Reckitt had claimed infringement by Wyeth of the design registered by Reckitt, having Design No.193988, dated December 5, 2003, in Class 99-00 with respect to an S-shaped spatula that was to be used for applying a cream for hair removal. However, Wyeth had contended that Reckitt’s design lacked originality insofar as the same had also been registered, published as well as used in countries other than India before the Indian registration had taken place in reality. In addition, Wyeth also alleged of Reckitt having suppressed material facts such as this prior registration in foreign countries of the design under consideration.
While dealing with the matter, the Single-judge Bench had decided that prior registration in foreign registrations such the U.K., U.S.A. and Australia should be considered as ‘prior disclosure’ as per Section 4(b) of the Designs Act, 2000 (hereinafter “the Act”), which can be considered to be of considerable significance in the matter of IP law pertaining to designs. It had also been held by the Learned Single Judge that the design in question had remained in public domain prior to December 5, 2003 and could thus be perceived as having been published abroad prior to its Indian registration by Reckitt. With regard to the question as to whether Wyeth’s spatula had been an obvious or fraudulent imitation of Reckitt’s designed spatula, the Single Judge had opined that it could not be prima facie viewed as to be so.
In course of the present appeal, the counsel for Reckitt argued that as per the literal interpretation of Section 19(1)(a) of the Act, prior registration abroad cannot be a ground for cancellation of registration a design in India and hence the same cannot be used as a defence in a suit for infringement of a registered design under S. 22 of the Act. The counsel cited as support the decision in Gopal Glass Works Ltd. Vs. Assistant Controller of Patents and Designs [2006 (33) PTC 434 (Cal)], which had further been followed by the Division Bench of the Delhi High Court in the matter of Dabur India Ltd. Vs. Amit Jain & Anr. [2009 (39) PTC 104]. The council also contended that it is a literal interpretation of S. 19(1)(a) and not any insubstantial legislative intention nor the different perspective provided by S. 19(1)(b) regarding grounds for cancellation of registration that should be relied upon in the present matter. Also, since Wyeth had not mentioned the particular details of prior publication of the design in its written statement, it had been urged that the defensive plea couldn’t be entertained by the court at all.
Wyeth’s counsel replied that the present case fell under S. 19(1)(b) and hence prior publication abroad could be successfully be taken up as a defensive plea in case of infringement. Moreover, it’s only in those cases where the design, even after registration, is kept secret and not released in public domain that prior publication couldn’t be agitated as a valid ground and the present matter clearly did not belong to that category. The Dabur case was also sought to be distinguished on the ground that it had been concerned with an issue of estoppel and not with regard to registration abroad and the consequent publication being available as a ground of defence to an infringement of registered design proceedings in India.
Having considered these two arguments, the Division Bench first proceeded to decide whether the current matter falls within S. 19(1)(a) or (b) of the Act. It was held that in the Dabur case, the provisions of S. 44(2) of the Act and its correlation with the provisions of Sections 4 and 19 of the Act had been overlooked. Moreover, the reasoning of the Learned Single Judge in this matter regarding availability of prior publication abroad as a defence in infringement of design, was held to be eminently reasonable and persuasive.
According to Ss. 4, 5(1) and 19 of the Act, copyright protection through registration can be given only to those designs that are new or original. While the Act does not define “new”, S. 2 (g) does define “original” as “originating from the author of such design and includes the cases which though old in themselves yet are new in their application.” This while a ‘new’ design comes into existence in public knowledge for the first time, an ‘original’ one may not be strictly new in that the shape of the design is available in public domain, but yet there is newness or originality in applying the existing design to a particular article which no one thought of before, which amounts to newness in creation and hence it is given protection as an intellectual property right. S. 16 further makes it clear that if a design was meant to be kept secret, yet it is brought into public domain owing to breach of faith, it will not affect the newness of the design during registration. Based on this, the Court concluded that if a registered design is intentionally brought into the public domain without any breach of faith, then the design no longer remains new. Only the creator of the design who gets it registered prior to publication can get the protection, not a person who creates a design, but releases it in public domain without seeking its registration under the Act. Reading together Sections 4, 5(1), 16, 17 and 19, the Court came to decide that prior publication or existence of a registered design in public domain is an essential ingredient for a design to be ‘new’ so as to get registered.
