A trade mark may be removed on the ground that on the date of the registration, the use of the mark would cause confusion and the registration is in contravention of the provisions of the Act. In the instant case, the marks are given below: Applicants’ mark Respondents’ mark 16. When we look at both the marks, the marks are identical. The goods in respect of which, the applicants & the respondents are dealing are also the same. The artistic work is the same. The registration is therefore, in contravention of Sub Section 3 of Section 11 of the Act. The respondents are out only to make profit out of the goodwill & reputation earned by the applicants. The respondents are passing off their goods as that of the applicants as well infringing the copyrighted artistic work of the applicants. 17. We shall now deal with the adoption of the infringed trade mark by the respondents. Hereinabove, we have seen both the label marks. The word consists of the letters o,r,a & s. All the letters are small letters. The letter “r” is written in a stylish manner which looks like a “tap” as it is used for the goods – apparatus for water supply. The respondents have not appeared before us to give any explanation for the adoption. Assuming the respondent had adopted the trade mark for some reason or other, we cannot accept the adoption of the label mark to be honest. The respondents impugned trade mark is a slavish copy of the applicants trade mark. The adoption by the respondent is only to make profit out of the reputation & goodwill earned by the applicant. The adoption, therefore, cannot be said to be honest. 18. As regards the date of user, even though the respondents are not before us, on perusal of the Trade Marks Journal Publication, it is an admitted fact, that the respondents use is since, 2003 which is subsequent to that of the applicants use. The applicants rights are , therefore, to be protected. 19. The impugned trade mark adoption of which is proved to be dishonest and that the registration is in contravention of the provisions of the Act and is an entry wrongly remaining on the Register. 20. The applicants have admitted that they have just come to Indian Market. They further stated that no action wad initiated against the respondents as they were not available in the market. The notice sent to the respondent was returned un-served with an endorsement as “left without address”. Considering all these facts, we assume that the respondents though have obtained registration are not in the market and therefore are not using the trade marks. 21. Even though the applicants have stated that they have entered the Indian market only recently, we are granting their prayer. The reason is that not only the trade mark has been copied but even the artistic work is copied. 22. In view of the above findings, we allow the rectification application with a direction to the Registrar of Trade Marks to remove the trade mark registered under No. 1224394 in Class 11 with no order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

 Teynampet, Chennai-600018

*****

 ORA /151/2011/TM/DEL

     FRIDAY  THIS   THE   18^th DAY OF MAY, 2012

HON’BLE MS. S.USHA                             …         VICE CHAIRMAN

HON’BLE SHRI V.RAVI                            …         TECHNICAL MEMBER

M/s ORAS Oy.,

Isometsantie 2,

P.O.Box No.40, F1-26100                           …           Applicant

                                    (Represented by   Shri S.K.Bansal)

Mr. Pradeep Khandelwal,

Trading as M/s Bazarilal Pradeep Kumar,

3754, Chawri Bazar, Delhi 110 006.                …          Respondent

                                          (Represented by  None)

ORDER (No.127/2012)

HON’BLE MS. S. USHA, VICE CHAIRMAN:

          Original Rectification Application is filed for removal of the trade mark   registered under No. 1224394 in Class 11 under the provisions  of  the Trade  Marks  Act 1999  (in short ‘the Act’).

2.      The applicant is engaged in the business of manufacture, distributor and sale of wide range of apparatus for water supply & sanitary purpose including mixer taps for water pipes such as thermostatic mixers, bath/shower mixers and kitchen sink mixers, plumbing parts and fittings, apparatus for heating and drying, Washing machine valves and coupling, brass and steel ball valves for district heating and building industry, facets, various types of taps, viz: touch less taps, electronic faucets, various types of taps, viz: touch less taps, electronic faucets, automatic faucets, thermostatic faucets, pressostatic faucets, single lever mixers, basin mixers, shower sets, shower panels, radiator valves, regulating valves, throttle valves, pressure-balancing valves, pump vales, mixing valves, ball valves, safety valves, constant pressure valves, garden valves, washing machine valve, Components and fitting for the afore mentioned products etc. and other allied/related products.

3.      The applicant company was founded in the year 1945.  They adopted the trade mark Oras & started using the same since 1945.  In the year 1977, the applicant started using the trade mark  in a stylized manner.  They had been using the mark also in conjunction with other words/marks in various style and artistic way.  The word Oras forms essential part of the applicants name M/s Oras Qy.  They also adopted Oras as an essential and mutual part of its domain name i.e. www. Oras.com.    By using the domain name in the course of trade & in relation to its business & products, it has built up a valuable trade, goodwill & reputation thereunder.

4.      In order to obtain statutory rights in the said trade mark the applicant obtained registration in various countries of the world.  They obtained registration in Finland as of 01.04.1978.  The applicant is the owner & proprietor of the Original artistic work of the label within the meaning of the Indian Copyright Act.

