reckitt benckiser vs. wyeth

8/2/2019 Reckitt Benckiser vs. Wyeth

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IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.1 of 32

THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment delivered on: 07.08.2009

+ IA 189/07 in CS(OS) 30/07 (u/O 39 R 1 & 2 CPC by the Plaintiff)

& IA 2819/07 in CS(OS) 30/07 (u/O 39 R 4 CPC by the Defendant)

RECKITT BENCKISER (INDIA) LTD Plaintiff

- versus

WYETH LIMITED ... Defendant

Advocates who appeared in this case:For the Plaintiffs : Mr C. M. Lall with Ms Sikha Sachdev and Ms Kripa PanditFor the Defendant : Mr Sudhir Chandra Aggarwal, Sr Advocate with Mr Praveen

Anand, Ms Binny Kalra and Ms Ishani Sahiwal

CORAM:-

HON'BLE MR JUSTICE BADAR DURREZ AHMED

1. Whether Reporters of local papers may be allowed tosee the judgment? YES

2. To be referred to the Reporter or not? YES3. Whether the judgment should be reported in Digest? YES

BADAR DURREZ AHMED, J

1. These applications, one by the plaintiff for an ad interiminjunction under Order 39 Rules 1 and 2 CPC and the other for

vacating the ex parte injunction by the defendant under Order 39 Rule

4 CPC, have been filed in respect of the suit which is essentially a suit

for infringement of a registered design. In the said suit, the plaintiff

has, inter alia, sought the relief of permanent injunction as well as

damages.


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2. As per the plaint, the plaintiff was incorporated on05.07.1951 under the name and style of Reckitt and Coleman of India

Limited. However, pursuant to a worldwide merger between Reckitt

and Coleman Plc and Benckiser, a Dutch Company, in 1999, the name

of the plaintiff was changed from Reckitt and Coleman India Limited

to Reckitt Benckiser (India) Limited. It is averred that the plaintiff is a

world leader in cosmetic depilatories. Veet is one such leading

cosmetic depilation brand which is sold by the plaintiff in over 50

countries worldwide and registered in 141 countries.

3. The present suit is concerned with the Veet hair removalsystem, which is marketed in India by the plaintiff since the year 2004.

According to the plaintiff, the product is available in three variants

(i) sensitive with almond milk extracts; (ii) moisturizing with aloe vera

extracts; and (iii) softening with silk extracts. They are marketed in

attractive international 60 gram and 25 gram packs comprising of a

modern soft squeezing tube which, according to the plaintiff, is far

more hygienic than the jars that ordinary creams are marketed in. The

plaintiffs product also has a large S-shaped spatula which is also

known as the perfect touch spatula/perfect touch tool. The said

spatula allows for easy application of the cream and enables close

contact with the skin during both application and removal resulting in

perfect hair removal.


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4. It is further the plaintiffs case that it had obtained a designregistration in respect of the S-shaped spatula bearing No. 193988

dated 05.12.2003 in Class 99-00. The claim of novelty in the

registration reads as under:-

The novelty resides in the shape, configuration andornamentation of the SPATULA as illustrated.

The registration is valid till 05.12.2018.

5. According to the plaintiff it has been continuously anduninterruptedly marketing and selling its Veet hair removal cream with

the perfect touch spatula applying the said design since the launch of

its product in India in the year 2004. The plaintiff has also averred that

it has extensively advertised its said product through the print and

electronic media. According to the plaintiff, the plaintiff has substantial

share in the depilatory cream market in India.

6. According to the plaintiff, prior to the filing of the suit, it hadcome to their attention that the defendant, which also has been selling a

hair removal product under the brand name Anne French, had offered

for sale and sold its aforesaid product along with a spatula which

incorporates the design which, according to the plaintiff, infringes the

copyright in the design of the plaintiff which has been registered under

registration No. 193988. The plaintiff has also alleged that the

defendant was previously selling its product Anne French along with


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a flat spatula and had only recently adopted the S-shaped spatula.

According to the plaintiff, there is a virtual identity between the

plaintiffs design and the defendants design which has been applied to

the defendants spatula by copying the design of the plaintiffs spatula.

According to the plaintiff, the spatula design of the defendant is,

therefore, a fraudulent and obvious imitation of the spatula design of

the plaintiff. Consequently, by virtue of the said application under

Order 39 Rules 1 and 2 CPC (IA 189/2007), the plaintiff has sought an

ad interim injunction against the defendant, restraining the defendant

from manufacturing, selling etc. its product with a spatula which

amounts to an infringement of the registered design No. 193988 of the

plaintiffs spatula.

7. When the suit came up before this Court for the first time on08.01.2007, the learned Single Judge hearing the matter, had also

issued notice on the said IA 189/2007 and had passed an ex parte order

directing that till the next date of hearing, the defendant, their

representatives, agents etc. are restrained from manufacturing/ selling

or offering for sale its products in the name of spatula sample whereof

is enclosed as annexure B to the plaint and any other spatula which in

any manner infringes the registered design No. 193988 of the plaintiff.

