Alleged Patent Infringement On Sanitary Product: Karnataka High Court Makes Temporary Injunction Absolute

Update: 2021-09-28 14:30 GMT

The Karnataka High Court recently made absolute, an ex-parte temporary injunction restraining Aditya Birla Fashion and Retail Limited from manufacturing/ selling a sanitary undergarment, used by women during the menstrual cycle, patented by the plaintiff namely Yashram Lifestyle. A single-judge bench of Justice HP Sandesh said,"Having considered the material available on record and...

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The Karnataka High Court recently made absolute, an ex-parte temporary injunction restraining Aditya Birla Fashion and Retail Limited from manufacturing/ selling a sanitary undergarment, used by women during the menstrual cycle, patented by the plaintiff namely Yashram Lifestyle.

A single-judge bench of Justice HP Sandesh said,

"Having considered the material available on record and also the pictures which have been shown...and also taking note of multi-layered specifications and all the essential ingredients present in the plaintiffs' patent, the claim of the plaintiffs are found similarity in the product of the defendant which amounts to infringing the statutory right granted in favour of the plaintiffs under the patent."

It ordered thus:

"I am of the opinion that the plaintiffs have made out a case to grant the temporary injunction and ad-interim temporary injunction is already granted and the same is in force, hence, this Court only has to make it as absolute instead of vacating the ad-interim temporary injunction granted in favour of the plaintiffs. The application filed by the plaintiffs under Order XXXIX Rules 1 and 2 of CPC is allowed and the temporary injunction granted earlier is made as absolute."

Plaintiff's Submissions:

The plaintiff M/S. Yashram Lifestyle Brands Pvt. Ltd, had approached the court claiming that its patent on a sanitary undergarment namely "Cotton Sensation Stay Dry Period Panty", "Period Panty" was being infringed by the defendant. It was claimed by the plaintiff that it has been granted patent for a period of 20 years from 2009 and hence it is in force till 2029.

Senior Advocate Dhyan Chinnappa for the plaintiff argued that defendant was selling certain products by using an identical mark and claiming similar features as are offered in the plaintiff's product. 

Defendant's Submissions:

Advocate George Joseph, appearing for the defendants, claimed that tThe product sold by the defendant is a distinct and different product from the plaintiffs' patent and hence there cannot be any infringement. "The essence of the plaintiffs' invention as highlighted by the plaintiffs is not in the creation of a leak-proof product, but in the creation of flaps that allows the wings of a sanitary pad to be folded inwardly thereby preventing chafing and staining. The defendant's product does not have any flaps. There is absolutely no novelty or invention in the plaintiffs' patent. Similar products have been patented/manufactured/sold for many decades. Similar products are also being manufactured/sold by various companies across the world including India."

Further, it was said, "The defendant has been selling the product since 2018. The patent was granted on 06.02.2019. The patent is relatively new and unestablished. While granting the temporary injunction, the plaintiffs have to establish a prima facie case and balance of convenience, but balance of convenience lies in favour of the defendant because if the defendant is prevented from selling the product, it would lose out on its market share and the sales momentum it could achieve in the interregnum."

Court's Findings:

The court said, "Having considered the products of the plaintiffs and the defendant except for the flaps, all the specifications and designs are similar and also the said product is manufactured in order to give protection during the menstrual cycle preventing leakage of the fluid but having the similar specifications. When such being the case, if the product of the defendant is marketed, it causes hardship to the plaintiffs and hence, there is a balance of convenience that lies in favour of the plaintiffs since the plaintiffs in the year 2009 itself sought a patent with the specification in respect of the period panty. No doubt, the same was given in the year 2019. But the fact is that the defendant also marketed the very same product recently."

Further, it took into consideration the material available on record and also the pictures shown, and also took note of multi-layered specifications and all the essential ingredients present in the plaintiffs' patent. It then observed,

"The claim of the plaintiffs are found similarity in the product of the defendant which amounts to infringing the statutory right granted in favour of the plaintiffs under the patent."

It added, "Crotch region in the plaintiffs' product...also present in the defendant's product. In the crotch region, except the flaps, the fabric body consists of three of more layers in the plaintiffs' product and four layers in the defendant's product. When such similarities are found in the product of the defendant and the plaintiffs having the patent from the year 2009 and granted in the year 2019, it affects the statutory right of the patent of the plaintiffs. The defendant also did not dispute the fact that the crotch region of the defendant's product also having the layer which is made of four layers and when such being the case, the very contention of the defendant is that it is not an invention, cannot be accepted at this stage."

The court also observed, 

"Comparing the products of the defendant particularly in respect of the plaintiffs' boxer fitting sanitary undergarments, infringes the statutory right of the plaintiffs, in respect of the hipster fitting also. When the defendant marketed the similar product, it is evident that it amounted to infringing the right of the plaintiffs."

The court opined,

"The plaintiffs have made out a prima facie case and there is a balance of convenience, lies in their favour and if infringement is not prevented, it causes hardship to the plaintiffs, since the plaintiffs invented the said product and brought the same into the market making huge investment and the plaintiffs have not given any authorization to the defendant to similarly place the period panty in the market."

It added, "The very contention of the defendant that such product was existing prior to the patent of the plaintiff cannot be accepted at this juncture and it requires a trial both in respect of the contention of the invention and also the grounds urged in the written statement with regard to the revocation of the patent of the plaintiffs. Admittedly, there is a patent in favour of the plaintiffs and the same was applied in the year 2009 and granted in the year 2019. Under the circumstances, I do not find any force in the contention of the defendant that its product is distinct and different from the plaintiffs' product exclusively. The product of the defendant is having similar claims and similar specifications comparing to the product of the plaintiffs. Merely because of the absence of flaps, it will not make it a distinct and different product."

Accordingly, the court said,

"If a temporary injunction is granted, it will not cause any hardship to the defendant or otherwise it amounts to causing hardship to the plaintiffs and the balance of convenience is in favour of the plaintiffs. Under the circumstances, I am of the opinion that the plaintiffs have made out a case to grant the temporary injunction and ad-interim temporary injunction is already granted and the same is in force, hence, this Court only has to make it as absolute instead of vacating the ad-interim temporary injunction granted in favour of the plaintiffs."

Case Title: M/S. Yashram Lifestyle Brands Pvt Ltd And M/S. Aditya Birla Fashion And Retail Limited (Madura F And L Division)

Case No: OS 4/2021

Appearance: Senior Advocate Dhyan Chinnappa, A/W Advocate Pranav Kumar, For Plaintiff; Advocate George Joseph, A/W Advocate Nidhi Patil And Advocate Marcha Goveas, For Defendant.

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