5.      The applicants products are distributed in various parts of the world.  Since adoption, the applicants have been continuously & extensively using the trade mark without any interruption.  The applicant had thus acquired a worldwide & global valuable trade & goodwill.  The applicants maintain excellent quality by applying the latest production techniques, marketing strategy and sales distribution.  They have spent several millions Euros on the publicity & promotion of the said trade mark.

6.      To the best of the applicants knowledge & information the respondent is also engaged in the same /similar business as that of the applicants.  The respondents have adopted the trade mark label Oras malafidely & dishonestly. They have also wrongly and malafidely obtained registration of the impugned trade mark label  “ ” under No. 1224394 in class 11 as of 19.08.2003.  The adoption & registration of an identical mark for identical goods will definitely cause confusion & deception among the public.  The applicant is suffering & will contribute to suffer in case the impugned trade mark is not rectified from the register.  For these reasons, the applicant is a ‘person aggrieved’ and they have the locus to sustain  & maintain the instant petition on these grounds:-

          a)  the impugned trade was wrongly applied for & wrongly  obtained by the respondent;

          b)  the respondent is guilty of playing fraud upon the Registrar; c)   the respondents’ date of use is wrongly given;

          d)  the respondent has not used the impugned trade mark in relation to the goods for which registration was obtained;

          e)  the respondent’s use, if any, is tainted and is  void abinitio;;        

          f)  the illegal use of 8 months is not sufficient to grant registration;   

          g)  the impugned trade mark has not acquired distinctiveness

           h) the respondents adoption is dishonest;

           i)  the applicant is the prior adopter and user of the impugned  trade mark;

           j)  the respondents adoption is only to trade upon the applicants goodwill & adoption;

           k) the respondent is guilty of infringement of trade mark & copyright;

           l)  the impugned trade mark is likely to cause confusion &  deception;

          m)  the impugned registration is in contravention of the  provisions of Section 11 of the Act;

          n)  the respondent is not entitled to any of the benefit of  Section 12 of the Act;  

          o)  the respondent is not entitled to any of the benefit of Section 18 of the Act;

          p)  the respondent has not used the trade mark for a period of more than  5 years and 3 months and is therefore the trade               mark deserves to be rectified under Section 47 of the Act;

          q)  the impugned trade mark is wrongly remaining on the  register without sufficient  cause;

          r)  the impugned trade mark is registered contrary to the provisions of the Act;

         

          s)  the impugned registration is illegal & void abinitio;

          t)  in the interest of purity of the register the entry be removed;

         

           u) in the interest of justice, equity & good conscience the present petition be allowed.     

7.    The service of notice of the rectification application on the respondent could not be made as the notice sent was returned with an endorsement as “ left without address”.  The applicant, therefore, effected publication of notice as per directions of this Board.  The publication was effected on 12/01/2012.  There was no appearance for the respondents, they were set ex-parteand we heard the applicants on merits.

8       The learned counsel for the applicant reiterated the entire facts of the case as stated in the application for rectification.  The counsel then relied on few judgements.

1. 2005(30)PTC 385(Mad-DB)--“Jolen Inc.,  Vs. Shobanlal Jain and Others” - an identical copy of the mark with the artistic work is only to trade upon the goodwill & reputation earned by the applicant.

2.  1997 PTC(17) High Court of Delhi IA.No.5895/86 in Suit No.2222/86 -- “Revlon Inc. Vs  Sarita Manufacturing Co.”- No reason given by the respondent for the adoption of an identical trade mark.

3.  AIR 1995 Delhi 300 --“N.R. Dongre and others Vs. Whirlpool Corporation and others”– The knowledge and the awareness of the goods of a foreign trade and its trade mark can be available at a place where goods are not being marketed & consequently not used.

4.   2004 (28) PTC 585 (SC) --“Milment Oftho Industries & Others   Vs   Allergan Inc.”-  The mere fact that the respondents have not used the mark inIndia would be irrelevant if they first in the world market. 

9.      The counsel finally prayed that the rectification application be allowed with a direction to the Registrar to remove/cancel the trade mark.

10.    We have heard & considered the arguments and have gone through the pleadings & documents.

11.    The application for rectification has been filed on the ground that the  respondents have not used the trade mark for a period of more than 5 years and 3 months and that the adoption of an identical trade mark is dishonest amongst other grounds.  The marks are identical for identical goods.

12.    We shall first deal with the issue of a person aggrieved.  The application for rectification can be filed by a person aggrieved as per the provisions of the Act for rectification unlike an opposition proceedings which can be filed by any person as person under Section 21 of the Act.

13.    The term “Person aggrieved” has been defined by Lord Herschell in Powell’s case;

          “Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the Trade Marks, and wherever the Trade Mark if remaining on the register, would or might limit the legal rights of the Applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved.”