8. Thereafter, the defendant filed its application under Order 39Rule 4 CPC (IA 2819/2007) seeking, inter alia, vacation of the ex parte


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injunction passed on 08.01.2007. According to the defendant, the said

injunction order has caused extreme hardship and loss to the defendant.

The stand taken by the defendant is that the suit itself is liable to fail

inasmuch as the registration of the design in favour of the plaintiff is

liable to be cancelled under the provisions of Section 19 of the Designs

Act, 2000 (hereinafter referred to as the said Act). According to the

defendant, the plaintiffs said design registration was liable to be

cancelled inasmuch as the design had been published in other countries

prior to the date of registration in India under No. 193988 dated

05.12.2003. It was also contended that the design is not new or

original. The design was not registrable under the said Act inasmuch

as it was prohibited under Section 4 thereof. According to the

defendant, the impugned design registration No. 193988 had been

obtained by the plaintiff by playing a fraud on the Controller of Patents

and Designs and was liable to be cancelled because:- (i) there exists an

earlier design registration No. 2055969 in the name of Reckitt

Benckiser France in the United Kingdom for an identical spatula design

as that forming the subject matter of the present suit. The said design

was dated 30.04.1996, that is the date of the application; (ii) there

exists a prior US design patent registration No. 387629 dated

16.12.1997 for the line drawings of an identical spatula design in the

name of Reckitt & Coleman, France, which was filed in USA on

23.10.1996 based on the UK design No. 2055969 dated 30.04.1996;


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and (iii) there exists an Australian design registration No. 131347 dated

29.10.1996 in the name of Reckitt Benckiser France also for line

drawings of a spatula design identical to the US and UK designs

mentioned above. The defendant has filed true copies of the aforesaid

design registration certificates. Thus, according to the defendant, the

plaintiffs Indian design registration No. 193988 dated 05.12.2003 was

prior published and lacking in novelty as the aforesaid designs were

accessible to public in India as well as abroad when the plaintiff had

applied for and obtained registration of the said design.

9. Apart from this, the defendant also took the stand that thedesign of the defendants applicator for its Anne French hair removal

cream is completely distinct and different from that of the plaintiffs

spatula. The differences in the said designs were indicated as below:-

Defendants Anne French

Spatula

Plaintiffs Veet Spatula

1. It has substantially curvedcontours

It has substantially angularand broad contours

2. The outer lines of the spatulaare broad at the ends andwaisted in the middle

The outer lines of thespatula are totally straight

3. The spatula is roughly of anhourglass shape with astraight base portion, waistedmiddle and relatively wider

upper portion

The spatula is roughly of aU shape. It has anincreasing taper from thelower end to the upper end

4. There are two crescentshaped indentations on thescoop part facing up and twoon the reverse

There are three horizontallines in the front and threehorizontal lines in the backof the spatula at the center


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10. The defendant has also taken the plea that the equitableremedy of injunction cannot be granted in favour of the plaintiff

because the plaintiff has suppressed material facts. According to the

defendant, the plaintiff was duty bound to disclose the previous design

registrations in the UK, USA and Australia. The plaintiff, not having

done so, has not only played a fraud on the Controller of Patents and

Designs but has also come to this Court with unclean hands.

11. On behalf of the defendant an affidavit dated 20.04.2007 ofone Mr Gulraj Bhatia, who is an employee of the defendant, was filed.

The affidavit indicated that he had placed an enquiry with Publicis

Amsterdam, which was an advertising agency of Wyeth (defendant),

for advertisements of the plaintiffs Veet spatula design appearing in

the print/ audio visual media. According to the said affidavit, Publicis

Amsterdam supplied two samples of advertisements, they were

retrieved by their archive staff and the printouts were said to be from

before November, 2003. To substantiate this plea, a letter dated

12.04.2007 from the said agency was also annexed to the said affidavit.

According to the deponent, the picture attachments clearly showed a

design identical to the Veet perfect touch spatula design, which is the

subject matter of the design No. 193988 forming the subject matter of

the present suit for infringement of design. The two printouts indicate

cover advertisements of the plaintiffs Veet product. The S-shaped


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spatula is also shown. While the S-shape and the overall shape is

evident, the details such as the grooves and markings thereon are not at

all clear.

12. One more fact needs to be noted at this stage. This Courthad heard arguments on 05.03.2008 and had reserved orders.

Subsequent thereto, the defendant moved an application being IA

3694/2008 whereby they sought to place before the Court additional

material supported by an affidavit of Mr Gulraj Bhatia. In the order

dated 28.03.2008 passed in connection with the said IA 3694/2008, it is

indicated that according to the learned counsel for the defendant, the

documents sought to be placed on record would have a material bearing

on the result of the interlocutory applications being IA 189/2007 and

2819/2007. The learned counsel for the plaintiff sought time to file a

reply to the application. One weeks time was granted for the same.

