Delhi High Court
Reckitt Benckiser (India) Ltd vs Wyeth Limited on 7 August, 2009
Author: Badar Durrez Ahmed
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 Pandit
For 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 to
see the judgment? YES
2. To be referred to the Reporter or not? YES
3. Whether the judgment should be reported in Digest? YES
BADAR DURREZ AHMED, J
1. These applications, one by the plaintiff for an ad interim
injunction 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.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.1 of 32
2. As per the plaint, the plaintiff was incorporated on
05.07.1951 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 removal
system, 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
plaintiff's 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.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.2 of 32
4. It is further the plaintiff's case that it had obtained a design
registration 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 and
ornamentation of the ―SPATULA' as illustrated.
The registration is valid till 05.12.2018.
5. According to the plaintiff it has been continuously and
uninterruptedly 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 had
come 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.3 of 32
a flat spatula and had only recently adopted the S-shaped spatula.
According to the plaintiff, there is a virtual identity between the
plaintiff's design and the defendant's design which has been applied to
the defendant's spatula by copying the design of the plaintiff's 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
plaintiff's spatula.
7. When the suit came up before this Court for the first time on
08.01.2007, 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 39
Rule 4 CPC (IA 2819/2007) seeking, inter alia, vacation of the ex parte
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.4 of 32
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 plaintiff's 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;
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.5 of 32
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
plaintiff's 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 the
design of the defendant's applicator for its ‗Anne French' hair removal
cream is completely distinct and different from that of the plaintiff's
spatula. The differences in the said designs were indicated as below:-
Defendant's Anne French Plaintiff's Veet Spatula
Spatula
1. It has substantially curved It has substantially angular
contours and broad contours
2. The outer lines of the spatula The outer lines of the
are broad at the ends and spatula are totally straight
waisted in the middle
3. The spatula is roughly of an The spatula is roughly of a
‗hourglass' shape with a ‗U‖ shape. It has an
straight base portion, waisted increasing taper from the
middle and relatively wider lower end to the upper end
upper portion
4. There are two crescent There are three horizontal
shaped indentations on the lines in the front and three
scoop part facing up and two horizontal lines in the back
on the reverse of the spatula at the center
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.6 of 32
10. The defendant has also taken the plea that the equitable
remedy 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 of
one 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 plaintiff's 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 plaintiff's Veet product. The S-shaped
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.7 of 32
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 Court
had 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 week's 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.8 of 32
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 plaintiff's 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 plaintiff's Veet product has been
advertized. The plaintiff's spatula employing the design in question is
clearly indicated in the photographs.
13. Mr C. M. Lall, the learned counsel for appearing on behalf of
the 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.9 of 32
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‖ as
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 submitted
that 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 of Gopal Glass Works Ltd v. Assistant
Controller of Patents and Designs: 2006 (33) PTC 434 (Cal).
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.10 of 32
15. Mr Lall submitted that the expression ―publication‖ has not
been 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 plaintiff's 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 be
appropriate where the petitioner pleads passing off.
But in cases of infringement of design the question is
not whether the similarity has or is likely to cause
confusion or deception of a purchaser but whether the
similarity is an imitation of the registered design
sufficient to destroy the exclusive right of user of the
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.11 of 32
proprietor despite the fact that no confusion is or may
be caused as to the source of the goods. Otherwise
every registered design could be limited with impunity
merely by changing the colour of the two products thus
obviating any confusion. In my view the respondents
have so imitated the petitioner's design as to deprive
the petitioner or the protection under the Statute.‖
There was also reference to the decision in the case of Dunlop 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. In Dunlop Rubber Co. Ltd. v. Golf Ball Developments
Ltd (1931) XLVII RPC 268 at 279, the meaning of the word
‗obvious' and ‗fraudulent' have been stated
―.....‗obvious' means something which, as soon as
you look at it, strikes one at once as being so like the
original design, the registered design, as to be almost
unmistakable. I think an obvious imitation is
something which is very close to the original design,
the resemblance to the original design being
immediately 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 an
imitation which is based upon, and deliberately based
upon, the registered design and is an imitation which
may be less apparent than an obvious imitation; that is
to say, you may have a more subtle distinction
between the registered design and a fraudulent
imitation and yet the fraudulent imitation, although it
is different in some respects from the original, and in
respects which render it not obviously an imitation
may yet be an imitation, imitation perceptible when
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.12 of 32
the two designs are closely scanned and accordingly
an infringement.‖
16. According to Mr Lall, a comparison of the two products
clearly shows that the design of the defendant's spatula is a fraudulent
and obvious imitation of the design of the plaintiff's 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 a
ground 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 and
enforcement of the 2000 Act prior registration or
publication of the design in India was a ground for
cancellation of a registered design, but not prior
registration or publication abroad. Parliament in its wisdom
deemed it expedient to add prior publication in a country
other than India as a ground for cancellation of a registered
design, but not registration in a country other than India.
29. Parliament has thereby consciously differentiated
between prior registration in India and prior registration
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.13 of 32
abroad. No such difference has, however, been made in the
case of prior publication. Prior publication either in India
or abroad is a ground for cancellation of a registered
design.
30. Under the law presently in force in India,
specifications, drawings and/ or demonstrations in
connection with registration of a design do not per se
constitute publications which prohibit future registration of
that design. Had publication of design specifications by a
registering authority, particularly a registering authority in
a foreign country, in connection with registration of a
design, in itself, amounted to prior publication, that would
hit all future applications in India for registration of
designs, prior registration in India would not separately
have been made a ground for cancellation of a registered
design. Moreover, it is significant that Parliament
consciously, made publication in a country other than India
a 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 than
India has not been made a ground for the cancellation of a
registered 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.14 of 32
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 on
behalf 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 plaintiff's spatula, as supported by
Mr Gulraj Bhatia's 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 defendant's case of prior publication.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.15 of 32
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 plaintiff's 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 plaintiff's
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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.16 of 32
interim order would cause irretrievable harm and injury to the
defendant. For all these reasons, he submitted that the plaintiff's
application for ad interim injunction ought to be rejected with costs and
the defendant's application for vacation of the ex parte ad interim order
be allowed.
