THE SUPREME COURT DECISION

On 23 May 1985 the plaintiff sought patent for an industrial design for a circuit breaker. On 9 June 1986 Patent No. 389 was granted to the plaintiff who later produced and sold the patented circuit breaker under the registered trademark “SAFE-T-CUT”. Then it came to the plaintiff’s knowledge through an advertisement in a newspaper that the defendants’ circuit breaker under the trade name “I-T-SAFE” was also being produced.

The plaintiff alleged that the defendants’ circuit breaker “I-T-SAFE” possessed the same industrial design as the plaintiff’s circuit breaker “SAFE-T-CUT”.

The defendants argued that this action was barred by prescription. The first defendant had not committed any alleged infringement. The circuit breaker “I-T-SAFE” was a common safety device that had been produced by the third defendant and sold by the second defendant and the fourth defendant in good faith since 1984. A counterclaim was also raised by the defendants requesting the court to revoke the plaintiff’s invalid patent for want of novelty.

Held by the Court of First Instance that the plaint be dismissed and the plaintiff’s Patent No. 389 revoked. This was confirmed by the Court of Appeal and finally by the Supreme Court.

Burden of proof. An action was brought against the defendants for infringement of the plaintiff’s patent. An objection was raised and a counterclaim was included by the defendants that the plaintiff’s patent was invalid and had to be revoked by the court’s order. The question arose regarding the invalidity of the plaintiff’s patent as contested by the defendants under section 64 paragraph two of the Patent Act B.E. 2522 (1979). The burden of proof in this regard is held to rest upon the defendants.

Prescription. The defendants’ counterclaim requesting the court to revoke the plaintiff’s invalid patent is not the claim by virtue of the tortious act. Rather it is the claim under section 64 paragraph two of the Patent Act B.E. 2522 (1979) which provides for no any specific period of prescription. Accordingly the general 10-year prescription in compliance with former section 164 of the Civil and Commercial Code shall apply to this case. The defendants’ counterclaim shall have not yet been barred by prescription.

Prior publication - Novelty lacking – Validity - Infringement. At trial, one of the defendants’ witnesses testified that a circuit breaker “SAFE-T-CUT” was bought in 1983. One of the plaintiff’s witnesses also testified during cross-examination that his company had been a distributor selling the circuit breaker “SAFE-T-CUT” for 12-13 years. No trace of difference of circuit breaker “SAFE-T-CUT” was stated between the one sold by his company and the one for which the patent was later sought. Quite clearly, the plaintiff’s circuit breaker “SAFE-T-CUT” having been produced and sold prior to seeking a patent is exactly the same invention with the same industrial design. Furthermore, it was the defendants, who could successfully prove that the plaintiff’s circuit breaker “SAFE-T-CUT” had been advertised earlier in a daily newspaper dated 18 July 1983, in an October 1984 issue of a marketing magazine, and in the 1983 issue of the telephone directory. Upon scrutinizing these documents in comparison with the plaintiff’s invention produced with respect to the granted patent, the Supreme Court found that the publicized advertisement and the invented object are of the same features. Although the plaintiff claimed that the object was newly produced, no differences were pointed out between the one having been advertised produced and sold for years and the patented one. In this respect, the defendants’ evidence outweighed the plaintiff’s one. The plaintiff’s industrial design for the circuit breaker is held to lack novelty under sections 56 and 57 of the Patent Act B.E. 2522 (1979). The defendants who, like the plaintiff, produce and sell circuit breaker are held to be the interested parties entitled to claim revocation of the plaintiff’s invalid patent. Activities carried out by the defendants are not instituted infringement as alleged in the plaint.

Patent – Validity – Burden of proof – Prescription – Prior publication – Infringement – Novelty lacking

[1] Serial Number of Judgment of the Supreme Court

[2] Date of Judgment

[3] This action and judgment occurred prior to the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court B.E. 2539 (1996).

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1. Parties

2. Background and Issue

Background