The matter was renotified on 30.04.2008. On that date also the learned

counsel for the plaintiff sought a final opportunity to file a reply to the

said application (IA 3694/2008). A further four weeks time was

granted to the plaintiff for doing so. The matter was directed to be

listed for directions on 27.05.2008. It was thereafter renotified for

29.05.2008. On that date, further arguments were heard in view of the

fresh documents and affidavits which had been filed on behalf of the

defendant along with IA 3694/2008. It is pertinent to note that the


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plaintiff did not file any reply to the said application (IA 3694/2008).

The said affidavit of Mr Gulraj Bhatia dated 17.03.2008, which was

annexed to the said application, carried with it a printout of a 41-page

power-point presentation which was downloaded from the internet, as

indicated in paragraph 2 of the said affidavit. On going through the

said presentation, it appears that it related to the plaintiffs said

product. Apparently, the presentation was in relation to the launch of

the said product in the year 2003. Some of the slides in the

presentation show the spatula being used. Apart from this, the said

affidavit of Mr Gulraj Bhatia also has reference to a magazine titled

Girlfriend which is dated December, 2000 and is an Australian

publication. In that magazine, the plaintiffs Veet product has been

advertized. The plaintiffs spatula employing the design in question is

clearly indicated in the photographs.

13. Mr C. M. Lall, the learned counsel for appearing on behalf ofthe plaintiff, submitted that as per the said Act, a design which was new

or original could be registered. He laid emphasis on the word or and

submitted that if the design was either new or original or both, the same

was registrable. It is only where the design was neither new nor

original that the design cannot be registered. Thus, according to

Mr Lall, the argument of the defendant that the design in question

could not have been registered in view of the prohibition contained in


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Section 4(a) of the said Act, would not apply. This is so because even

though the design may not have been new, it is definitely original, as

defined in Section 2(g) of the said Act wherein the word original a s

used in the said Act, was indicated to mean, in relation to a design, as

originating from the author of such design and included the cases

which though old in themselves, yet, are new in their application. The

learned counsel also made a reference to Section 2(j) of the said Act

which defined the expression proprietor of a new or original design.

14. As regards Section 4(b) of the said Act, Mr Lall submittedthat for the prohibition contained therein to apply, it must be

established that the design has been disclosed to the public either in

India or in any other country by publication in any of the following

three modes:-

(i) in tangible form; or(ii) by use; or(iii)in any other way.

Of course, this disclosure to the public has to be prior to the filing date,

or where applicable, the priority date of the application for registration.

Mr Lall referred to the decision of a learned Single Judge of the

Calcutta High Court in the case ofGopal Glass Works Ltd v. Assistant

Controller of Patents and Designs: 2006 (33) PTC 434 (Cal).


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15. Mr Lall submitted that the expression publication has notbeen defined in the said Act. The Copyright Act, 1957 may throw

some light. Referring to Section 2(ff) and Section 3 thereof. Mr Lall

submitted that publication would have the connotation of making

available to the public or communicating to the public. He referred to

the two affidavits of Mr Gulraj Bhatia and submitted that insofar as the

printouts which were submitted with the first affidavit dated

20.04.2007, are concerned, no features of the spatula were visible and,

therefore, it would not amount to prior publication, if at all. He also

referred to Section 65(a) and 65(b) of the Indian Evidence Act, 1872 to

submit that since they were part of electronic record, the same would be

admissible if the conditions specified therein were fulfilled. He

submitted that there may be a possibility that there was prior

publication by the plaintiffs group of companies because the plaintiffs

are a large organization, but the defendant has to establish prior

publication as a positive case. The onus is on the defendant. Mr Lall

referred to another decision of the High Court of Calcutta in the case of

Castrol India Ltd v. Tide Water Oil Co.(I) Ltd: 1996 PTC (16) 202.

In that decision it was, inter alia, held:-

38. The test of deceptive similarity would beappropriate where the petitioner pleads passing off.But in cases of infringement of design the question isnot whether the similarity has or is likely to causeconfusion or deception of a purchaser but whether thesimilarity is an imitation of the registered designsufficient to destroy the exclusive right of user of the


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proprietor despite the fact that no confusion is or maybe caused as to the source of the goods. Otherwise

every registered design could be limited with impunitymerely by changing the colour of the two products thusobviating any confusion. In my view the respondentshave so imitated the petitioners design as to deprivethe petitioner or the protection under the Statute.

