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Gillette Industries Limited Vs. Yeshwant Brothers - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai
Decided On
Case NumberO.C.J. Suit No. 3 of 1937
Judge
Reported inAIR1938Bom347; (1938)40BOMLR478
AppellantGillette Industries Limited
RespondentYeshwant Brothers
Excerpt:
.....had been working without success to attain it and had long regarded it as a problem, and that the invention of the patentee successfully solved the problem, constitute strong evidence that prior knowledge did not in fact give an obvious clue to the solution and ought not to be considered as destroying ' subject-matter.' mere simplicity is not necessarily an objection, a mere scintilla of invention is sufficient especially where the appreciation of a desideratum is one of the important features of the invention, and there may be invention in improvements in what is merely simplification, though matters of ordinary skiiled designing or mere workshop improvements do not require the exercise of invention. the practical utility and commercial success of the invention may be a material factor..........1930, r.e. thompson applied for a patent in the united kingdom relating to improvements in safety razor blades of the thin flexible type having external cutting edges and a medial slot and which were intended to be bent transversely and maintained in a position of curvature during use. a patent was granted to him in the united kingdom on september 24, 1931. the specification and the certificate of the controller relating to the granting of that patent are exhibit d.2. on may 19, 1930, r. e. thompson made an application for a similar patent in india, and he claimed the priority date of the united kingdom patent. on june 4, 1931, a patent was granted to him in india for sixteen years from september 7, 1933, and the certificate of the controller and the patent-specification are exhibit.....
Judgment:

Blackwell, J.

1. On March 24, 1930, R.E. Thompson applied for a patent in the United Kingdom relating to improvements in safety razor blades of the thin flexible type having external cutting edges and a medial slot and which were intended to be bent transversely and maintained in a position of curvature during use. A patent was granted to him in the United Kingdom on September 24, 1931. The specification and the certificate of the Controller relating to the granting of that patent are exhibit D.

2. On May 19, 1930, R. E. Thompson made an application for a similar patent in India, and he claimed the priority date of the United Kingdom patent. On June 4, 1931, a patent was granted to him in India for sixteen years from September 7, 1933, and the certificate of the Controller and the patent-specification are exhibit A.

3. On October 23, 1931, the Indian patent was assigned by Thompson to the plaintiffs. The assignment and the certificate of the Controller as to registration thereof are exhibit B (collectively). On September 10, 1932, the plaintiffs applied far leave to amend the Indian patent in order to bring that patent into conformity with the English patent. Leave to amend was granted on September 7, 1933, and the certificate of the Controller and the patent-specification as amended are exhibit C.

4. The plaintiffs bring this action against the defendants for infringement of the patent exhibit A. They allege that the defendants since the patent was amended have infringed and threatened and intend to infringe their patent in that they have been importing into British India offering for sale and selling safety razor blades bearing the name ' Navy Blade ' or ' Navy Blue Razor Blade ' so constructed as to infringe the first claim in their specification. They allege that on October 22, 1936, the defendants sold to J. C. Santos of Bandra six cartons of ' Navy Blue Razor Blades' or ' Navy Blades,' each carton containing five ' Blades' so constructed as to infringe their patent. The plaintiffs accordingly claim an injunction and damages.

5. The defendants in their written statement admit that they are the selling agents in India of the ' Navy Blade ' and the ' Navy Blue' razor blade manufactured by the Triangle Mechanical Laboratories Corporation of the United States of America, and admit that they have been importing into and selling in India ' Navy Blades ' and ' Navy Blue Blades '. Among other defences, however, they deny that Thompson was the first and true inventor of any improvements in or relating to blades for safety razors, and they deny that the alleged improvements were an invention which could be the subject matter of a valid grant of Letters Patent. They say further that there was no novelty in the alleged invention at the date of the grant, and no utility therein. They also say that the amendment of the specification was unauthorised and invalid in law, and was obtained by misrepresentation. They deny the alleged assignment. They say further that the plaintiffs' razor blades are manufactured exclusively outside British India and that the plaintiffs' patent is liable to be revoked, and they submit that it should be revoked. They allege further that the plaintiffs have threatened them and their customers by circulars, advertisements and notices with legal proceedings and they counterclaim Rs. 5,000 damages therefor. Such a claim is contemplated by Section 36 of the Indian Patents and Designs Act, 1911, though that section provides that it is not applicable if an action for infringement of the patent is commenced and prosecuted with due diligence as has been the fact in the present case.

