Delhi High Court rules on prior publication of designs

On 15th March 2013 in Reckitt Benckiser (India) Ltd v Wyeth Limited the full bench of the Delhi High Court clarified that the mere existence of a design in the records of the registrar of design in a convention country may not amount to prior publication in all cases.

Previously, in Gopal Glass Works v Asst Controller of Patents (2006 (33) PTC 434 (Cal)) the Calcutta High Court had held that prior registration of the design of a similar article in a convention country could not be considered as “published in any other country”. In Dabur India Ltd v Jain (FAO (OS) 293/2007) the Delhi High Court had concurred with the decision of the Calcutta High Court.

However, in Reckitt Benckiser (India) Ltd v Wyeth Limited (FAO (OS) 458/2009) the division bench of the Delhi High Court differed from its stand in the Dabur case. In that case, the court distinguished between designs registered outside India which are kept secret post-registration, and designs registered outside India which are not kept secret post-registration. The court considered designs which are not kept secret post-registration to be “published in any other country” within the meaning of Section 19(1)(b) of the Designs Act 2000. The court also referred the matter to a full bench to interpret what amounts to "prior publication" under the act.

The full bench considered the following issues:

• Whether a design registered outside India can constitute grounds for cancellation of a design registered in India under Section 19(1)(a) of the act.
• If registering a design in a convention country does constitute grounds for cancellation of a design registered in India, whether this rule is absolute or whether it is applicable only if an application for registration for the same design is not filed in India within a period of six months of filing of the application in the convention country.
• The meaning of "prior publication" under Section 19(1)(b), read with Section 4(b) of the act.
• Whether documents recorded with the registrar of designs in a convention country abroad result in prior publication.

The court referred to Section 51A of the erstwhile Design Act 1911 (which is similar to Section 19 of the existing act) and noted that the legislature had used the same language in Section 19(1)(a) as was used in Section 51A(1) of the 1911 act. However, in Clause (b) of Section 19, a conscious change had been made so that prior publication as grounds for cancellation was no longer limited to prior publication in India, but was extended to include prior publication anywhere. Thus, the court concluded that mere registration of a design in a convention country was not a ground included under Section 19(1)(a), as the legislature consciously did not include "or any other country" in Clause (a). Hence, under Section 19(1)(a) only a registered design in India can constitue grounds for cancellation of another design subsequently registered in India.

The court also stated that such an interpretation would not allow Section 44(1) to enhance the scope of Section 19(1)(a), as once a foreign design already registered in a convention country is registered in India, that foreign design becomes a design previously registered in India within six months. Such registration may then be grounds for cancellation of a subsequent design, which was applied for after the priority date of the foreign design.

However, the court highlighted that the foreign design may cancel an Indian registered design under Section 19(1)(a) only if the application for registration of the foreign design is made in India within six months of the application date of the foreign design in the convention country. If the foreign design is not registered in India within six months, it will not be entitled to claim priority. In such cases, a similar design registered in India will have priority over the foreign design. However, this would not prevent the owner of the foreign design from initiating an infringement action under Section 22 of the act on the grounds of prior publication (Section 19(1)(b), read with Section 4(b)).

Referring to Section 4(b) of the act (which bars registration of a design which is disclosed to the public in India or abroad through publication "in a tangible form or by use or in any other way"), the court stated that registration of the design would be barred only by publication by use, or in a tangible form or any other way – not by mere publication. The meaning of the term "any other way" is guided by "tangible form" or "use". Thus, a design on paper would qualify as publication only if the visual impact of the design is similar to when the design is viewed in a tangible form or in use.

The court concurred with the Supreme Court and the single judge in Gopal Glass Works, in which documents downloaded from the UK Intellectual Property Office website did not amount to prior publication, as the documents did not add the clarity required to fulfil the "tangible form or by use or any other form" requirement. The court held that what amounts to publication is a question of fact which must be decided on a case-by-case basis. Thus, the mere existence of a design in the records of a registrar of design in a convention country may not amount to publication in all cases. The test of prior publication will be satisfied only if the registered design is made public and is presented with such clarity that incorporation of the design in a specific article can be judged visually.

In the case at hand, the court observed that the division bench has approved the decision of the single judge on the existence of prior publication, as the article in question was found to be in actual use before registration in India. The court also directed both parties to appear before the single judge for further proceedings.