The phrase “I’ll sue you” is one that many people love to use, without actually giving too much thought to whether legal action can in fact be taken and if so, whether it’ll be maintainable in a Court of Law. Lawyers take it a step further (in an attempt to make their client’s happy) by telling the other party that legal action will be taken against them if they do not comply or do what is necessary to be done. As a lawyer, it is pertinent to make sure your client is in the clear before actually threatening to someone with legal threats. The Delhi High Court reiterated this by granting an injunction against Vitaflex Mauch GMBH from issuing the groundless, unjustifiable or wrongful threats to Bata India.

How it all started   

The suit was decided ex-parte and the defendants did not put forth any arguments or evidence in this matter. Bata received a legal notice on April 4, 2006 wherein Vitaflex claimed that,

  • They were distributors for the shoes under the brand by doc Mauch, the insole of which was characterized by a 5 points design.
  • They had a trademark for 5 POINTS in India and also have a published patent for their invention in India and that the only noticeable difference between their products and that of Bata is that it has 6 points instead of 5.

For these reasons, they alleged infringement of their trademark and patent rights and as is the case with any legal notice, they threatened to take legal action in case Bata didn’t comply with their demands.

Bata replied to their legal notice and responded to the allegations. In brief, Bata denied that Vitaflex had any registered patent for the insole and specifically stated that the PCT application only claims novelty in the material and the thickness of the insole and not in the configuration of the pressure points. With regard to the trademark application, Bata rightly stated that Vitaflex cannot hold a trademark for the functionality of the goods and is therefore distinct.

The issues that were framed by the Court were specifically to determine whether the legal notice amounted to groundless threats of legal proceedings and whether Bata was entitled to an injunction and damages of 20 lakhs for the same. In addition to this, the Court also wanted to find out whether Vitaflex had any trademark and patent rights as they claimed.

Relevant laws

Section 142 of the Trademarks Act states that if any person threatens who is the owner of the registered trademark threatens another with an action or proceeding for infringement of a trade mark, the person being so threatened can obtain a declaration against such threats if they are unjustifiable.

Section 106 of the Patents Act is on the same lines as the Trademarks Act and specifically mentions that a mere notification of the existence of a patent does not constitute a threat of proceeding under the Act.

Analysis of the Court

The Court rightly pointed out that in such cases, the Plaintiff has the right to seek an injunction. However, the onus is on the Defendant to show that they had a valid patent and rights in the reflex/pressure point depiction as a trade mark. Effectively, this would mean that only a person who has a registered trademark or patent can issue such threats of legal proceedings as per the law.

In this particular case, Vitaflex did not submit any evidence in support of their claims and therefore the Court held that the legal notice to Bata amounted to groundless threats of legal proceedings.

Thoughts

As I started off by saying, it is extremely important to ensure that legal notices or cease and desist notices are carefully worded and factually correct because they can go a long way in determining your rights. In fact, in this case, it goes to show that it can be detrimental to your rights if the right course of action or approach is not taken.

Image Source: Flickr.

This article has been authored by Nikita, an IP Law practitioner.