In an order dated July 18, 2023, the Delhi High Court issued an interim injunction and restrained the defendant, Canva Pty Ltd, from making available the “Present and Record” feature on the Canva platform in infringement of the plaintiff, RxPrism Health Systems Private Limited’s patent[1].
In December 2018, the Indian startup filed a patent application for one of its products, “My Show & Tell” before the Indian Patent Office. It was specified that the said product enabled users to create content for promoting products or services online. For this, a layered approach was followed, which involved recording and uploading the video after uploading the slides. The next stages involved link creation, storage on a server and use of the Call-to-Action button. After watching the product video, the consumers could click on the Call-to-Action button to proceed with buying the product or service, send messages, make calls to the concerned person, etc. The product was launched in May 2020, and the patent for the same was granted on March 10, 2021.
The defendant filed a provisional application in Australia for patenting its feature on May 26, 2020, and launched this feature in August. Here, users could create and upload slides and audio or video separately and merge them through the said feature. On May 26, 2021, a PCT application was filed, claiming priority from the Australia patent application.
Alleging infringement of its patent, the plaintiff approached the Delhi High Court. The plaintiff cited the layered approach, integrated Call-to-Action button, and claimed that all the essential elements of its patented product were contained in the defendant’s feature.
In its response, the defendant cited differences between both the products and referred to several prior art documents.
Disregarding minor differences, the court arrived at the decision of infringement by comparing the claims of the plaintiff’s patent with the features of the defendant’s product. After analysing the three closest prior arts – Auto Auditorium, the Loom System and Microsoft PowerPoint 2016, the court concluded that the plaintiff’s patent is “inventive” over these prior arts.
The court observed that the “functionality of the Defendant’s product, which has been demonstrated to the Court, clearly falls within the claims of the suit patent and all the essential elements of the suit patent exist in the Defendant’s product”. Also, the court noted that the defendant’s conduct in abandoning the PCT application during the pendency of the suit was “prima facie evidence of the Defendant’s attempt to camouflage its stand”. This remark was made considering that the petitioner relied upon the application in its rejoinder submissions as evidence of infringement. The court also took into account that the Australian patent application lapsed in 2022.
It was further held that the balance of convenience was in the plaintiff’s favour, and the plaintiff would suffer irreparable loss and injury if an injunction was not issued. With this, the court granted an interim injunction restraining the defendant from making available the “Present and Record” feature on the Canva platform in infringement of the plaintiff’s patent.
After making note of the revenue generated through the use of the said Canva feature in the country, the court directed the defendant to deposit a security amount to the tune of Rs. 50 Lakhs with the court’s Registrar General. Holding the language used in the written statement to be “libelous and slanderous” thereby violating the principles governing permissible language in pleadings, the court awarded costs of Rs.5 Lakh to the plaintiff.
[1] RxPrism Health Systems Private Limited & Anr. v. Canva Pty Ltd & Ors. [IA 14842/2021 in CS(COMM) 573/2021]