14.    The applicants herein are engaged in the same trade and are likely to be injured by the impugned registration.  The applicants have adopted and used the trade mark since 1945 and have started using the trade mark label since 1977.  The respondents claim user since 04.01.2003 as seen from the Trade Marks Journal advertisement which is definitely subsequent to that of the applicants.  The label mark which has an artistic work in the trade mark Oras is written in a stylish manner and the respondent has copied the entire artistic work which is contrary to law.  Considering these facts, we are of the view that the applicant is a person aggrieved.

15.    A trade mark may be removed on the ground that on the date of the registration, the use of the mark would cause confusion and the registration is in contravention of the provisions of the Act.  In the instant case,  the marks are given below:   

                                Applicants’ mark                              Respondents’ mark     

16.    When we look at both the marks, the marks are identical.  The goods in respect of which, the applicants & the respondents are dealing are also the same.  The artistic work is the same.  The registration is therefore, in contravention of Sub Section 3 of Section 11 of the Act.  The respondents are out only to make profit out of the goodwill & reputation earned by the applicants.  The respondents are passing off their goods as that of the applicants as well infringing the copyrighted artistic work of the applicants. 

17.    We shall now deal with the adoption of the infringed trade mark by the respondents.  Hereinabove, we have seen both the label marks.  The word consists of the letters o,r,a & s.  All the letters are small letters.  The letter “r” is written in a stylish manner which looks like a “tap” as it is used for the goods – apparatus for water supply.  The  respondents have not appeared before us to give any explanation for the adoption.  Assuming the respondent had adopted the trade mark for some reason or other, we cannot accept the adoption of the label mark to be honest.  The respondents impugned trade mark is a slavish copy of the applicants trade mark.  The adoption by the respondent is only to make profit out of the reputation & goodwill earned by the applicant.  The adoption, therefore, cannot be said to be honest. 

18.    As regards the date of user, even  though the respondents are not before us, on perusal of the Trade Marks Journal Publication, it is an admitted fact, that the respondents use is since, 2003 which is subsequent to that of the applicants use.  The applicants rights are , therefore, to be protected.

19.    The impugned trade mark adoption of which is proved to be dishonest and that the registration is in contravention of the provisions of the Act and is an entry wrongly remaining on the Register.

20.    The applicants have admitted that they have just come to Indian Market.  They further stated that no action wad initiated against the respondents as they were not available in the market.  The notice sent to the respondent was returned un-served with an endorsement as “left without address”.   Considering all these facts, we assume that the respondents though have obtained registration are not in the market and therefore are not using the trade marks.

21.    Even though the applicants have stated that they have entered the Indian market only recently, we are granting their prayer.  The reason is that not only the trade mark has been copied but even the artistic work is copied.

22.    In view of the above findings, we allow the rectification application with a direction to the Registrar of Trade Marks to remove the trade mark  registered under No. 1224394 in Class 11 with no order as to costs.

          

(V.Ravi)                                                                   (S.Usha)

Technical Member                                               Vice Chairman

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

“A process of marking, etching & engraving by using laser beam Technology on metals & non-metals consisting of a laser head comprising a head, mirror mount, aperture mount, beam bender, rail through power supply, RF Driver, heat exchanger & chiller to generate a laser beam connected with a programmable computer system to generate the laser beam for marking & engraving the required design on the substance placed on the table through the Galvos.” In the circumstances, we find that all the objections raised by the applicant are sustained. The invention was already known and there is neither any novelty nor any inventive step and therefore, both the TRAs are allowed. Miscellaneous Petition Nos. 41 & 42 are disposed off. .

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018

*****

(Circuit Bench sitting At Mumbai)

  M.P.Nos. 41 & 42 of 2012 in

    TRA/05/2008/PT/MUM &

TRA/06/2008/PT/MUM

 and

        TRA/05/2008/PT/MUM     &

TRA/06/2008/PT/MUM

(TUESDAY THIS,  THE  12^th DAY  OF JUNE, 2012)

HON’BLE SMT.JUSTICE PRABHA SRIDEVAN           …  CHAIRMAN

HON’BLE SHRI D.P.S. PARMAR                                     …  TECHNICAL MEMBER

1. M/s Aditi Manufacturing Co.,                                

    D/7, D/8 Akurli Industrial Estate,                                              

    Akurli Road, kandivali (East),

    Mumbai 400 001.                                                       … Applicant

                                   

(Represented by Advocates: Ms. Rushvi N.Shah

                                               Mr. Zahid K. Shaikh)

2. M/s Bharat Bhogilal Patel,

    1/41, Juhu Gold Mist,

    J.V.P.D. Scheme, Vile Parle (W),

    Mumbai – 400 049

    Maharashtra.

