The defendant must prove the existence of a valid patent or trade mark rights to claim infringement. Registration is necessary to sue for trade mark infringement.

VALMIKI J. MEHTA, J. (ORAL)

1. The subject suit being decided by the present judgment is a suit filed by the plaintiff/Bata India Limited against the defendant/Vitaflex Mauch Gmbh whereby plaintiff seeks declaration that the threats made by the defendant with respect to the shoes being manufactured by the plaintiff being an infringement of the trade mark or patent rights of the defendant are unjustified and wrongful, and as stated in the defendant’s Legal Notice dated 03.04.2006. Plaintiff also seeks the relief of injunction to restrain the defendant from issuing the groundless, unjustifiable or wrongful threats to the plaintiff and also from circulating threats through circulars or advertisements or by communications (oral or written) to the plaintiff or any other person, in this regard. Plaintiff also seeks damages of Rs.20 lacs on account of the unjustifiable and wrongful threats issued by the defendant.

2. The basis for filing of the suit is that the plaintiff received from the defendant a Legal Notice dated 03.04.2006 and in which notice the defendant stated, inter alia, the following:-

“(i) That the Defendant is responsible for the distribution of shoes marketed under the brand “nach Dr. Mauch” or “by doc Mauch”;

(ii) That the insole of the shoes is allegedly characterized by a 5 points design;

(iii) That the Defendant allegedly has a pending trademark application in India, under no.1 264 384 for “5 POINTS (fig.)”;

(iv) That the Defendant allegedly has a pending patent application in India, under no.01251/CHENP/2003 published under Number IN 02076255. The Defendant did not, however, enclose a copy of the application with the notice;

(v) That the Plaintiff is allegedly making “copies” of the Defendant’s products in regard to appearance as well as functionality;

(vi) That one of the few noticeable differences is that the Plaintiff’s product has 6 points, instead of the 5 points in the Defendant’s product;

(vii) That the general impression is very similar;

(viii) That the Plaintiff is infringing the Defendants trademark rights;

(ix) That the Plaintiff’s product allegedly infringes the Defendant’s patent

(x) That, allegedly, the only difference between the Plaintiff’s and Defendant’s product is the “low quality” of the plaintiff’s products;

(xi) That the legal notice was to be treated as an “official warning letter” and that if the Plaintiff did not comply with the legitimate demands of our clients, the Defendant would initiate legal proceedings claiming compensation and have the infringing goods arrested by the police.”

3. Plaintiff replied to the Legal Notice dated 03.04.2006 by its Legal Notice dated 18.04.2006 stating, inter alia, the following:-

“(i) That the Defendant has made a false assertion that the shoe or the insole is patented in India and that the Defendant had only applied for a patent;

(ii) That the Defendant’s Indian application cannot go beyond the claims of the PCT application, from which it claims to derive priority;

(iii) 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;

(iv) That the Defendant is not a holder of any registered trademarks in India, and cannot claim trademark infringement;

(v) That even under common law, the alleged five-point configuration of pressure points is not entitled to trademark protection as it is a functional concept and has not acquired any distinctiveness. Further, non-user of the mark leads to the conclusion that the mark has no reputation in the minds of the purchasing public.”

4. The matter in dispute is the showing of the reflex points or pressure points in the insoles of the shoes. The defendant claims that five pressure points/reflex points in their insoles of the shoes amount to a trade mark as also a patent, and allegedly as per the defendant, plaintiff is violating such rights on account of the plaintiff showing six pressure points/reflex points in the insoles o