Present: Sri Utpal Misra (JO Code:WB00659)

Judge, Commercial Court at Alipore

Title Suit 19/2023
CNR No. WBSP18-000093-2023

Order No. 2
Date: 12.07.2023
In the matter of:
Suit for temporary and
mandatory injunction under
Section 104 of the Patents Act,
1970 valued at Rs.
60,00,00,000/-.
AND
In the matter of:
Mafag Reflexa AG and 02 Ors.
Vs.
Nandita Footwear and Anr.

Appearance for the Plaintiffs:

Mr.Sayantan Basu
Mr. Tanmoy Roy
Ms. Tonoya Ghosh
Ms. Aheriya Roy
Mr. Koushik Banerjee
…Ld. Advocate

Order
Today the record is put up by way of instigation of a put up petition filed
by the Plaintiffs/Petitioners herein.

Plaintiffs/Petitioners file hazira.

I.A. No. 01 of 2023

Plaintiffs/Petitioners move the present application seeking for exemption

from pre-institution mediation and settlement by grating of leave under Section
12A of the Commercial Court Act, as amended from time to time, on the
ground that some urgent relief is sought for in order to protect the interest of
the Plaintiffs.

I have heard the submission as made by the Ld. Counsel in respect of

this present application being no. I.A. No. 01 of 2023 at great length and
perused and considered.

On prima facie contemplation, it appears that the suit contemplates an

urgent relief by filing necessary application under Order XXXIX Rule1 and 2

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read with Section 151 of CPC. Therefore, the leave as sought for by the
Plaintiffs in this instant interlocutory application is granted.

Accordingly, the instant interlocutory application being no. 01 of 2023 is

hereby disposed of.

I.A. No. 02 of 2023

1. The present action is an infringement of patent of the

Plaintiffs/Petitioners by the Defendants/Respondents.

2. The Plaintiff no. 1 is a company duly incorporated under the relevant

provisions of the laws of Switzerland. The Plaintiff no. 2 is a company duly
incorporated under the relevant provisions of the laws of Germany and the
Plaintiff no. 3 is the licensed manufacturer of the Plaintiff in India. The
Defendant no. 1 is the manufacturer of the Defendant no. 2 which
manufactures the infringing shoes for the Defendant no. 2. The Defendant no.
2 is a seller of shoes through several outlets in India.

3. Mr. Basu, Ld. Counsel appearing for the Plaintiffs submits before this
Court that the Plaintiff no. 1 is the proprietor of the patent rights worldwide and
in particular of the said Indian patent granted in favour of the Plaintiff no. 1
being Registration No. 341348. The Patent no. 341348 titled SEMI FINISHED
PRODUCT FOR PRODUCTING AN INNER SOLE OR INSOLE
PRODUCED THEREFROM was applied for registration on 19.10.2009 and
was granted to the Plaintiff. Sometime in the year 2020 the said Plaintiff no. 2
informed the Plaintiff no. 1 that the counterfeit products have emerged in the
market in India and acquired samples of such shoes with the infringing insole
on which patent were granted in favour of the Plaintiff. All of those shoes were
marked “Softouch” by the Defendants. The said samples were went to and
checked by the patent experts of the plaintiffs in Germany and Switzerland. The
Plaintiff no. 2 upon finding such infringement of the patent taking place by the
Defendant no. 1 wrote a cease and desist notice dated February 5, 2020
pointing out the patent infringement to the Defendants. The Defendants upon
receiving the said notice gave a reply dated 28th February, 2020 inter alia
confirming that they retract or recall the product infringing the patent of the
Plaintiffs. The Defendants thereafter by a letter dated 24th August, 2020 to its