There was also reference to the decision in the case ofDunlop Rubber

Co. Ltd. v. Golf Ball Developments Ltd :(1931) XLVII RPC 268 in the

context of the meaning of the words obvious and fraudulent

imitation. Similar words have been used in Section 22 (1)(a) of the

said Act. The reference to the decision in Dunlop Rubber Co. Ltd

(supra) was as under:-

26. InDunlop Rubber Co. Ltd. v. Golf Ball DevelopmentsLtd (1931) XLVII RPC 268 at 279, the meaning of the wordobvious and fraudulent have been stated

..obvious means something which, as soon asyou look at it, strikes one at once as being so like theoriginal design, the registered design, as to be almostunmistakable. I think an obvious imitation issomething which is very close to the original design,

the resemblance to the original design beingimmediately apparent to the eye looking at the two.

27. In a later portion of the judgment it was said:

. fraudulent imitation seems to me to be animitation which is based upon, and deliberately basedupon, the registered design and is an imitation whichmay be less apparent than an obvious imitation; that is

to say, you may have a more subtle distinctionbetween the registered design and a fraudulentimitation and yet the fraudulent imitation, although itis different in some respects from the original, and inrespects which render it not obviously an imitationmay yet be an imitation, imitation perceptible when


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the two designs are closely scanned and accordinglyan infringement.

16. According to Mr Lall, a comparison of the two productsclearly shows that the design of the defendants spatula is a fraudulent

and obvious imitation of the design of the plaintiffs spatula and,

therefore, a clear case of infringement / piracy of a registered design

has been made out under Section 22(1)(a) of the said Act.

17. Mr Lall submitted that prior registration abroad is not aground for cancellation of registration in India. He made this

submission in the context of the averments made by the defendant that

the very same design employed by the plaintiff for obtaining the

registration No. 193988 was the subject matter of registration in the

UK, USA and Australia and, therefore, the design could not be

registered in India. Mr Lall referred to the Calcutta High Court

decision in the case of Gopal Glass Works (supra) and particularly to

paragraphs 28-30 which reads as under:-

28. It is significant that prior to the enactment andenforcement of the 2000 Act prior registration orpublication of the design in India was a ground forcancellation of a registered design, but not prior

registration or publication abroad. Parliament in its wisdomdeemed it expedient to add prior publication in a countryother than India as a ground for cancellation of a registereddesign, but not registration in a country other than India.

29. Parliament has thereby consciously differentiatedbetween prior registration in India and prior registration


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abroad. No such difference has, however, been made in thecase of prior publication. Prior publication either in India

or abroad is a ground for cancellation of a registereddesign.

30. Under the law presently in force in India,specifications, drawings and/ or demonstrations inconnection with registration of a design do not per seconstitute publications which prohibit future registration ofthat design. Had publication of design specifications by aregistering authority, particularly a registering authority in

a foreign country, in connection with registration of adesign, in itself, amounted to prior publication, that wouldhit all future applications in India for registration ofdesigns, prior registration in India would not separatelyhave been made a ground for cancellation of a registereddesign. Moreover, it is significant that Parliamentconsciously, made publication in a country other than Indiaa ground of cancellation, in addition to publication in India,but expressly restricted the embargo of prior registration to

registration in India. Registration in a country other thanIndia has not been made a ground for the cancellation of aregistered design.

Referring to the above observations, the learned counsel submitted that

mere prior registration abroad did not prevent the same design being

registered in India and, therefore, merely because there was a

registration of the design in the UK, USA or Australia, the design

subsequently registered in India was not liable to be cancelled. Thus,

according to Mr Lall, registration in a country other than India was not

a ground for cancellation of a registered design in India and

consequently, the same could not be taken up as a defence by the

defendant under Section 22(3) of the said Act. With regard to the

additional documents placed on record along with the affidavit of Mr


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Gulraj Bhatia dated 17.03.2008, Mr Lall submitted that none of these

documents are new. They were downloaded from the net and were

always available. Why should the defendant be permitted to place

them on record? He also submitted that the documents were not

admissible. The affidavit in support of the documents was also based

on conjectures and surmises and, therefore, did not, in any way,

advance the case of the defendant or dent the case of the plaintiff.

18. Mr Sudhir Chandra, the learned senior counsel appearing onbehalf of the defendant, submitted that the prohibition contained in

Section 4(a) and Section 4(b) both had application in the present case.

According to him, the design which was registered in India was neither

new nor original. In any event, he submitted that the design had been

disclosed to the public prior to the date of filing for registration. This

is clear because the date of registration, which is also the date of

application, is 05.12.2003. But, prior to this, the printouts of

November, 2003 indicating the plaintiffs spatula, as supported by

Mr Gulraj Bhatias affidavit of 20.04.2007, were of November, 2003.

Referring to the additional documents, Mr Sudhir Chandra submitted

that no answer has been given by the plaintiff inasmuch as no reply has

been filed to the application being IA 3694/2008. Those documents

and in particular the Australian Magazine Girlfriend of December,

2000 clearly establishes the defendants case of prior publication.


