2013 Supreme(Del) 303

IN THE HIGH COURT OF DELHI AT NEW DELHI
SANJIV KHANNA, VALMIKI, MEHTA, S.P. GARG, JJ.
RECKITT BENKISER INDIA LTD - Appellant
Vs.
WYETH LTD. - Respondent
FAO(OS) 458/2009
Decided On : 15th March, 2013

Headnote:

Whether a Division Bench of a High Court in India correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (hereinafter referred to as “the Act”).

Fact of the Case:

Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (39) PTC 104 (Del) (DB) held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Act.

Finding of the Court:

The Court held that the existence of a design registered abroad in a convention country is not a ground under Section 19(1)(a) for cancellation of a design registered in India. The provision of Section 44 does not have the effect of changing the literal interpretation of Section 19(1)(a) inasmuch as under Section 44, the foreign registered design becomes an Indian registered design, although, the date of registration of the foreign registered design which is registered in India will relate back and have retrospective effect from the date of application first made in the convention country abroad. Once, the foreign registered design becomes registered in India, the very fact that it is an Indian registered design it will be a previously registered design in India, and by virtue of the priority rule the same will be a ground for cancellation of a design subsequently registered in India on an application made after the date of the priority date given of the application made abroad for registration of the design in a convention country.

Issues: 1. Whether a design registered abroad can be a ground for cancellation of a design registered in India? 2. If under Section 19(1)(a) a design registered in a convention country abroad is a ground for cancellation of a design registered in India, is this rule absolute or the rule falls in those circumstances where the design registered abroad is not applied to be got registered India within a period of six months of making of the application in a convention country abroad? 3. If a design registered in a convention country abroad is not a ground for cancellation of a design registered in India under Section 19(1)(a), then, whether the registration abroad entitles cancellation of a design registered in India because the registration abroad conclusively amounts to prior publication as per that expression found in Section 19(1)(b) read with Section 4(b) of the Act? 4. What is the meaning of the expression “publication abroad”/ “published abroad”, for it to be argued that on account of such publication abroad, the design registered in India becomes liable to cancellation in terms of Section 19(1)(b) of the Act?

Ratio Decidendi: 1. A design registered abroad cannot be a ground for cancellation of a design registered in India under Section 19(1)(a) of the Act. 2. If an application for registration in India is not made within the statutory permissible period of six months of having made the application abroad, then, the design registered in India in the meanwhile in six months period cannot be cancelled under Section 19(1)(a), though, the foreign registered design owner on proving of prior publication can have an effective defence to the infringement action filed by the Indian registered design owner and which defence against an infringement action is available vide Section 22 relying on the ground of prior publication under Section 19(1)(b) read with Section 4(b) of the Act. 3. Existence of a design in a public record of Registrar of design in a convention country abroad may or may not, depending on the facts of a particular case, amount or not amount to publication abroad, and which depends on the complete clarity available to the eye of the design found in the public record so that it can be said to be understood for being applied to a specific article.

Final Decision: The Court answered the reference that the ratio in the case of Dabur India Ltd. by the Division Bench of this Court that existence of public record in the office of Registrar of design in a convention country abroad may or may not amount to prior publication inasmuch existence of a design in a public record of Registrar of design in a convention country abroad may or may not, depending on the facts of a particular case, amount or not amount to publication abroad, and which depends on the complete clarity available to the eye of the design found in the public record so that it can be said to be understood for being applied to a specific article. Each case has to be necessarily judged by putting the subject design with the articles side by side with the prior publication material and only after thoroughly scrutinizing the same any finding can be given of existence or non-existence of prior publication.