6. The issues raised are as follows :-

(1) Whether Ralph Emerson Thompson, was the first and true inventor of the improvements in or relating to blades for safety razor?

(2) Whether the alleged improvements were inventions which could be the subject-matter of a valid; grant of the Letters Patent?

(3) Whether there was any novelty in the alleged invention at the date of the grant ?

(4) Whether the alleged invention had any utility?

(5) Whether the alleged amendment of the specification was authorised and valid in few ?

(6) Whether the Specification and claims are vague and ambiguous?

(7) Whether the Specification is insufficient ?

(8) Whether the grant was obtained by misrepresentation?

(9) Whether the grant of Letters Patent is valid?

(10) Whether there was a valid assignment?

(11) Whether there was any infringement or threatened infringement?

(12) Whether the plaintiffs' safety razor blades are manufactured exclusively outside British India, and whether the plaintiffs' patent is liable to be revoked?

(13) Whether the plaintiffs have suffered any damages or loss of profits or whether the plaintiffs are exposed to further loss or damage ?

(14) Whether the defendants are liable for the said loss or damage?

(15) Whether the plaintiffs threatened the defendants and their customers by circulars, advertisements and notices with legal proceedings ?

(16) What damage did the defendants suffer and whether the plaintiffs are liable to pay the same,

and

(17) Generally.

7. It will be convenient briefly to refer to certain matters of law arising in connection with some of these issues. The first issue raises the question whether Thompson was the first and true inventor of the improvements. In the Eighth Edition Of Terrell on Patents at p. 396 it is stated that particulars should be given as to whom the defendant alleges to be the true and first inventor. It is pointed out that this has the effect both of informing the plaintiff of the case he has to meet and of removing any ambiguity which might arise from the bare statement of this objection, and Stroud v. Humber Ld. (1906) 24 R.P.C. 141 is cited. In this connection it may be here pointed out that the defendants have given no particulars whatever as to whom they allege to be the true and first inventor.

8. Issues Nos. 3 and 4 deal with questions of novelty and utility. The question of novelty is dealt with at some length at p. 66 and the following pages of Terrell on Patents. It is there pointed out that if it can be shown that the new result was long sought for, that persons skilled in the art had been working without success to attain it, and had long regarded it as a problem, and that the invention of the patentee successfully solved the problem-then such a state of affairs constitutes evidence of the strongest kind that the prior knowledge did not in fact give an obvious clue to the solution and ought not to be considered as destroying ' subject-matter.' It is further pointed out that mere simplicity is not necessarily an objection, that a mere scintilla of invention is sufficient, especially where the appreciation of a desideratum is one of the important features of the invention and that there may be invention in improvements in what is merely simplification, though matters of ordinary skilled designing or mere workshop improvements cannot be considered as requiring the exercise of invention. It is further pointed out that the practical utility and commercial success of the invention may be a material factor in determining whether the new result was obvious or not. In his judgment in Ehrich v. Ihlee (1888) 5 R.P.C. 198. Mr. Justice Kekewich stated as follows (p. 205) :-

If within a short time of the first manufacture and sale an article of commerce commands a ready and extensive sale, that fact, which is proof of utility, must also be accepted as evidence, not conclusive, but cogent of novelty.

As to utility it is stated at p. Ill of Terrell's work that the fact that the patent has been infringed is evidence of utility. Lucas v. Miller (1885) 2 R.P.C. 155 is cited, where Mr. Justice Kay said (p. 160) : ' better evidence of the utility of an invention cannot possibly be had than the fact that the Defendant has attempted to infringe it,' and a reference is made to the remarks of Lord Justice Bowen in H. Miller and Co. v. Scarle Barker and Co (1893) 10 R.P.C. 106. In Swan's Patents, Designs and Trade Marks the author says as follows (p. 126):-

There is one form of flattery which even the vanity of an inventor does not relish, and that is the flattery of imitation. It is, however, the inevitable reward of a successful invention and the most signal mark of admiration that the public are wont to pay to inventive achievement. One might almost say ' Happy the inventor whose patent is infringed' for that is the surest sign that he has devised something of utility and worth.