 3.The Controller of Patents & Designs,
    The Patent Office,

    “Nizam Palace”, 2^nd M.S.O.Building,

    5^th, 6th & 7^th Floor,

    234/4, AJC Bose Road,

    Calcutta – 700 020.                                                  … Respondents 

(Represented by Advocate:  Mr. Ketan Parekh)

ORDER  (No. 167/2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

            Two transfer applications TRA/05/2008/PT/MUM & TRA/06/2008/PT/MUM received from Ahmedabad High Court vide Order dated 22.08.2002 seeks the revocation of two Patents viz. No.189027  & 188787.  Patent No.189027 is for a process of manufacturing engraved design articles on metals or non-metals and Patent No. 188787 is for “an improved laser marking and engraving machine”.   The application Nos. are 610 & 611 BOM 1998  and patent were granted. 

 The abstract of the first patent reads as follows:-

            “A process of marking, etching & engraving by using laser beam Technology on metals & non-metals consisting of a laser head  comprising a head, mirror mount, aperture mount, beam bender, rail through power supply, RF Driver, heat exchanger & chiller to generate a laser beam connected with a programmable computer system to generate the laser beam for  marking & engraving the required design on the substance placed on the table through the Galvos.” 

The abstract for the second patent reads as follows:-

            “A laser marking & engraving machine consisting of the laser head comprising of head, mirror mount to mount the mirror, Q-switch to mount the Q-switch for   Aperture mount to regulate the aperture so as to very the intensity of the Laser      Beam,. which is further provided with a beam bender for positioning the beam in a required direction which is supported in a rail & connected to a control Pane provided with power supply, RF Driver, Heat Exchanger, Chiller to generate a            laser beam of required intensity for marking/etching, engraving, scrubbing, cutting as per the required design programmable through a computer on metals and non – metals through beam steared galvo’s and flat field galvo’s/scanning heads. ”

2.         Since the applicant for revocation is same and subject mater is related the revocation for grant of the product patent and process patent they were taken up together at the request of the applicant.   The revocation in both cases is sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of patent. Laser marking was known and US Patent No. 4467172 is similar to the invention. So are US Patent No.4507789 and Japan Patent No.279350. The machine and process described by inventor has been published in 1992 by Excel Control Laser Inc. The invention is not new; it is publicly known.  It is a collection of known integers.  The grant of patent has been obtained by suppression of information and there is no inventive step.

             The product patent relates to laser marking and engraving machine.  This work was earlier carried out by mechanical and chemical means which was different, tedious, lengthy and costly.  By the invention, a simple to use machine has been invented.  The object of the invention is to give improved marking quality, reduction of maintenance cost, elimination of secondary process, safety and easy handling and pilfer proof marking.

3.         Accordingly there is provided a laser marking & engraving machine consisting of a laser head consisting of a head, mirror mount, aperture mount, beam bender, rail, through power supply, RF Driver, heat exchanger & chiller to generate a laser beam using  with a programmable computer system to generate the laser beam for marking & engraving the required design on the substance.

4.         According to the complete specification,  the machine has got versatile application and by changing the Galvo’s many modifications have been effected.  The Claim- 1 in Patent No. 188787 reads as follows:-

            “A laser marking & engraving machine consisting of the laser head comprising of head, mirror mount to mount the mirror, Q-switch to mount       the Q-switch, Aperture mount to regulate the aperture so as to vary the       intensity of the Laser Beam, which is further provided with a beam bender for positioning the beam in a required direction which is supported in a rail & connected to a control panel provided with power supply, RF Driver, Heat Exchanger, Chiller to generate a laser beam of required intensity for marking/etching, engraving, scrubbing, cutting as per the required design programmable through a computer on metals and non-metals through beam steared galvo’s & flat field galvo’s/scanning heads.”   

            The Claim -1 in the process Patent  189027 reads as follows:

“A process of manufacturing engraved design articles metals or non-metals using laser beam technology consisting of a marking the required design on metal or non-metal;

            b. etching the outer and inner area of the design;

            c. engraving the etched area and finally drilling the engraved     area  by means of laser beam through sequential command  from a computer to obtain ornamented design on precious metals and non-metals.

5.         Except for the above Claims, both the complete specifications are identical in description word by word.  One is verbatim reproduction of another.

6.         In the Counter Statement, the Patentee has initially taken the maintainability objection, regarding cause of action by the petitioner without prejudice to that it is alleged that Shri Deepak Shah is not the partner of the firm M/s Aditi Manufacturing Co. and that the applicant has visited the respondent’s Plant with the managing Director of M/s  Laser S.O.S Pvt. Ltd and thereafter had started their business and after getting to know the technology from the respondent, the petitioners are trying to challenge the Patent . 