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Apart from this, Mr Sudhir Chandra also contended that the decision in

Gopal Glass Works (supra) did not correctly lay down the law

inasmuch as the expression in any other way appearing in Section

4(b) of the said Act was not considered. He submitted that even

Section 44 of the said Act, which related to reciprocal arrangement

with the United Kingdom and other convention countries or group of

countries or inter-governmental organization, was not considered. He

also submitted that registration in the United Kingdom of the very same

design in itself meant publication. Since that registration was much

prior to the registration in India, it meant that the design had been prior

published. Therefore, this was a ground available to the defendant for

seeking cancellation of the plaintiffs said registration bearing

No. 193988. In fact, an application for cancellation has also been made

and the same is pending. However, in view of Section 22(3) of the said

Act every ground on which the registration of a design may be

cancelled under Section 19 thereof is also available as a ground of

defence. Thus, according to Mr Sudhir Chandra, since the plaintiffs

registration was liable to be cancelled, for the reason of prior

publication, such ground was also available as a ground of defence in

the present suit. Consequently, the plaintiff does not have any case,

what to speak of a prima facie case and the balance of convenience is

also in favour of vacating the injunction order and against the plaintiff.

Mr Sudhir Chandra also submitted that continuing the ex parte ad


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interim order would cause irretrievable harm and injury to the

defendant. For all these reasons, he submitted that the plaintiffs

application for ad interim injunction ought to be rejected with costs and

the defendants application for vacation of the ex parte ad interim order

be allowed.

19. From the above, it is apparent that for the purposes ofdeciding these two applications, the following questions need to be

answered:-

1. Whether the design registration in UK, USA orAustralia could amount to prior publication ordisclosure to public as contemplated in Section 4(b)

of the said Act?

2. Whether there is material on record to indicate,primafacie, that the plaintiffs design had been published in

India or in any other country prior to the date ofregistration, i.e., 05.12.2003?

3. Can it be said, prima facie, as to whether the designof the defendants spatula is a fraudulent or obvious

imitation of the plaintiffs registered design asapplied on its spatula?

QUESTION No. 1

20. An examination of the defendants documents and inparticular the copies of the registration certificates granted in UK, USA

and Australia, make it absolutely clear that the design of the spatula

disclosed in those documents is identical to the design of the plaintiffs

spatula which has been registered in India under registration No.

193988 on 05.12.2003. The question now is whether such registration


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in UK, USA and Australia would amount to prior publication or

disclosure to the public. I have examined the Calcutta High Court

decision in the case of Gopal Glass Works (supra) on this aspect of the

matter. It is clear that the learned Single Judge of the Calcutta High

Court has come to the conclusion that registration of a design and

consequent publication of design specifications by a registering

authority in connection with registration of a design in a foreign

country, in itself, did not amount to prior publication. To arrive at this

conclusion, the learned Single Judge compared the provisions of

Section 19(1)(a) and 19(1)(b). While, under Section 19(1)(a), the

previous registration in India of the design in question is a ground for

cancellation, the previous registration outside India has not been

specifically made a ground for cancellation of the subsequent

registration in India. In contrast, Section 19(1)(b) has made prior

publication, whether in India or in any other country, a ground for

cancellation of the registration of a design. It is on this basis that the

learned Single Judge in Gopal Glass Works (supra) came to the

conclusion that registration in a country other than India cannot by

itself amount to a ground for cancellation of a registered design in

India. With respect, I am unable to agree with the broad conclusion

arrived at by the learned Single Judge in Gopal Glass Works (supra).

But, before giving my reasons for the same, I would like to point out

that the decision in Gopal Glass Works (supra) was carried in appeal


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before the Supreme Court. The Supreme Court decision is reported as

Bharat Glass Tube Limited v. Gopal Glass Works: (2008) 10 SCC

657. The Supreme Court, however, did not comment upon this aspect

of the matter and only dwelt upon the aspect of whether the design was

new or original. In other words, the Supreme Court was more

concerned with Section 4(a) and Section 19(1)(c) of the said Act than

with the provisions of Section 4(b) or Section 19(1)(b) or Section

19(1)(d) of the said Act. The Supreme Court was also of the view that

a design has to be registered in relation to some article and a design in

the abstract cannot be registered. In the case before it, a roller which

could be used for bringing a particular design on various materials such

as glass,rexin or leather, was in question. The registration of the design

in respect of the said roller for applying the same on glass sheets was in

issue. The Supreme Court was of the view that the design which was

reproduced on glass sheets had been registered for the first time in

India and, therefore, the design was new and original. In this context,

the Supreme Court observed as under:-

In the present case, the design has been reproduced in thearticle like glass which is registered. This could have beenregistered with rexin or leather. Therefore, for registration ofa particular configuration or particular shape of thing which

is sought to be reproduced on a particular article has to beapplied. As in the present case the design sought to bereproduced on a glass-sheet has been registered and there isno evidence to show that this design was registered earlier tobe reproduced on glass in India or any other part of thecountry or in Germany or even for that matter in UnitedKingdom, therefore, it is for the first time registered in India


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which is new and original design which is to be reproducedon glass sheet. Therefore, the submission of learned Senior

Counsel for the appellant, Mr Gupta cannot be accepted thatthis design was not new and original.

