The owner of a patent may file a suit in respect of an act of infringement of a patent against the third party. In such suit, the owner may seek for various reliefs.
Section 108 of the Patent Act, 1970, enumerates the reliefs that may be granted to the successful plaintiff in the suit for infringement.
Injunction is a preventive civil remedy. There are of two kinds of injunction –
- Temporary Injunction
- Permanent Injunction.
The following conditions must be met to obtain an injunction:
- The patent is prima facie valid;
- There is prima facie infringement on the part of the defendant;
- The balance of convenience lies in favour of grant of the injunction; and
- The patent owner will suffer an irreparable injury if the injunction is not granted.
In the case of TVS Motor Company Limited Vs. Bajaj Auto Limited (2009(3) CTC178) the Hon’ble Madras High Court has observed that:
“For the grant of interim injunction in a patent matter, the prima facie validity of the patent should be shown and also the prima facie infringement should be proved apart from the availability of balance of convenience and irreparable loss”.
In the case of Galatea Ltd. Vs. Diyora And Bhanderi Corporation, a petition was filed in the High Court of Gujarat for the grant of temporary Injunction. The court however rejected the petition and held that “the plaintiffs have failed to prove three essentials for grant of an interim relief i.e. prima facie case, balance of convenience and irreparable loss and injury”.
Damages or Account of Profits
The plaintiff is entitled to the remedy of either damages or an account of profits. The plaintiff is given the option to elect one of them.
In the case of Island Records Limited v. Tring International PLC 1995, F SR, the High Court of Justice (Chancery Division) held that it was settled law that a plaintiff (or a person in the position of a plaintiff) is entitled to pray for an inquiry as to damages or, in the alternative, on account of profits although only one such remedy will be ordered – the plaintiff having to elect which.
Seizure or Forfeiture of Infringing Goods and Implements
Apart from the other reliefs, a court may order that the goods which are found to be infringing and materials and implements which are predominantly used in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case, without payment of any compensation.
In the case of Farbewerke Hoechst Vs Unichem Laboratories and Ors [AIR 1969 Bom 255] the Plaintiff claimed as a relief an order for payment of a sum of Rs. 7,000/- as and by way of damages, or in the alternative, an order for an account of the profits made by defendants Nos. 1 and 3 from the sale of the infringing goods and for payment of the same to the plaintiffs, and for an order to deliver up to the plaintiffs for destruction of all articles in the possession of defendants Nos. 1 and 3 made in infringement of the plaintiffs’ said patent. The High Court of Bombay while deciding the matter arrived at the conclusion that “the plaintiffs will be entitled to the normal reliefs available in an infringement action, viz., an injunction, as well as an order for the delivering up for destruction of all articles in the defendants’ possession made in infringement of the plaintiffs’ patent No. 58716.”