9. Issue No. 5 raises the question whether the amendment of the specification was authorised and valid in law. Section 17 of the Indian Patents and Designs Act, 1911, deals with applications to amend patents, and Sub-section (8) provides that leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud ; and the amendment shall be advertised in the prescribed manner, and shall in all Courts and for all purposes be deemed to form part of the application or specification. The defendants, although they allege in their written statement that the amendment was obtained by misrepresentation, have offered no evidence whatever of fraud in connection with the obtaining of the amendment and it is, in my opinion, perfectly plain that the granting of leave to amend which is established by the certificate put in in this case is conclusive upon that matter.

10. Issue No. 10 questions the validity of the assignment. Section 63(3) of the Act permits the person registered as the proprietor of a patent to assign the patent, and Section 2(12) defines 'patentee' as the person for the time being entered on the register of patents kept under the Act as the grantee or proprietor of the patent. The assignment has been produced and there is a certificate of the Controller of the registration of that assignment. The plaintiffs therefore are clearly assignees of the patent, and as such are entitled to enforce it.

11. Issue No. 12 raises the question whether the plaintiffs' safety razor blades are manufactured exclusively outside British India, and whether the plaintiffs' patent is liable to be revoked. It is admitted that the plaintiffs' razor blades are manufactured exclusively outside British India, but, in my opinion, for reasons which I will mention that fact is entirely irrelevant. Section 23 of the Act deals with this question. It provides that at any time not less than four years after the date of a patent granted under the Act, any person may apply to, the Governor General in Council for relief under the section on the ground that the patented article or process is manufactured or carried on exclusively or mainly outside British India. Sub-section (2) provides that if the Governor General in Council after inquiry is satisfied that the allegations are correct and that the applicant is prepared and is in a position to manufacture or carry on the patented article or process in British India, and that the patentee refuses to grant a license on reasonable terms, then he may make an order revoking the patent. It is conceded by the defendants that they made no application to the plaintiffs for a license, and further that they made no application to the Governor General under Section 23 of the Act. Consequently they are not in a position to ask the Court to revoke the patent granted to the plaintiffs as not having complied with Section 23. It is, however, to be pointed out that although the blades are not manufactured here the business of selling them is carried on on a very extensive scale in British India by the plaintiffs. It is provided by Section 29 of the Act that the patentee may institute a suit against any person who, during the continuance of the patent acquired by him, makes, sells or uses the invention without his license. That section clearly entitles the plaintiffs to maintain this action.

12. [After discussing evidence at length his Lordship proceeded. On this evidence I have no hesitation whatever in holding that the plaintiffs have established the validity of their patent, and have made out a case of infringement and are entitled to succeed.

13. As to issue No. 12 the plaintiffs' razor blades are manufactured exclusively outside British India, but in the circumstances of this case this is immaterial and the plaintiffs' patent is not liable to be revoked.

14. As regards issues Nos. 13 and 14, Sir Jamshedji Kanga for the plaintiffs informed me that the plaintiffs would be content with nominal damages which I assess at Re. 1. I answer issues Nos. 13 and 14 in the affirmative.

15. Issues Nos. 15 and 16 relate to the defendants' counter-claim. As this was abandoned by the defendants those issues no longer arise.

16. There will be a decree in favour of the plaintiffs granting them an injunction in terms of prayer (a) of the plaint, and damages Re. 1. The plaintiffs will also get the costs of the suit.

17. The counter-claim is dismissed with costs.

18. The plaintiffs ask me to grant a certificate under Section 32 of the Act, which provides that in a suit for infringement of a patent the Court may certify that the validity of the patent came in question, and if the Court so certifies, then in any subsequent suit in that Court for infringement of the same patent the plaintiff, on obtaining a final order or judgment in his favour, shall, unless the Court trying the suit otherwise directs, have his full costs, charges and expenses of and incidental to the said suit properly incurred.

19. Accordingly I certify that the validity of the patent came in question in this suit, and I have already held that the plaintiffs' patent is a valid patent.

20. The Prothonotary and Senior Master will send to the Controller a copy of the decree in this case in order that he may cause an entry thereof and reference thereto to be made in the register of patents.

21. The parties have agreed that the exhibits in this case should be returned to them subject to an order in that behalf. That order I make accordingly.


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