19. From the above, it is apparent that for the purposes of
deciding these two applications, the following questions need to be
answered:-
1. Whether the design registration in UK, USA or
Australia could amount to prior publication or
disclosure to public as contemplated in Section 4(b)
of the said Act?
2. Whether there is material on record to indicate, prima
facie, that the plaintiff's design had been published in
India or in any other country prior to the date of
registration, i.e., 05.12.2003?
3. Can it be said, prima facie, as to whether the design
of the defendant's spatula is a fraudulent or obvious
imitation of the plaintiff's registered design as
applied on its spatula?
20. An examination of the defendant's documents and in
particular 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 plaintiff's
spatula which has been registered in India under registration No.
193988 on 05.12.2003. The question now is whether such registration
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.17 of 32
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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.18 of 32
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 the
article like glass which is registered. This could have been
registered with rexin or leather. Therefore, for registration of
a particular configuration or particular shape of thing which
is sought to be reproduced on a particular article has to be
applied. As in the present case the design sought to be
reproduced on a glass-sheet has been registered and there is
no evidence to show that this design was registered earlier to
be reproduced on glass in India or any other part of the
country or in Germany or even for that matter in United
Kingdom, therefore, it is for the first time registered in India
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.19 of 32
which is new and original design which is to be reproduced
on glass sheet. Therefore, the submission of learned Senior
Counsel for the appellant, Mr Gupta cannot be accepted that
this 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 in Bharat Glass Tube Ltd (supra).
21. I now come to the reasons for taking a different view from
that 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.-- A
design which --
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India
or in any other country 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; or
(c) is not significantly distinguishable from known
designs or combination of known designs; or
(d) comprises or contains scandalous or obscene
matter, 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.20 of 32
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 person
interested may present a petition for the cancellation of the
registration of a design at any time after the registration of
the design, to the Controller on any of the following
grounds, namely:-
(a) that the design has been previously
registered in India; or
(b) that it has been published in India or in any
other country prior to the date of
registration; or
(c) that the design is not a new or original
design; or
(d) that the design is not registrable under this
Act; or
(e) that it is not a design as defined under clause
(d) of section 2.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.21 of 32
(2) An appeal shall lie from any order of the Controller
under 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.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.22 of 32
22. Reading the said provisions in this manner, it is apparent
that, 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 that
registration 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.23 of 32
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 in
commentary by Russel and Clerk in Chapter-IV. This
question has been dealt with as under:-
"meaning of publication.‖
Broadly speaking, there is publication if the design
has 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 it
knowledge of the design? It is not, of course, necessary
that every member of the public should possess the
knowledge. It is sufficient, and there will be publication if
the knowledge was either--
(1) Available to members of the public; or
(2) Actually in fact shown and disclosed to some
individual member of the public who was under no
obligation to keep it secret.
It is not necessary that the design should have been
actually used.
While considering the cases of knowledge available to
public in Harris v. Rothwell, Lindley L.J., reported as
(1887) 4 R.P.C. 225, it has been held in that case as
under:-
"It is sufficient to show that the invention was so
described in some book or document, published in
this country, that some English people may fairly
be supposed to have known of it."
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.24 of 32
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 been
published in such a way as to become part of the
public stock of knowledge in this country. It is not,
to my mind, necessary for that purpose to show
that it has been read by a great many people, or that
any person in particular has got from it the exact
information which it is said would have enabled
Dr. Otto in this case to have made his engine. But,
to my mind, it must have been published in such a
way that there may be a reasonable probability that
any person, and amongst such persons, Dr.Otto,
might have obtained that knowledge from it."
In the case of Humpherson v. Syer, reported as (1887) 4
R.P.C. 407, Bowen L.J. held as under:-
"I put aside questions of public use, and treat this
as a question of whether there has been a prior
publication; that is, in other words, has information
been communicated to any member of the public,
who was free in law or equity to use it as he
pleased. Was Widmer a person to whom this
communication had been made in a manner which
left him free both in law and equity to do what he
liked with the information....You must take all the
circumstances of the case, and ask yourself
whether there was any confidential relation
established between the two parties-whether it was
an implied term of the employment that the in
format on should be kept by the shop man to
himself, or whether he might afterwards, without
any breach of good faith, use the matter, and use it
as 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 to
keep it secret. Disclosure to such person is sufficient to
constitute publication of design.‖
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.25 of 32
24. Viewed in this light, the publication of the particulars of
registered 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.26 of 32
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 is
registered 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 is
somewhat different. The Registered Designs Act, 1949, as applicable
in the UK and as amended by the Copyright, Designs and Patents Act,
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.27 of 32
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 applicant's
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
applicant's 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 in
the 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.28 of 32
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 that
while 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 the
UK 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.29 of 32
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 plaintiff's
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 defendant
has 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 plaintiff's
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.30 of 32
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.
31. Insofar as the question of whether the defendant's design is a
fraudulent or obvious imitation of the plaintiff's 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
defendant's design is a fraudulent or obvious imitation of the plaintiff's
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 a prima facie view and is actually not necessary because of
the decision on question Nos. 1 and 2 above.
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.31 of 32
32. In view of the foregoing discussion, the plaintiff's
application, 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
defendant's 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
IA 189/07& IA 2819/07 in CS(OS) 30/2007 Page No.32 of 32