From the above, it is absolutely clear that the aspect of prior

registration in a foreign country as being a ground for cancellation of

the subsequent registration in India was not at all considered by the

Supreme Court inBharat Glass Tube Ltd(supra).

21. I now come to the reasons for taking a different view fromthat of the learned Single Judge of the Calcutta High Court in Gopal

Glass Works (supra). Section 4 of the said Act reads as under:-

4. Prohibition of registration of certain designs. Adesign which

(a) is not new or original; or

(b) has been disclosed to the public anywhere in Indiaor in any other country by publication in tangibleform or by use or in any other way prior to the

filing date, or where applicable, the priority date ofthe application for registration; or

(c) is not significantly distinguishable from knowndesigns or combination of known designs; or

(d) comprises or contains scandalous or obscenematter, shall not be registered.

Section 4(b) clearly indicates that a design which has been disclosed to

the public anywhere in India or in any other country or by publication

in tangible form or by use or in any other way prior to the filing date, or

where applicable, the priority date of the application for registration


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shall not be registered. This much is clear that prior disclosure to the

public anywhere in the world is a complete bar on registration. This

disclosure to the public can be by any of the three modes indicated in

the provision itself, namely, (i) by publication in tangible form; or (ii)

by use; or (iii) in any other way. Mr Sudhir Chandra, the learned

senior counsel appearing on behalf of the defendant, was right in

contending that in Gopal Glass Works (supra) the third mode referred

to above, namely, in any other way was not considered at all. What

was considered was merely the aspect of publication. And, even in

respect of that, my conclusions are different. It is pertinent to note the

provisions of Section 19, which deal with cancellation of registration.

The said Section reads as under:-

19. Cancellation of registration. (1) Any personinterested may present a petition for the cancellation of theregistration of a design at any time after the registration ofthe design, to the Controller on any of the following

grounds, namely:-

(a) that the design has been previouslyregistered in India; or

(b) that it has been published in India or in anyother country prior to the date ofregistration; or

(c) that the design is not a new or originaldesign; or

(d) that the design is not registrable under thisAct; or

(e) that it is not a design as defined under clause(d) of section 2.


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(2) An appeal shall lie from any order of the Controllerunder this section to the High Court, and the Controller

may at any time refer any such petition to the High Court,and the High Court shall decide any petition so referred.

It is apparent that if a design has been previously registered in India,

the subsequent registration can be cancelled on that ground alone.

Insofar as Section 19(1)(b) is concerned, prior publication of a design

in India or in any other country is also a ground for cancellation of the

registration of the design. Importantly, Section 19(1)(d) stipulates that

a design can be cancelled also on the ground that the same was not

registrable under the Act. This takes me back to Section 4 which I had

already referred to above. Thus, if it can be shown that a design had

been disclosed to the public anywhere in India or in any other country

by any of the specified three modes, the registration of the design in

India would be liable to be cancelled. For the sake of completeness, let

me also mention Section 22(3) of the said Act which stipulates that in

any suit or any other proceeding for relief under sub-Section (2) every

ground on which the registration of a design may be cancelled under

Section 19 shall be available as a ground of defence. It is, therefore,

clear that the ground that the design could not be registered in view of

the provisions of Section 4(b) would be a ground for cancellation of the

registration in view of the provisions of Section 19(1)(d) and it would

also be available as a ground of defence.


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22. Reading the said provisions in this manner, it is apparentthat, apart from the issue of prior publication, as indicated in Section

19(1)(b) of the said Act, prior disclosure to the public under Section

4(b) read with Section 19(1)(d) is also a ground for cancellation of

registration. Section 4(b) is much wider than Section 19(1)(b), which

only deals with publication. Section 4(b) of the said Act deals with

disclosure to the public anywhere in India or in any other country.

Such disclosure to the public may be by any of the three modes

specified therein. One of the three modes is by publication in tangible

form. The other two being by use and in any other way. It is

apparent that the concept of disclosure to the public is, therefore, wider

than mere publication understood in the sense indicated in Section

19(1)(b). In Gopal Glass Works (supra) this wider aspect of disclosure

to public was not considered and it was only the narrow aspect of

publication, as indicated in Section 19(1)(b) which was the subject

matter of concern.

23. In any event, I am not in agreement with the view thatregistration of a design would not amount to publication in any

eventuality. Under the said Act, in view of the provisions of Section 7

thereof, the Controller is required to, soon after the registration of a

design, cause publication of the prescribed particulars of the design to

be published in the prescribed manner and thereafter the design is open


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to public inspection. At this juncture, it would be instructive to refer to

a decision of a learned Single Judge of this Court in the case of

National Trading v. Monica Chawla: 1994 PTC 233 wherein the

meaning of word publication in the context of a design was

considered. The learned Judge observed as under:-

(4) The question as to what would amount to pre-publication of the design has been very well stated incommentary by Russel and Clerk in Chapter-IV. Thisquestion has been dealt with as under:-

"meaning of publication.