7.         In Paragraph 8 of the written statement,  the applicant is called upon to prove when they came to know about two patents and states that the allegations about the patents are false.  Paragraph 9 refers to the provisions of law to be relied on.   In paragraph 10, the respondent has denied that the technology was known for a long time. It is stated that the respondent was the first to invent this technology.  According to the respondent, the company Excel Laser Computers referred to in the petition is not the correct name of the company.  It is Excel Control Lasers and that the Patent granted in USA is different from the Patent in question.  In paragraph 11, the respondent denies that the two impugned patents are identical and ditto of each other.  In paragraph 12, it is stated that the invention involves inventive steps and the prior arts, US Patent Nos. 507, 789 & 76 are different.  According to the counter, in the invention the cooling unit directly removes the heat from the Laser Head and there are no primary and secondary cooling systems, the Head Design of the patent and mounting of optics like mirror and Q-switch and Galvos are totally different, and the resonating length and the distance from the Head to Mirror are different.  According to the respondent from the “above features’, it will be clear that the respondent’s Patent is different.  And the invention of the respondent is unique.   Paragraph 13 denies the allegation made with reference to Claim 1,2, & 3.   According to the respondent, the invention is not a copy of any process or patent known in public domain.  It is also stated that

            i)  the system is connected to computer readable medium integrated with hardware to give sequential command from computer to obtain ornamental designs on metals and non-metals and that the hardware in the programmable computer is capable of generating different engraved design articles and the process of laser marking does not only depend on Galvos but other factors like generation of cooling system, power supply, RF generation, type of laser, beam size, beam diameter, focal length etc.  

8.                  According to the respondent,

a)     Marking on ABS is good with Nd:Yag  laser but not with CO₂ laser;

b)     2KW CO₂ laser can cut steel of 12 mm but cannot mark on it;

c)      CO₂ laser cannot cut diamonds but Nd:Yag laser can;

d)     Nd:Yag laser is not good at marking on diamonds. A green laser is good at marking on diamonds.

According to the respondent, if the laser beam is not focused properly, the object cannot be marked and  “this is most important and basic step of our basic process Patented”.  According to the respondent, the applicants are being non technical and therefore, they do not understand the technical aspect of the invention.  It is not a combination of known-integers or rearrangements.  

           

9.         In paragraph 19, the respondent has stated that they are not aware nor admit their prior publication of technical literature dated 1992 titled “INDUSTRIAL STRENGTH LASER MARKING” and they are not aware nor do they admit the said literature published by the Excel Control Laser.  They submit that their invention is not based on any of the literature as alleged by the applicant.  This in brief is the pleading of the respondent. 

10.       Reply was filed by the petitioner where it is stated that Shri Deepakbhai Shah was the partner at the time of filing of revocation petition and it is denied that he visited the plant and had started their business thereafter.  It is stated specifically that the publication of 1992 has been copied completely right from the machine and process.

11.       The Applicants has also filed additional documents along with the Miscellaneous Petition.  Originally he filed some documents along with an affidavit and we had permitted them to file it in proper form.  An order was passed on 19.03.2012 by this Board that the documents will be received in evidence only on payment of Rs. 5000/- costs, which has not been paid.   However, in the interest of justice we have seen them.

12.       The learned counsel for the applicant Ms. Rushvi N. Shah submitted that the invention is not new, there is no inventive step, there are prior arts disclosing identical product and processes. She submitted that the evidence filed would prove their case.   Exhibit ‘A’ is the notice issued on behalf of the respondent  inventor  Shri Bharat Bhogilal Patel  calling upon  the applicant to stop infringing the patent and for rendering of complete accounts etc.  This is dated 07.10.2005.  A reply was sent in November, 2005 on behalf of the applicant asking the respondent to give the particulars of the Patent, copy of the Patent specification. Immediately, in 2006, a revocation application was filed.  So clearly the applicant was a “person aggrieved”.  The learned counsel submitted that they had also filed a Caveat before the Hon’ble Bombay High Court but no injunction suit was filed.  The learned counsel referred to Section 3(k), 3(f) and 10(4) of the Patent Act and stated that on these grounds the grant of patent was attacked.   Learned counsel submitted that there was suppression of prior art and publication.  The learned counsel submitted that according to the inventor, the patent was for a laser process for making object which he invented.  But even before 1980, Laser Technology was available.  The learned counsel referred to Exhibit ‘C’ filed along with the revocation application to show that there was nothing new in the Patent.  The learned counsel also submitted that in the counter statement, the respondent has not stated what was the existing state of art and how the invention is an improved one.   The learned counsel referred to the depiction in exhibit ‘C’ of the machine which is identical to Figures 2 & 3 annexed to the complete specification.  The learned counsel submitted that the prior art US Patent’789  was dated 26.03.1985 and that this teaches the invention. The learned counsel referred to the affidavit of Shri Arvindbhai Patel to support their case.  The learned counsel submitted that  Insta mark was prior to invention. The learned counsel referred to several decisions.

