News: Banana Leaf (‘Vazhayelai’) Case Sept’08
In a landmark decision in Intellectual Property law and litigation, the Supreme Court of India, adopting a proactive and innovation friendly stance, has enhanced the traditional conceptualisation of the remedy of Passing Off to bring it within the frame work of Patent rights.
The Common Law remedy of passing off prevents one from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one from holding out his or her goods or services as having some association or connection with the claimant when this is not true. Passing off was mainly applicable to Trademark Law, but the Supreme Court keeping in mind the rapid rate of innovation and the recognition of such innovations in markets and requiste protection required, has for the first time in the jurisprudence of Intellectual Property in India applied such common law remedy to Patent disputes. This serves as a prime example of the Courts role in adapting exisiting laws to suit current industry and market requirements.
The case related to the dispute which had arisen between the manufacturers of food grade laminated paper mainly in form of banana leaf. It is essential to understand the fact that lamination as a process and the apparatus used in its creation has been known and used across the world for decades. Further, the process, device and the apparatus in manufacturing food grade laminated paper has been patented in USA as early as 1986-1993. The Petitioner in this instant case, a manufacturer of food grade laminated paper in the form of banana leaf had obtained a Patent for the said product on the merits of various innovations present in the product. The product was further protected under the Designs Act, though this mode of protection was not preferred by the Petitioner.
A petition was filed before the Madras High Court by the petitioner seeking to restrain others from indulging in manufacture of similar product. At the first instance, the Madras High Court granted an injunction order against other manufacturers by applying the principle of Passing Off to the Patent dispute.
Subsequently, the other party went on appeal before the Division Bench of the Madras High Court claiming the removal of the restraining order passed by the Hon’ble Single Judge. The Division Bench on analysing the issue clearly upheld the principle of Passing Off in the Patent dispute, stating that the presence of innovation was evident in the Petitioner’s product. The Hon’be Division Bench further upheld the injunction and approved of such protection to the Petitioner.
A further appeal was filed before the Hon’ble Supreme Court seeking the removal of injunction granted. The Supreme Court after due consideration dismissed the petition filed at the stage of admission itself and affirmed the judgement given by the Madras High Court at First Instance to be appropriate in relation to the issue at hand.
The Supreme Court in this particular issue further held that the art of making laminated food grade paper in India is no invention as it has been in existence for long. But at the same time it was held that innovation in the form of making banana leaf with artificial structure of food-grade quality and artificial scented smell of banana leaf is found in the said product and therefore, it could be termed as innovation and some novelty maybe prescribed to the said product for the purposes of obtaining a Patent. The Supreme Court further added that even though the banana leaf is a natural product, the invention on the part of the applicant to use artificial laminated food-grade shape with artificial smell is prima facie innovative and that in view of the Patent granted in his favour for the said product, he was entitled for protection applying the principle of passing off.
The Supreme Court in appreciating the irreparable loss, grave hardship and financial loss which would be incurred by the Patentee in allowing such other manufacturers has sustained the interim order of the Madras High Court and dismissed the Special Leave Petition at the outset.
The Law Office of Mohan Associates in aiding and advicing the Petitioner/Patentee in this dispute is gratified at the response of the Courts to the creative arguments and extensive research employed. The Courts apprecation at every level of Appeal of the nuances in intellectual property law and market responses to intellectual property centred products is truly a positive sign for the rapidly expanding body of intellectual property jurisprudence in India. We are confident that this will bolster significantly Patent litigation undertaken by our clients and are working on applying several other broader concepts into Patent law to give it the wide perspective required for its true apprecation and protection.
The time frame for such litigation, undergoing multiple levels of Appeal was very limited and has challenged every stereotype of the speed of the Indian judiciary. We believe such decision would be of tremendous significance to several of our clients to enable them to benefit from the spirit and purpose of Patent law in India