Broadly speaking, there is publication if the designhas been disclosed to the public as opposed to being kept

secret. The question which has to be decided is, therefore,has the public been put in possession of the design? Has itknowledge of the design? It is not, of course, necessarythat every member of the public should possess theknowledge. It is sufficient, and there will be publication ifthe knowledge was either

(1) Available to members of the public; or(2)

Actually in fact shown and disclosed to someindividual member of the public who was under noobligation to keep it secret.

It is not necessary that the design should have beenactually used.

While considering the cases of knowledge available topublic in Harris v. Rothwell, Lindley L.J., reported as(1887) 4 R.P.C. 225, it has been held in that case asunder:-

"It is sufficient to show that the invention was sodescribed in some book or document, published inthis country, that some English people may fairlybe supposed to have known of it."


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Again in Otto v. Steel, reported as (1886) 3 R.P.C. 109(112), Pearson, J. has said as under:-

"The question is whether or not this book has beenpublished in such a way as to become part of thepublic stock of knowledge in this country. It is not,to my mind, necessary for that purpose to showthat it has been read by a great many people, or thatany person in particular has got from it the exactinformation which it is said would have enabledDr. Otto in this case to have made his engine. But,

to my mind, it must have been published in such away that there may be a reasonable probability thatany person, and amongst such persons, Dr.Otto,might have obtained that knowledge from it."

In the case of Humpherson v. Syer, reported as (1887) 4R.P.C. 407, Bowen L.J. held as under:-

"I put aside questions of public use, and treat thisas a question of whether there has been a priorpublication; that is, in other words, has informationbeen communicated to any member of the public,who was free in law or equity to use it as hepleased. Was Widmer a person to whom thiscommunication had been made in a manner whichleft him free both in law and equity to do what heliked with the information....You must take all thecircumstances of the case, and ask yourselfwhether there was any confidential relationestablished between the two parties-whether it wasan implied term of the employment that the informat on should be kept by the shop man tohimself, or whether he might afterwards, withoutany breach of good faith, use the matter, and use itas he chose."

(5) Thus it becomes clear that there is also pre-publication if the design is disclosed to any individual

member of the public, who is not under an obligation tokeep it secret. Disclosure to such person is sufficient toconstitute publication of design.


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24. Viewed in this light, the publication of the particulars ofregistered designs in terms of Section 7 of the said Act would amount

to publication as understood in the context of Section 19(1)(b) as also

publication in tangible form within the meaning of Section 4(b) of the

said Act. To complete the discussion on public access to a registered

design, it would be necessary to point out that Section 10 requires that

a register of designs be kept at the Patent Office. Section 17 of the said

Act provides for inspection of registered designs. It stipulates that

during the existence of a copyright in a design, any person, on

furnishing such information as may enable the Controller to identify

the design and on payment of the prescribed fee, may inspect the

design in the prescribed manner. Not only that, such person may also

obtain a certified copy of any registered design. Section 26 also

stipulates that every register kept under the Act shall at all convenient

times be open to the inspection of the public, subject to the provisions

of this Act, and that certified copies shall be given to any person

requiring the same on payment of the prescribed fee. Rule 22 of the

Designs Rules, 2001 (hereinafter referred to as the said Rules)

indicates the manner of publication of particulars of a registered design

under Section 7. It provides that on acceptance of the design filed in

respect of an application, the Controller shall direct the registration and

publication of the particulars of the application and the representation

of the article to which the design has been applied, in the Official


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Gazette. When publishing in the Gazette, the Controller may select one

or more views of the representation of the design, which, in his

opinion, would depict the best design. Rule 27 of the said Rules also

indicates that registered designs shall be open to public inspection after

the notification of the said design in the Official Gazette and that the

application together with the representation of the design may be

inspected on a request made in Form-5.

25. All these provisions make it clear that once a design isregistered in India, it is made open to the public. It is not a secret

document. Not only is it kept passively in the records of the Controller

but the Controller is required to, as indicated by Rule 22 read with

Section 7 of the said Act, publish the same in the Official Gazette. The

publication in the Official Gazette would include one or more views of

the representation of the design, which, in the opinion of the Controller,

would best depict the design. In other words, the statutory provisions

in India require the disclosure of a registered design by publication in a

tangible form. Thus, if a design is registered in India, it automatically

means that it is also published in tangible form.

26. The position in the UK and perhaps in other countries issomewhat different. The Registered Designs Act, 1949, as applicable

in the UK and as amended by the Copyright, Designs and Patents Act,


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1988, speaks of registrable designs and proceedings for registration.