As per specification

Insta Mark

 

13.       The learned counsel for the respondent submitted that the applicant’s conduct was not bonafide. He submitted that the applicant is in the same business and knew about this invention.  He pointed out that the title says ‘improved’ which shows that the existing machine was improved upon.  The invention lay in that all the processes - marking, etching engraving, scrubbing and cutting were done in one stroke.  He submitted that all the prior arts are US Patents and they were used in a different voltage from the Indian one.  The learned counsel submitted that the industrial application of the invention is much wider.  There is a beam in the invention which is not found in the prior art.  The range in the invention is wider to cover all materials from plastic to diamonds and it is therefore, cost efficient and effective.  The learned counsel submitted that in the invention different sources of light may be used and the multi step process for marking has been made into a single step process.  The learned counsel submitted that the invention works in Indian temperature when compared to the prior art and even Small Scale Industries can use it and therefore, it has economic significance.    The learned counsel submitted that the invention is not a software by itself.  The learned counsel also referred to the expert evidence. 

14.       In reply, the learned counsel for the applicant submitted that the word “improved” is vague, is not clear.  The diagram is not clear.  There is a striking difference from what is claimed to be the invention in the counter statement and what is claimed to be in the invention in the oral submissions and the counter statement does not specifically deny the various allegations made. 

15.       Now we will look at the evidence filed by the applicant to prove their case.

a)  US Patent ‘ 789 is for reliable low cost light weight CW pumped Nd:Yag laser with option at Q Switching. There is a laser pot. The source of light is a lamp. There is a cooling system.  The laser is adopted to perform at different thresholds, and at “ above evaporation threshold” it drills, engraves trims and inscribes. It is said to be highly versatile. This is dated 30.09.1981. Therefore Nd:Yag laser was known, it used a cooling system and it could engrave.

b)         Japanese Patent 141679 – It is a solid state laser oscillator, where plurality of laser beams are extracted from plurality of mirrors.

c)         US Patent 4,467172. This is a method and apparatus for laser engraving diamonds (June 3, 1983). This encompasses a solid state laser and an acuosto-optical Q-Switch. This uses a YAG rod.

d)         Excel Quantronix Spare Parts catalog (1992). This shows that Nd:Yag laser is the most frequently employed for beam stereo laser marking. The diagram of the Nd:Yag laser shows 2 mirrors  one is the front mirror  and a rear mirror and in between the two mirrors  there are safety shutter, intra-cavity Aperture, Laser Head with Nd;Yag Crystal and the Krypton Arc Lamp, Q-Switch and one more Intra –cavity Aperture.  In the invention we find  the  laser head consisting of a head, mirror mount, aperture mount, beam bender, rail, through power supply, RF Driver, heat exchanger & chiller to generate a laser beam connected with the computer system.  It specified the mirror mount for the mounting of plurality of mirrors, Q-switch mount for Q-switch,  Aperture mount for aperture.  Head which has got gold cavities, lamps source (CO2 Nd:Yag).  All the features are same.  In the Publication of the year 1992, the pump source is usually  krypton arc lamp.  The report also shows that the laser operates on a multi mode operation.   We have seen earlier, that the inventor had claimed that this multi mode operation is one of the feature of his invention but this was known  from 1992 publication.   The extract also shows while it would normally operate in multi mode condition, it would also operate in TEM mode for making very narrow line widths.  The extract also explains why the switch is used to produce a pulsed laser output by alternatively blocking and unblocking the path of reflection between the optical feedback mirrors.  Normally, the switch contains a transparent material like quartz.  The extract explains that when a RF signal is applied to the transducer, an acoustic wave is projected through the quartz.  Therefore, the use of the RF Driver in the claim is also a known feature.   The invention claimed that the table showing the spot size according to area would show that his invention is something new.    But we have already seen that the operation can be modulated.   This extract shows that the beam diameter can be changed.  We also find that to remove the excess heat, Nd;YAG  lasers are cooled by a closed-loop, deionized (DI) water system. This cooling is claimed to be a special feature of the invention.  We find that this type of cooling with the closed loop DI water system is already a feature well known.   In the extract, it also shows that the operating software which is in use today can control all aspects of the marking process and  all the laser operating parameters and interactive communication.  Therefore,  what the inventor claims to be a single stroke invention is really again nothing new.  The extract also used the InstalMark Signature® software with the manual.   The Table enclosed shows that the wavelength i.e. usually used is 1064 nm but 820 or 780, 532 may also be used.  This extract shows  when most  metals are very absorptive to the Nd:YAG 1.06 mm wavelength and can be readily marked.  Next to the1064 nm the most used wavelength is 532.  In the same extract we find  a Tip given that if reflectivity is a problem,  it is possible to change the frequency and 532 nm wavelength may produce better results.  Therefore, the table that is referred to show the technical advance of the invention is not anything new.  It is just taken from this publication.  We are not inclined to accept the statement of the respondent that he was neither aware nor would he admit the publication.  A person who engages himself in this field would surely have gone through the literature pertaining to the same subject. This catalogue also refers to multimode operation, the Acuosto-optical Q-Switch and also cooling system. There are optical feed back mirrors. This shows that laser heads have to be cooled. This shows the out put beam of the Nd:YAG laser is focused by optical components located in the galvanometer. The galvanometers are mounted to provide independent beam motion on both X & Y axis of the marking file and are crucial to produce a high quality marking.  So every thing that is declared as basic features in the invention were publicly known prior to the invention.

e)         The International–Diamond Technical Symposium held in October 1991 at Israel.  This too shows that YAG laser beam has been used in Diamond industry for a long time and in India right from 1987 there have been laser cleaning machines. 

f)          Next we come to the extract from R & I Industries Scrap book print-out in June, 2004 regarding the earlier laser engraving. This shows that laser engraving is not anything new and YAG laser is a common form of laser and it is suitable for engraving metals as well as non-metal materials.