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advocate retracted its stand of any infringement being committed by them of the
said patent and/or discontinuation of the said products in the market and
countered and the patent granted to the Plaintiffs on the basis that the said
inventions were on the basis of the science of acupressure. Sometime in
December, 2022 the Plaintiffs again while making enquiry in the stores and
searching the website of the Defendant no. 2 came to find that though the
impugned product was not available in the outlet stores of the Defendant no. 2
but the same was available for sale through an interactive website of the
Defendant no. 2 through which the impugned product could be purchased.
The Plaintiff immediately thereafter through their representatives placed an
order. The impugned product was thereafter delivered by the Defendant no. 2.
In such circumstances, the Plaintiffs sometime on January, 2023 had instituted a
suit being C.S. 2 of 2023 before the Hon’ble High Court at Calcutta against the
said Defendants. In said suit an interlocutory application was also made by the
Plaintiffs in which directions were given for service upon the said Defendants.
Upon the said service being affected the Plaintiff came to know that the
Defendant no. 2 had already shifted their registered office. The pleadings with
regards to the cause of action of infringement arising within the jurisdiction of
the Hon’ble High Court by way of sale of the impugned products of the
Defendants through their websites at https://www.khadims.com within the
jurisdiction of the Hon’ble High Court was also scanty and inadequate and for
which reason the Hon’ble High Court having no territorial jurisdiction of the
suit under Section 134 of the Trademarks Act, 1999 thought it prudent to
withdraw the said suit and filed a suit afresh with such a view to file the instant
suit and to show that the infringement of the Plaintiff patent is still being
committed by the Defendants, the Plaintiffs caused an enquiry and have come
to know in June 2023 that the said Defendants are selling the impugned product
through third party websites namely www.amazon.in and the interactive website
of the Defendant no. 2 being www.khadims.com through which the impugned
product can be purchased by any customers in Kolkata both within and outside
jurisdiction of this Court by accessing the said websites both within and outside
the aforesaid jurisdiction. The Defendants have been wrongfully and illegally
infringing the said patent being Registration No. 341348 and/or the
specifications on the basis of which such patent have been granted and goods

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and/or parts thereof have been manufactured both within and outside the
aforesaid jurisdiction thereby causing irreparable loss and injury to the Plaintiffs.

4. So as to satisfy the jurisdiction of this Court Mr. Basu cites a decision of

the Hon’ble High Court at Delhi in the case of Banyan Tree Holding (P)
Limited v. A. Murali Krishha Reddy & Anr.1, wherein the Hon’ble Court found
out three questions and supplied the niche answered to those, as:

Question (i): For the purposes of a passing off action, or an infringement action where the
Plaintiff is not carrying on business within the jurisdiction of a court, in what circumstances can
it be said that the hosting of a universally accessible website by the Defendants lends
jurisdiction to such Court where such suit is filed ("the forum court")?
Answer: For the purposes of a passing off action, or an infringement action where the Plaintiff
is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm
statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the
Plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction
of the forum court. For this it would have to be prima facie shown that the nature of the activity
indulged in by the Defendant by the use of the website was with an intention to conclude a
commercial transaction with the website user and that the specific targeting of the forum state
by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.
Question (ii): In a passing off or infringement action, where the defendant is sought to be sued
on the basis that its website is accessible in the forum state, what is the extent of the burden on
the Plaintiff to prima facie establish that the forum court has jurisdiction to entertain the suit?
Answer: For the purposes of Section 20 (c) CPC, in order to show that some part of the cause
of action has arisen in the forum state by the use of the internet by the Defendant the Plaintiff
will have to show prima facie that the said website, whether euphemistically termed as "passive
plus" or "interactive", was specifically targeted at viewers in the forum state for commercial
transactions. The Plaintiff would have to plead this and produce material to prima facie show
that some commercial transaction using the website was entered into by the Defendant with a
user of its website within the forum state resulting in an injury or harm to the Plaintiff within the
forum state.
Question (iii): Is it permissible for the Plaintiff to establish such prima facie case through "trap
orders" or "trap transactions"?
Answer: The commercial transaction entered into by the Defendant with an internet user
located within the jurisdiction of the forum court cannot possibly be a solitary trap transaction
since that would not be an instance of "purposeful" availment by the Defendant. It would have
to be a real commercial transaction that the Defendant has with someone not set up by the
Plaintiff itself. If the only evidence is in the form of a series of trap transactions, they have to be
shown as having been obtained using fair means. The Plaintiff seeking to establish jurisdiction
on the basis of such trap transactions would have to aver unambiguously in the plaint, and also
place along with it supporting material, to prima facie show that the trap transactions relied
upon satisfy the above test.

5. To substantiate his submission Mr. Bose further stress upon the Section
48 of the Patents Act, 1970 so as to discern the rights of a patentee, the said
Section avers as:
Subject to the other provisions contained in this Act and the conditions specified in section 47,
a patent granted under this Act shall confer upon the patentee--

(a) where the subject matter of the patent is a product, the exclusive right to prevent third
parties, who do not have his consent, from the act of making, using, offering for sale, selling or
importing for those purposes that product in India;

1
Reported in 2009 SCC Online Del 3780.

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 (b) where the subject matter of the patent is a process, the exclusive right to prevent third
parties, who do not have his consent, from the act of using that process, and from the act of
using, offering for sale, selling or importing for those purposes the product obtained directly by
that process in India.