However, Section 5 of the said Registered Designs Act, 1949 makes

provision for secrecy of certain designs. Section 22 of the Act provides

for inspection of registered designs. Section 22(1) clearly stipulates

that where a design has been registered under the Act, they shall be

open to inspection at the Patent Office, the representation or specimen

of the design and any evidence filed in support of the applicants

contention that the appearance of an article, is material. However, it is

specifically provided that the provision with regard to inspection would

have effect subject to, inter alia, any rules made under Section 5(2) of

the Registered Designs Act, 1949. Section 5(2) enables the Secretary

of State to frame rules to make provision for securing that where

secrecy of certain designs are to be maintained, the representation or

specimen of the design and any evidence filed in support of the

applicants contention that the appearance of an article is material, shall

not be open to public inspection at the Patent Office.

27. I have referred to the aforesaid provisions as applicable inthe UK to indicate that registration can be of two kinds of designs

those which are open to the public and those which are secret. It is

obvious that, therefore, registration by itself, in such circumstances,

would not amount to disclosure to the public as construed in the Indian

context under Section 4(b) of the said Act. Thus, there is a possibility


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that though a design may be registered, it may not be open to the public

and in that sense it cannot be considered to having been published.

Perhaps, that is the reason why in Section 19(1)(a) prior registration of

a design in India is made a ground for cancellation and not prior

registration of a design in any other country. Because, in any other

country, there may be a law such as in the UK which classifies a design

as a secret design which is not open to the public. Previous registration

of such a design would obviously, ipso facto, not amount to publication

or disclosure to the public.

28. From the above discussion, it can be safely concluded thatwhile a previous registration in India would be a ground for

cancellation without looking into the aspect of disclosure to the public

or publication in general, a design registered in any other country prior

to the date of registration in India, would also be required to have been

disclosed to the public by publication in tangible form or by use or in

any other way for it to qualify as a ground for cancellation of the

subsequent registration in India.

29. In the present case, I find that the designs registered in theUK and consequently in USA and Australia, are certainly not secret

and are open to the public. Therefore, the defendant has been able to

show, prima facie, that the design had been disclosed to the public in


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the UK, Australia and USA by publication in tangible form. The

expression in any other way would also be wide enough to include

registration as a mode of disclosure to the public. Therefore, prima

faice, I am of the view that the prior registration in the UK, USA and

Australia amounted to disclosure to the public as stipulated in Section

4(b) of the said Act. This, in turn, means that it is a ground which is

available to the defendant to seek cancellation of the plaintiffs

registration and consequently, it is also a ground of defence in view of

the provisions of Section 22(3) of the said Act.

QUESTION No.2

30. De hors the question of registration, I find that the defendanthas been able to show that the design had been published prior to the

date of registration. The two printouts filed along with the affidavit of

Mr Gulraj Bhatia on 20.04.2007 are, of course, not very clear as to the

features of the design such as the grooves and indentations but it gives

an indication of the S-shaped spatula and overall appearance. The said

printouts were of advertisements appearing abroad on or before

November, 2003. That is, prior to the date of registration which was

05.12.2003. Apart from this, the defendant has also been able to show,

prima facie, that the design of the very same spatula was advertised in

Australia in the Magazine entitled Girlfriend. A copy of the

Magazine of December, 2000 carries photographs of the plaintiffs


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product which also has photographs of the spatula which comes with

the said Veet product. In these photographs the exact design and all the

features of the spatula are clearly visible. It is obvious that the design

was available to the public in the year 2000, much prior to the

registration in India on 05.12.2003. Coupled with this, is the fact that

the plaintiff did not file any reply to IA 3694/2008 despite

opportunities having been given to it to do so. The prima facie

conclusion, therefore, is that the design in question was published

abroad prior to the date of registration in India.

QUESTION No. 3

31. Insofar as the question of whether the defendants design is afraudulent or obvious imitation of the plaintiffs design is concerned, I

find that the only comparison that has to be made is to be done visually.

Many differences have been sought to be pointed out by the defendant

as indicated in the chart mentioned above. However, an overall view

has to be taken and it has to be discerned with the eye as to whether the

defendants design is a fraudulent or obvious imitation of the plaintiffs

design. I find that observing the two designs side by side one cannot

conclusively say that the one is an imitation of the other. This is, of

course, only aprima facie view and is actually not necessary because of

the decision on question Nos. 1 and 2 above.


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32. In view of the foregoing discussion, the plaintiffsapplication, being IA 189/2007, under Order 39 Rules 1 and 2 CPC for

ad interim injunction is dismissed with costs of Rs 25,000/-. The

defendants application, being IA 2819/2007, under Order 39 Rule 4

CPC is allowed and the interim order dated 08.01.2007 passed in IA

189/2007 is vacated.

The applications stand disposed of.

BADAR DURREZ AHMED(JUDGE)

August 07, 2009

SR

reckitt benckiser vs. wyeth

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