Exhibit ‘B’ is the website of Sarju Laser Marking Pirvate Limited which speaks of laser marking Private Limited. The contact person is Bharat Patel (the respondent). There is a certificate of the ND Associate which shows that the Director is the respondent.

Exhibit ‘D’ is the Affidavit of Shri Arvindbhai Lavjibhai Patel, who is the Director of Sahajanand Laser Technology Limited.  His affidavit has been produced to prove the invoices which show that the respondent had to mark the invoices for laser marking machine of the year 24.02.1997.   14.08.1998 is an invoice which is  for a laser etching machine with Indensor, Chiller.  In that year, there is another laser marking machine , the bill of which is of the year 1995.  He has also stated that Shri Arvindbhai Lavjibhai Patel  was working for his company as a marketing  Head and he would sell the company machine for laser marking and engraving and thus he is aware of the technology used in their factory and he applied for the Patent.

g)         Dr. D.D. Bhawalkar who had obtained Ph.D in laser from the University of Southampton, U.K. and when the Department of Atomic Research Centre (BARC) decided to start a Research Centre in the area of laser, he was the first Director.  He has many other achievements to his credit.  On going through the two patents, he has stated in his letter dated 10.12.2005 that there is nothing new described in the Patents.  He has written to M/S Legasis Partners that the laser marker is identical to US Patent 178 and while the impugned patent has  two mirrors in which the laser beam is deflected by Galvanometric deflector, in US Patent 178, the deflection is done by Acoustic deflector.  He has also stated that Galvos is in the market for a long time.   According to him the Raja Ramanna Centre for Advanced Technology had developed a laser marking which was identical to the invention in question and that it became operational in 1995.  The two documents are enclosed by this expert.  One is US Patent 178 which is for a laser marking apparatus including an acousto modulator.    This includes  at least  one laser beam source, multichannel  acoustic modulator and apparatus for directing at least one laser beam and a imaging apparatus. According to the expert, this is identical to the invention.  He has also enclosed a Newsletter which contains the schematic diagram of the laser marking systems and the salient features are Nd:YAG laser, x-y Galvanometric mirrors, driver cards for the mirror, video camera and  interfacing software and hardware. 

h)         The evidence of one Mr. Joel Cardoso. He started a company called Xcalibur Laser systems Pvt. Ltd. and Gitanjali Laser House Pvt. Ltd. and they manufacture and market laser machines used for marking  & engraving on metals & non-metals.  Through his affidavit, the following documents inter-alia are marked as:

(i) A letter written by Jindal Iron & Steel who are a leading manufacturer of hot rolled plates. 

(ii)  Letter dated 30.04.1998 where Xcalibur had issued advertisement and for the purpose, he had sent samples of laser marking on plastic, aluminium etc.   This would show that the claim of the inventor that he was the first to invent a machine which would mark gold on plastic is wrong.  

(iii) There is an advertisement to show that laser engraved gold objects were sold on Valentines day.  This is of the year 1998. 

i)          The next document is the sectional elevation of Insta Mark which is identical with the sectional elevation of the invention.  Insta Mark is a laser engraver for Fast, Permanent marking.  The physical arrangements of the INSTAMARK is explained in a Laser Application Notes, in which it is mentioned that this is of the year 1979.  This is a Nd:YAG laser.  The basic system consists of a Holobeam Model 512 CW Nd:YAG laser, a scanner head laser power supply, laser cooling unit, the Q-switch, the front mirror and rear mirror and an automatically insertable aperture, a high speed electrical shutter, a photodiode energy monitor.  All these components are mounted on a lightweight, rugged, extruded aluminium rail which assures accurate alignment of the optical train.  This speaks of internal deionized water,  to tap water which is used to cool the laser head.    At p-302, it shows the product prescribed and we find it is nothing but the invention in question.   

j)          A letter from Mr. Yogeshwar Gupta which is the order for implant  for laser marking which is signed by the respondent himself since he had a job shop for laser mark- this is dated 29.12.1997.  This also contains a description of Insta mark – “what it is!  and how it works?”  Everything that has in the invention is found here.

