Godrej Soap Ltd. and Proctor and Gamble Godrej Ltd. vs Hindustan Lever Ltd.

The aim and objective of The Patent Act, 1970 is to protect the innovations and inventions done by any person and to promote inventions and technological advancements in the country. It is a form of Intellectual Property Right given to innovations and inventions but don’t extend to mere idea given. The forth mentioned case regards w.r.t Right of Patentees as provided under Section 48 of The Patents Act.

The issue arose between amongst giant companies in field of production and manufacture of Soap, detergents, toiletries, detergents, etc. i.e. Hindustan Lever Ltd. (petitioner) and Godrej Soap Ltd. (Respondent 1) and an American Based company which is also the subsidiary company of Respondent 1 i.e. Proctors and Gambles Ltd. (Respondent 2). Respondent 2 recently got incorporated and was new in the field of manufacture of soaps, detergents, etc. having its headquarters in the USA whereas Petitioner and Respondent 1 are both Indian based companies. The respondent 3 is the distributor in Calcutta. Dispute arose before The High Court of Calcutta regarding patent licence over an innovation and invention made in soap bar and detergents by the Hindustan Lever Ltd. Company.

Decided on- 11th April 1996
Under the- Deputy Controller of Patent, Bombay: Calcutta High Court
Petition: dismissed
In the; High Court of Calcutta
Citation- AIR 1996 CAL 367

Facts
The said case was brought up by Hindustan Lever Ltd. against the defendant from using, selling, manufacturing and using by any means any product bearing trademark ‘VIGIL’ or any other trademark having composition. The Hindustan Lever Ltd. produced soaps bars and detergent having different compositions which bore and hence they had registered their product as patent under patent no. 170131. They also got trademark registered of word ‘VIGIL’ and such other compositions. Such Toilet soaps had different fatty material percentage. Plaintiff also manufactured detergents having such composition. The Product had different composition which made it longer lasting.

The committee of expert analysed and the tests held that the product manufactured by the respondent had similar composition to that of the plaintiff. It was stated that respondent had access to the product had they illegally copied and utilised the composition of the Patent No.- 170131 and hence, infringement is deemed to occur on the part of defendant. The wrapper of the Toilet Soap also contained word ‘VIGIL’ and ‘LONGER LAST SOAP’ clearly mentioned which shall be the infringement on the part of respondent of trademark but don’t mention about TFM (Total Fatty Matter).

The plaintiff granted temporary injunction according to Order XXXIX CPC as to restrain from manufacture, sale, etc. of such product bearing word ‘VIGIL’ and Longer Lasting Soap’ and to refrain from infringing Patent no. 170131. The said appeal was granted by Deputy Controller of Patent, Bombay and The respondent filed appeal on Bombay High Court and later to Calcutta High Court stating that such product is not an invention but a mere mixture according to Section 3(e) Patents Act and also contended that respondent has been using the product since long and the patent has recently been incorporated and such interlocutory order[1] can’t be given.

Issues
The issues arose before the Calcutta High Court that:

1. Whether the Interlocutory Order given to the petitioner in the question is valid or not?
2. Can the temporary injunction be given when the plaintiff is the petitioner in the dispute?
3. Whether the said Patent 170131 was a mere mixture or invention according to Section 3(e) of the Patents Act?

Judgment
Court held that, if a patent is new one, a temporary injunction may not be granted or if granted such may be refused if it is challenged at the bar. But, in case of a relatively older product, temporary injunction may be given by the court to a patent. For such purpose, time period has been stated as 6 years. The petitioner’s product was within the time frame of 6 years as invention and was patented.

Court also stated that in order to grant an interlocutory injunction under Order XXXIX CPC, the plaintiff must show a prima facie infringement of right and such act has severely affected the patent and his/her product and has led to loss and damage to the plaintiff per se. Test of Balance of Convenience and Inconvenience was also stated by the Hon’ble court.

The respondent also alleged that there is no sort of invention of the said product and hence patent licence cannot be granted to the plaintiff and accordingly it may be affect the competitive market. It was also found out that the composition of a patented product of USA was more or less similar to that of patent of the plaintiff. It was held that mere arrangement, rearrangement of composition and content of any elements in a product is not a prima facie invention according to Section 3 Patents Act.

The plea of Gillette was granted by the court as under case of Gillette Safety Razor co. vs. Anglo[2] American stating that there was no invention per se in the said product. The court also intended to refer the case of Hansraj Bajaj vs. Indian Overseas Bank[3] and Jokai (Assam Tea) Co Ltd. vs. Bhawani Shankar[4] to conclude that if without any reasonable justification and reasonableness, the defendant brings forth that the unnecessary proceedings would lead to expense and unnecessary time wastage merely, such proceedings shall be stayed in accordance with Order XXI Rule 26 of CPC. Such stay may be valid in depending upon the facts and circumstance of any particular case or proceedings

The court henceforth didn’t grant the interlocutory order and temporary injunction granted by the plaintiff and petition was dismissed. The defendants were also asked to maintain accounts of sales of VIGIL and furnish them court and the plaintiff every month. The petition was henceforth dismissed by the court.

Conclusions
The said judgment was important and holds importance in the trademark act and the patents act. The judgment brought forth when shall interlocutory order according to Order XXXIX CPC be given to a patent and how rights of patentee shall be protected in the case. It also gave the Plea of Gillette in the patents act. It also said what shall be an invention which shall be granted a patent licence under the patents act, 1970

All and all the judgment was very essential in the field of Intellectual Property Rights. The Godrej Soaps and Proctors and Gamble Limited were successful to prove their contention according to Section 48 Patents Act which provides right of patentee specific to granting of patent to any individual, etc. The court herein strictly interpreted the provision for interlocutory order as per CPC with regard to the Patents Act, 1970

End Notes:

1. Order XXXIX CPC
2. (1913) 30 RPC 465
3. AIR 1956 CAL 33
4. AIR 1976 CAL 18