Patent Infringement: Delhi High Court Says Garbage Bins Installed In Gujarat's Gandhinagar In Violation Of Interim Injunction

The Delhi High Court has said that a Mumbai-based company is prima facie guilty of contempt for continuing to supply garbage bins to Gandhinagar Municipal Corporation, in violation of an interim injunction granted by it last year in favour of Sotkon, an international waste management company.

Hearing a patent infringement suit filed by Sotkon last year, the court in the interim order had restrained the defendant Western Imaginary Transcon Private Limited from infringing Sotkon's registered patent, after the global company had argued that the Mumbai-based company misused the photographs of its products, drawings and illustrations from the its brochure and also copied the technical specifications of its products while submitting a bid in response to a tender notice floated by the Gandhinagar municipal body in 2020 for installation of smart underground bins.

Western Imaginary Transcon, which has an office in Gujarat also, was allotted the work in February 2021 by the municipal body. Sotkon in its suit before Delhi High Court said the technical specifications submitted by the defendants for underground bins are clearly infringing its rights in the patent. 

In a fresh application, the foreign company accused Western Imaginary Transcon of continuing to make supplies and installing garbage bins across Gandhinagar City, despite court's order of October 5, 2021. Advocate Shwetasree Majumder, appearing on behalf of Sotkon, earlier this week before the court submitted photographs to show that at various locations, the same very infringing garbage bins have been installed and are in use at the moment

Justice Prathiba M. Singh in the order dated October 31 said:

"The interim order granted by this Court dated 5th October, 2022 clearly extracts the bid documents and photographs used by the Defendants and it is abundantly clear that the supplies being made by the Defendants to the Corporation would stand injuncted in view of the interim order. There was no ambiguity at all in the said order. Thus, at this stage subject to anything further that the Defendants may produce, this Court is of the view that the Defendants are prima facie guilty of contempt."

However, before proceeding further against the company, the court said the defendants are being given one last opportunity to file their affidavit and photographs subject to the condition that they "deposit a sum of Rs. 2 crores with the Registrar General of this Court, within one month."

Lawsuit

Sotkon SP SLU in the suit filed last year alleged infringement of its rights in a patent related to a waste management system. It is the proprietor of an Indian patent titled as 'Subsurface System for the Collection of Refuse' and has licensed it to various other parties in India and other countries for the purpose of manufacturing the patented product, according to the suit.

The court in the suit has been told that Sotkon is a company pioneering in underground and semi-underground waste management systems doing business in India through its distributor-cum-manufacturing partner.

According to Sotkon, Gandhinagar Municipal Corporation had floated a tender for 'engineering, supply, construction, installation, testing and commission and comprehensive operation and maintenance' of underground bins for collection and storage of solid waste, in response to which the defendant filed a bid, which was accepted by the Corporation.

Upon examining the tender bid and the various documents such as documents explaining technical specifications of the bins, the plaintiff discovered that the defendant company had misused the photographs of its products, drawings and illustrations from its brochure and also copied the technical specifications of its products. The entire project of the defendant is an infringement of the plaintiff's suit, Sotkon's counsel have argued before the court.

The defendants, in response to the contentions of the plaintiff, on October 31 argued that the supplies made by them were not of the same bins which were referred to in the bid documents and that the bins which were finally installed were different from that of the plaintiff's. Accordingly, the defendant argued that no infringement had taken place to begin with.

Guilty Of Contempt

Justice Singh said the tender in question was of a government agency and the bid documents leave no doubt that the Plaintiff's photographs were reproduced by the defendants in response to the bid. Referring to the photographs of installed bins of the parties at different locations, the court said:

"The comparative photographs shows that the Defendants have unabashedly used the Plaintiff's product images to submit their bid to the Corporation. The photographs handed over today by ld.counsel for the Plaintiff also shows that the same very bins have been installed across the Gandhinagar city despite the injunction order"

The court also said there can be no justification whatsoever for the Defendants to have portrayed themselves to be supplying bins of 'ecozona' which is clearly a mark of the Plaintiff. Sotkon had earlier argued that the extent of imitation was such that even the its trademark used in a different jurisdiction i.e., 'ecozona' was not changed by the Defendant while copying the photographs of the its product.

Justice Singh further said the once these photographs were submitted with the bid documents, the clear conclusion, at the prima facie stage, would be that the defendants' bins have same working and arrangement as that of the plaintiff's bins, as portrayed by them in their own bid documents.

"The submissions being made today that though the bid documents have these photographs, the supplies made were of different bins, does not appeal to this Court. In response to a tender, once the bids are submitted to a Government Entity, it would not be permissible, barring exceptional situations, for the said entity to accept any other products than the once which have been put up in the bid by the bidder. Nothing has been shown to the Court that the bins supplied were different. A perusal of the No-Deviation Certificate submitted by the defendant also clearly shows that there cannot be any deviation between what was offered and what was supplied," said the Court in response to the defendant's contention.

The court also said that the defendant has admittedly received a large amount of money from the Corporation and if it was of the opinion that the bins which were supplied to the Corporation were not infringing the patent of the plaintiff - considering the manner in which the interim order was worded, it ought to have moved an application seeking clarification before the court for supplying the bins. 

"Clearly, the Defendants are being clever by half today, by seeking to argue that the bins which have been actually supplied, do not infringe the Plaintiff's patent," it added.

The court has now ordered that if the defendants intend to make any further supply of bins which are subject matter of this suit, to any other entity, the Defendants shall move an appropriate application before making any such supplies.