                      

k)         Mr. Utpal Nandi, a qualified Engineer from the Raja Ramanna Centre for Advanced Technology for about 30 years.   He has sent two patents and according to him, the patentee has not presented the facts about the prior art to the Patent Office. He has stated that a laser marker was developed from components available in the market in 1995 at the Raja Ramanna Centre.  He has stated that there is no novelty or invention in the inventor and if the patentee claims that the machine is improving one, he should show where the improvement lies. He has stated that patentees complete specifications are identical and this is not possible.   He has also commented about the description of the product. 

            Therefore the technology was known, every feature in the invention is known and the product itself was a known product.  The respondent himself had sold the product prior to the date of patent.  All the details had not been disclosed.    The scanned pictures show that the invention and prior art are identical.  

16.       The following decisions were cited by Learned counsel for the applicant:-

1 AIR 1986 SC 712 “Monosanto Company Vs Coramandal Indag Products (P) Ltd.” – It was held that the emulsification was the well-known and common process. There is no discovery and no invention and Supreme Court held that to satisfy the requirement of being “publicly known” as used in clauses (e) and (f) of sec. 64(1), it is not necessary that the entire consumer public should know, it is sufficient if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of science or men of commerce or consumers.    

2.  PTC (Suppl)(1) 180 (Del): “Franz Xaver huemer Vs New yash Engineers” & 1996(16)PTC 232(DB)(Del): “Ram Narain Kher Vs Ambassador Industries”— These were relied on whether Interim orders should be given.

3.   PTC(SUPPL)(2) 799(Cal): “Unique Transmission co. India Ltd. Vs ESBI Transmission Pvt. Ltd.  — Here the patent,  which was revoked,  was flexible couplings and an application for revocation was made to the Hon’ble Calcutta High Court.  The grounds of challenge were 64(1) (d) (e) (f). 

It was held that “No attempt has been made to describe the alleged improved type of flexible coupling in the heading and the apparent intention appears to me, to oust all other manufacturers from manufacturing flexible couplings of Vulkan couplings or Vulkan type of couplings as popularly known and manufactured and used in India since prior to the priority date of the claim.   In my opinion, the patent has been obtained on false suggestions, or representations of an alleged invention when there is none to be found either in the complete specification or in the alleged claims apart from bald, vague and uncertain allegation of alleged invention, devoid of particulars of any specifications or technical datas.”

     

            Accordingly, the learned judge has observed that flexible couplings had been manufactured by many companies before the respondent No. 1 and he had described in its complete specification.   The flexible couplings had been manufactured by Vulkans of West Germany whose literatures were widely available in India.  The learned Judge held that the respondent did not claim patent right to couplings itself, but to the alleged improvement without specifying what the improvements were.  He observed that the whole attempt of the respondent No. 1 was to stop the people from manufacturing many flexible couplings which they have been manufacturing since long prior to April 1983 and which were only known in India.  On this ground, the learned judge ordered revocation of Patent. 

            In the present case, at least in 1995, the respondent himself was taking job orders for laser marking machines.  This applies squarely to this case.

4.   AIR 1982 SC 1444 : “M/S Bishwanath Prasad Radhey Shyam Vs, M/s Hindustan Metal Industries”— where the Supreme Court held that same collection of more than one indigenous is not an invention.    More importantly, the Supreme Court observed that the grant of patent does not guarantee its validity.  There is no presumption of validity.  If the grant is challenged, it is the duty of the patentee to defend his case and show that in fact there was an improvement made in the inventive step, or that it was neither obvious nor anticipated.  The patentee is bound to meet all the challenges made against the grant of patent.  

5.    ORA/03/2007/PT/CH –(Order No.55/2009): “Mr. K. Manivannan Vs. Mr. Mani”  There the invention was an “Improved Threshing and Separating Machine” and the Board found that there were difficulties in the constructional aspects of the prior art and the invention and based on the question whether the persons skilled in the art understand the description is sufficient to include the new technology.  In the present case, prior arts have the features of the invention and there is nothing new in the features that have been claimed as new. The three experts have testified to this.  We have evidence before us that the very same machine has been purchased by others prior to the date of invention.

6.         A decision of the Board in TRA/01/2008 M/s Air Master Equipments India (P) Ltd., Vs. Mr. Ramesh Nana Mahtre and another in which the patent was for ‘An improved Centre Core, Intermediate core and outer frame for a diffuser for use in central air-conditioning system.  In that case, the invention explains where the improvement lays by using the tests in the wind diffusing case. In the present case we have no such explanation and whatever was cited as improvement we have seen existed earlier.

17.   In the circumstances, we find that all the objections raised by the applicant are sustained.  The invention was already known and there is neither any novelty nor any inventive step and therefore, both the TRAs are allowed.    Miscellaneous Petition Nos. 41 & 42 are disposed off.     

. 

(D.P.S.  PARMAR)                                               (JUSTICE PRABHA SRIDEVAN)

Technical Member (Patents)                            Chairman                                                                                      

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)