Prior publication is thus only one of the possibilities by which a design can exist in public domain. In this context, the Division Bench had approved of the earlier decision of the Single Judge and had even referred to paragraphs 21 to 30 of his judgment. Among the designs prohibited to be registered by S. 4(b) of the Act, those that are not significantly distinguishable from known designs or combination thereof are also included and this particular aspect of prior existence in public domain had not been considered in the Gopal Glass Works case, as had been pointed out by the Single Judge. It had also been said that if it could be shown that a design had been disclosed to the public anywhere in India or in any other country by any of the modes specified in S. 4(b), then the registration of the design in India would be liable to be cancelled and hence the same could be cited as a ground for defence against alleged infringement of the design under S. 22(3). Nor was the Single Judge concurring with the view expressed in Gopal Glass Works regarding the matter of registration not amounting to publication under any eventuality, and in his support, he had cited several cases, including National Trading v. Monica Chawla (1994 PTC 233), Otto v. Steel [(1886) 3 R.P.C. 109 (112)], and Humpherson v. Syer (1887) 4 R.P.C. 407].
The Single Judge had also mentioned statutory provisions such as Rule 22 of the Design Rules, 2001 and S. 7 of the Act, which 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. Mention had also been made of the UK Registered Designs Act, viz. S. 5(2) and S. 22 thereof, which provides for secrecy of certain designs even after registration, owing to which, the Single Judge believed that provisions such as S. 19(1)(a) of the Act were necessary, since in such cases, registration will not amount to public disclosure/publication.
However, in the present matter, the design under consideration had not been kept secret following its registration abroad and hence it was S. 19(1)(b) and not (a) that the present matter should be subjected to. Also, as far as the Single Judge was concerned, the similarity between the design registered and published abroad earlier and the one registered by Reckitt in India later was unmistakable and hence Wyeth was within its rights to cite S. 19(1)(b) as defence. The Division Bench also agreed to this reasoning and it also dismissed Reckitt’s contention about lack of detail in Wyeth’s written statement regarding the prior publication, citing provisions of the CPC to establish validity of the additional pleadings submitted by Wyeth in that regard.
The Division Bench also held that the Learned Single Judge had been right in deciding that prior registration in case of designs that are not held in secret following registration should be considered as a valid ground for defence against any subsequent allegation of infringement of similar designs. To support this decision, the Division Bench cited S. 44 of the Act, which deals with reciprocity arrangement between nations regarding registered designs and priority dates there for. If the Single Judge’s reasoning didn’t hold true, said the Division Bench, then the entire procedure described in S. 44 would be rendered chaotic, because registration could no longer be cancelled on the ground of prior registration of same design elsewhere.
The two-fold conclusion that was reached by the Division Bench was thus :
“(i) A design would continue to remain new although it is published in India or abroad i.e. available in public domain in India or abroad within the period of six months after making of an application abroad for registration of such design in the specified country abroad if within this six month period an application is also made in India for registration of the design for which application is made abroad in the specified country.
(ii) In case, however, no application is made in India for registration within a period of six months of making of an application abroad for registration of design in the specified country and if before the period of six months or after six months but before making the application for registration in India the design registered abroad comes into public domain, the availability of the design registered abroad in public domain will result in the design becoming not new on account of falling within the eventuality of Section 44 (2) read with Section 4(b) of availability in public domain.”
The Division Bench concluded by saying that the Dabur case or the Gopal Glass Works case didn’t involve any discussion regarding the inter-relation between Sections 4(b), 19(1)(a), 19(1)(b) and sub sections (1) and (2) of Section 44, nor had those cases considered any of the reasoning produced by the Single Judge in the present matter. Hence, despite agreeing with the Single Judge’s decision in not granting injunction to Reckitt because of prior publication/existence in public domain through foreign registration, the Division Bench referred the matter to a larger bench for consideration regarding the consequences of registration abroad which is not kept secret post registration. The 2 judges who comprised of the Bench however believed that such registration would amount to publication of such design and its availability in public domain in India or abroad, although the same would be subject to the condition that no application for registration of the foreign design is filed in India within a period of six months of the date of making of the application for registration abroad in the specified country under Section 44 of the Act.
