RECKITT BENCKISER (INDIA) LTD versus WYETH LIMITED

NLS 7/8/2009/DG/Del.

CS(OS) 30/07

 HON’BLE MR JUSTICE BADAR DURREZ AHMED

JUDGMENT

 

  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.
  1. 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.
  1. 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.
  1. 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.

  1. 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.
  1. 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 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.
  1. 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..
  1. Thereafter, the defendant filed its application under Order 39 Rule 4 CPC (IA 2819/2007) seeking, inter alia, vacation of the ex parte 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 in as much 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 thatforming 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; 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.
  2. 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:-

 

Sl. No. Defendant’s Anne French Spatula Plaintiff’s Veet Spatula
1. It has substantially curved contours It has substantially angular

and broad contours

2. The outer lines of the spatula are broad at the ends and waisted in the middle The outer lines of the

spatula are totally straight

 

3. The spatula is roughly of an ‘hourglass‘ shape with a straight base portion, waisted

middle and relatively wider upper portion

The spatula is roughly of a

‘U’ shape. It has an

increasing taper from the

lower end to the upper end

 

4. There are two crescent

shaped indentations on the scoop part facing up and two on the reverse

There are three horizontal

lines in the front and three

horizontal lines in the back

of the spatula at the center

  1. 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.
  1. 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 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.
  1. 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 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.
  1. 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 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. asused 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.
  1. 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).

  1. 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 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 the two designs are closely scanned and accordingly an infringement’.

  1. 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.
  1. 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 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 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.

  1. 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. Apart from this, Mr Sudhir Chandra also contended that the decision in Gopal Glass Works (supra) did not correctly lay down the law in as much 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 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.
  1. 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.                     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.                     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?

QUESTION No. 1

  1. 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 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 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 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).

  1. 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 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.

(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.

  1.  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.
  1. 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 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.”

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..

  1. 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 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.
  1. 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.
  1. 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, 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.
  1. 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 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.
  1. 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.
  1. 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 the UK, Australia and USA by publication in tangible form. Theexpression .in any other way. would also be wide enough to include registration as a mode of disclosure to the public. Therefore, prima facie, 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

  1. 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 product which alsohas 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

  1. 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.
  1. 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