This Infringement and Invalidity proceeding is part of the Patent Law and Practice Program being taught by the BananaIP Team to the B.tech-LLB Students of UPES School of Law, Dehradun. Readers may use the content herein with appropriate attribution to the author.
The students were divided into two groups, one group arguing in favor of ToyJoy and the other arguing in favor of Happy Chocs. While the representatives for ToyJoy were asked to initiate the suit for infringement against Happy Chocs, the representatives for Happy Chocs were asked to defend their client and initiate an invalidity proceeding against ToyJoy’s patent.
The problem reads as follows:
ToyJoy is a leading chocolate company headquartered at Paris, France, that specializes in making products that include combinations of chocolates and toys. ToyJoy is the leader in such products, and its products are very popular among kids across the world. ToyJoy has a ten member R and D team that focuses on new product research and development around chocolate and toy combinations. On 14th March, 2009, the company files a patent application with respect to edible chocolate toys.
The first claim of the patent reads as follows:
“What is claimed is:
- A toy comprising: a stand-alone toy figure designed as an independent conventional doll; and an associated toy accessory composed of an edible material and shaped into a form representing an item wearable by the stand-alone toy and usable as an accessory with the stand-alone toy figure.” (claim retrieved from US patent 6273780 B)
ToyJoy’s patent application is granted in several countries including India, USA, France, Germany, China and Japan by 2014. In 2013, ToyJoy launches the patented product in India under the brand “KIDJOY.” The product is an instant success among kids, and soom becomes ToyJoy’s best selling product in India.
In 2016, a group of three executive PGP graduates from IIM, Bangalore, start a chocolate company called ‘Happy Chocs.’ The company’s business model is to source home made chocolates from different hill stations in the country, package them professionally, and sell them under the company’s brand. One among the three founders of Happy Chocs, Dr. Sharanya Vibha, is an ex-employee in the R and D team of ToyJoy. Using her experience at ToyJoy, Dr. Sharanya Vibha develops a unique series of products, which combine home made chocolates with traditional handicrafts made in the region. She brands the product line as ‘ChocCraft.’
ChocCraft chocolates include a small handicraft from the region where the chocolates are made, to which different types of chocolates from the area are attached by creative means. The handicrafts can be retained by customers after eating up the attached chocolates. Among others, ChocCraft’s handicrafts include hand made animals, such as elephants, peacocks, humans, plants, etc. to which chocolates are appended as ornaments, clothes, or specially designed decorations. The products are packaged with traditional materials and writings about the art forms.
Happy Chocs’ ChocCraft is marketed as traditional, home made chocolates reflecting Indian art and culture. All advertisements of ChocCraft are designed around support and encouragement of traditional arts, crafts and knowledge. The tag line of the brand is: Chocolates for True Indians. Happy Chocs is unable to place its chocolates in physical stores, but the company’s products, especially, ChocCraft products, sell very well on online stores. Within six months, Happy Chocs’ products get into the top five best selling chocolate products on Amazon and Flipkart.
Noticing the success of ChocCraft, ToyJoy sends a legal notice alleging patent infringement to Happy Chocs. The notice asks Happy Chocs to stop selling ChocCraft chocolates within two weeks, but Dr. Sharanya Vibha and other founders ignore the notice deeming it as a frivolous attempt to stop progress of Happy Chocs. Aggrieved, ToyJoy sues Happy Chocs for patent infringement.
About Dr. Kalyan C. Kankanala
Dr. Kalyan C. Kankanala manages the largest new age Intellectual Property Firm, BananaIP Counsels, headquartered at Bangalore, India. In addition to helping clients maximize business value from intellectual assets, Dr. Kalyan also consults for United Nations Industrial Development Organization (UNIDO), and teaches at premier institutions such as National Law School of India University, Bangalore, and Indian Institute of Management, Bangalore (IIM-B).
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