As regards relief of a patentee as enumerated in the said Act, he further

refers to Section 108, which is as follows:

108 Reliefs in suit for infringement. - 200 [

(1) ] The reliefs which a court may grant in any suit for infringement include an injunction
(subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either
damages or an account of profits.
201 [(2) The court may also order that the goods which are found to be infringing and
materials and implements, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation.]

6. Last, Mr. Basu refers to the decision of the Hon’ble High Court of
Gujrat at Ahmedabad in the case of Hind Mosaic and Cement Works and Ors.
v. Shree Sahjanand Trading Corporation and Ors.2, wherein and whereunder
the Hon’ble Court held as:

10. After having heard the learned advocates appearing for the respective parties and after
having gone through the pleadings of the parties as well as the impugned judgment and order
passed by the learned Single Judge refusing to grant interim relief and after having considered
various authorities cited before the Court as well as the statutory provisions relevant to the
issues involved in this appeal, we are of the view that the order and judgment of the learned
Single Judge refusing the interim relief is not sustainable either on facts as well as on law and
the same deserves to be quashed and set aside considering the celebrated principles laid down
by this Court as well as the Apex Court for grant of interim relief in the matter like one which
we are called upon to decide. While refusing the interim relief to the appellants, the Learned
Single Judge has observed that the mere ground of no such combined product found or such
combination not found in the market, uptill now is not sufficient ground to consider the
product of the appellants as invention for which the patent can be granted. The Learned Single
Judge has further observed that as there is no inter-connected or inter-related functioning to
each device in the alleged mention of the appellant, it cannot be said that it creates any
synergistic effect. It is further observed by the Learned Single Judge that the invention for
which the patent is granted, would fall in the category of Section 3(f) being exception
to Section 2(j) and 2(ja) of the Act and, therefore, the invention is not patentable as per the
provisions of the Act and hence, liable to be rejected. Even while discarding the opinion given
by the American Authorities on patent it was observed that the same is not binding on this
Court and it was further observed that the appellants have misled the Court by giving only one
sided version and suppressed the other relevant circumstances of PCT Report of Austrian,
Vienna. The Learned Single Judge has also observed that there was no prima facie case at all
on merit for sustaining the patent, but on the contrary, the prima facie case is for revocation of
the patent. The Learned Single Judge has found that the conduct of the appellants disentitles
them to claim equitable relief. All these findings and observations made by the Learned Single
Judge are not tenable in view of the discussion made above in light of the facts found and
evidence produced before the Court. International Search Report of Austrian Patent Office is
prepared without the aid of 16 drawings. The position of grooves, the thread and the sealings
inside the coupling were not known. The appellants were not aware about this report as no
specific search was made nor drawings were transmitted to Austria. Even the report itself made
it clear that there was no legal status for the purpose of the PTC procedure. As a matter of fact,
the Learned Single Judge has not considered the very vital aspect in its true perspective that the
patent was granted under Section 48 of the Patent Act whereby the rights of the appellant
patentee were statutorily recognized. The law relating to grant of interim relief is well

