No. 192511/95

or any part thereof.

30. This order has been passed on the basis of the pleadings and

documents on record. The final decision in the suit, at the end of the trial,

will be based upon an independent assessment uninfluenced by any of

the observations made in this order.

31. IA No.7441 of 2008 is accordingly disposed of.

S. MURALIDHAR,J.

SEPTEMBER 10, 2009 'AA'