Mafag Reflexa AG of Switzerland, the patentee along with its licensees Casa Everz GmbH and Iatric Industries Ltd. filed the infringement suit alleging infringement of Patent No. 341348 in the manufacture and sale of Softouch brand shoes.
Commercial Court, Alipore in Kolkata issued an order restraining Khadim India Limited and its manufacturer from infringing the Patent No. 341348 in respect reflexology insoles.
About the Patent No. 341348
The Patentee is involved in the research and development of the technology involving REFLEXOLOGY and REFLEX ZONE SHOES and has several Patents in this field world over.
The invention of the said insole is with the object to provide elevated raised sections (not glued nubs) suitable for reflex zone massage with the goal to increase the effectiveness of the massage effect on the head of the big toe while preventing overstimulation, which was the problem in the art.
The patent no. 341348 titled SEMI FINISHED PRODUCT FOR PRODUCING AN INNER SOLE OR INSOLE PRODUCED THEREFROM was applied for registration on 19.10.2009 (De Penning & De Penning handled the prosecution) and was granted to the Patentee.
The Patent disclosed several embodiments. The Patentee commercialized the most preferred embodiment.
This insole was marketed by Patentee through VON WELLEX 5 ZONES shoes.
Infringement
Sometime in 2020 Khadim India Limited was selling SOFTOUCH Shoes which were found to completely infringe the Patent.
The Plaintiffs, through their attorneys in Europe sent Cease and Desist Notice to the defendant.
The defendant initially accepted the Plaintiff’s demand and sought time to recall its shoes from its stores.
Later in December 2022, on market enquiry plaintiff’s licensee observed that the defendants were continuing sale of the infringing shoes from their e-commerce portal www.khadims.com and www.amazon.com.
The Plaintiff’s caused purchases of the infringing products and approached the Commercial Court having jurisdiction to hear IPR infringement matters.
The Plaintiffs had also submitted expert opinion on Affidavit obtained from the former vice-president for the International Federation of Inventor’s Association IFIA, who also had 20years experience in handling inventions relating to inner soles and reflexology.
The Commercial Court was convinced that the Plaintiffs required urgent relief and granted exemption from pre-litigation mediation and went on to hear out the Plaintiffs at length.
It was submitted to the Court that the Commercial Court had jurisdiction to hear the suit in view of the judicial precedent involving interactive website as held in the matter of Banyan Tree Holding (P) Ltd vs Murali Krishna Reddy & Anr
The Court also considered the Judgement in the matter of Hind Mosaic and Cement Works and Ors. v. Shree Sahjanand Trading Corporation and Ors. In respect of grant of interim injunction.
Applying the ratio in the above judgement the Court held that
“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”.
The Court also held at para 11 of its order that
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.
The Court was satisfied that all the three ingredients , viz prima facie case , balance of convenience and irreparable loss and injury is present in the instant case and granted an ad interim order against the defendants :
An order of injunction restraining the Respondents by themselves and/or their directors and/or their officers and/or their employees and/or their servants and/or their agents and/or otherwise howsoever from infringing the said patent being Registration No 341348.
The defendants have also been sent notice to show-cause as to why the ad interim order should not be made absolute.
Author: Koushik Banerjee
To view the court order, please click here.