2
Reported in MANU/GJ/0061/2008.

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 established by now and all the three ingredients, namely, prima facie case, balance of
convenience and irreparable loss are present in this case and, therefore, initially the Trial Court
has rightly granted interim relief and only when the respondents have filed an application for
revocation of patent, the case was transferred to this Court and thereafter, the Learned Single
Judge has vacated this interim relief. By vacating this interim relief, the Learned Single Judge
has not considered the expert's report and affidavits in their true perspectives.
11. In the case of American Cyanamid Co. v. Ethicon Ltd. (1975) 1 All ER 504, the question
of grant of injunction in patent cases has been considered minutely and at length. The
principles enunciated therein are as under:
(a) There is no rule that a plaintiff must make out a prima facie case. "The court no doubt must
be satisfied that the claim is not frivolous and vexatious; in other words, that there is a serious
issue to be tried".... So unless the material available to the court at the hearing of the application
for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of
succeeding in his claim for a permanent injunction that the trial, the court should go on to
consider whether the balance of convenience lies in favour of granting or refusing the
interlocutory relief that is sought.
(b) It is no part of the Court's function at this stage of the litigation to try to resolve conflicts of
evidence on affidavit as to facts on which the claims of either party may ultimately depend nor
to decide difficult questions of law which call for detailed agreement and mature
considerations.
(c) If damages in the measure recoverable at common law would be an adequate remedy and
the defendant would be in a financial position to pay them, no interlocutory injunction should
normally be granted, however, strong the plaintiffs claim appeared to be at that stage.
(d) If, on the other hand damages would not provide an adequate remedy for the plaintiff...the
court should then consider whether, on the contrary hypothesis that the defendant were to
succeed at the trial.... He would be adequately compensated under the plaintiff's undertaking as
to damages for the loss he would have sustained by being prevented from doing so between the
time of the application and the time of trial. If damages in the measure recoverable under such
an undertaking would be an adequate remedy and the plaintiff would be in a financial position
to pay them, there would be no reason upon this ground to refuse an interlocutory injunction.
(e) It is where there is doubt as to the adequacy of the respective remedies in damages available
to either party or to both, that the question of balance of convenience arises. It would be
unwise to attempt even to list all the various matters which may need to be taken into
consideration in deciding where the balance lies, let alone to suggest that relative weight to be
attached to them. These will vary from case to case.
(f) Where other factors appear to be evenly balanced it is a counsel of prudence to take such
measures as are calculated to preserve the status quo.
(g) If the extent of the uncompensatable disadvantage to each party would not differ widely, it
may not be improper to take into account in tipping the balance the relative strength of each
party's case as revealed by this affidavit evidence adduced on the hearing of the application.
This however should be done only where it is apparent upon the facts disclosed by evidence as
to which there is no credible dispute that the strength of one party's case is disproportionate to
that of the other party.
26. Applying the above principles to the facts of the present case, we hold that the views
expressed by the Learned Single Judge do not prima facie hold the field and find that this is a
fit case where interim relief is required to be granted. Accordingly, the order passed by the
Learned Single Judge is quashed and set aside and the order of the learned Trial Judge granting
ad-interim relief is hereby restored and the said interim relief shall continue till the final
disposal of the suit. It is however made clear that ultimately if the appellants fail in succeeding
in the suit, the respondents are entitled to the damages to the extent of loss suffered by them
for discontinuing their business because of grant of this interim relief. The quantum of loss
shall be decided, if need so arises, by the Court while disposing of the suit on merits. The
appellants shall file an undertaking before the Court to this effect.

7. Stemming on this submission Mr. Basu prays for granting relief before
this Court on the prayer (a) only at this stage, as exposited in the said injunction
application.

8. I have heard the matter at length and carefully considered the decisions
and/or judgments relied upon by him and other materials on record.

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9. Considering the submission of Ld. Counsel supported by documents as
annexed with the injunction application as well as the well settled provisions of
the said Act, buttressed by the decisions as cited above, this Court is of the
opinion that in cases of infringement and/or passing off of a registered patent,
that this Plaintiffs have, normally it is fruitful to grant an ex parte injunction as
the grant of injunction also becomes necessary in case of prima facie
appearance of the adaptation of the trademark so as to preserve the right.

10. Further considering the ratio of the Hind Mosaic’s case (supra) it is to be
stated in consonance with the view as expressed by the Hon’ble Court in the
said case that the general principles which are deduced from the several
judgments of the English as well as Indian Courts are that it is settled law that in
an action for infringement of the patent, an injunction would not be granted
where serious controversy exists with regard to the validity of the patent itself.
But, in this case there is no such serious controversy. In this case the patent is
sufficiently old and there is actual user, as such it would be safe for the Court to
proceed upon the presumption that the patent to be valid one as the
fundamental principle of patent law is that patent is granted only for invention
which must be new and useful.

11. Thus, this Court is, prima facie, satisfied that the products sold by the
Defendants/Respondents are in infringement of the Petitioners/Plaintiffs
registered patent products as both the products are identical. So, all the three
ingredients, namely, prima facie case, balance of convenience and irreparable
loss and injury are present in this case.

Defendants’ product Plaintiffs’ product

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12. So, considering all this Court is of the view that a protective order is
exigent to be passed. Hence, the relief is granted by way of ad interim form in
respect of prayers (a) as exposited in the injunction application being I.A. No.
02 of 2023 herein. Other prayers will be considered after hearing of other sides.

Issue notice calling upon the Defendants/Respondents to show cause as

to why the prayers of the Plaintiffs/Petitioners shall not be allowed.
The Respondents/Defendants shall be at liberty to apply for vacation,
variation and/or modification of this interim Order upon notice to the
Plaintiffs/Petitioners.
To date i.e. 17.08.2023 at 11:30 a.m. for S/R, A/D and appearance of the
Defendants/Respondents and the compliance of directions as stated in this
order.

Both the parties are to act forthwith on the basis of the downloaded copy of
this Order.
Dictated and corrected by me

Sd/- Sd/-

Judge, Commercial Court at Alipore, Judge, Commercial Court at Alipore,

For South 24 Parganas, Purba Midnapore, For South 24 Parganas, Purba Midnapore,
Paschim Midnapore &Jhargram Paschim Midnapore &Jhargram