Reckitt Benckiser (India) Ltd. v. Wyeth Limited (2013)

It settles two questions that recur in every design cancellation: whether a design registered abroad can, by itself, be a ground of cancellation in India; and when the existence of a design in a foreign registry's public record amounts to prior publication. It is the companion of Bharat Glass Tube, and the pair together make up the Indian law of design novelty.

Reckitt Benckiser held Indian design registration No. 193988, dated 5 December 2003, in class 99-00, for an S-shaped spatula used to apply a depilatory cream for hair removal. It sued Wyeth for infringement of that design.

Wyeth's defence was that the registered design was neither new nor original: the same S-shaped spatula had been registered and published abroad before the Indian registration, and had in fact been used abroad following that foreign registration. Wyeth further alleged that Reckitt Benckiser had suppressed the prior foreign registrations and the subsequent manufacture and publication of the design abroad.

A Division Bench referred the matter to a larger Bench because of an earlier Division Bench decision, Dabur India Ltd. v. Amit Jain, which had held that publication abroad by the existence of the design in the records of a foreign Registrar of Designs, open to public inspection, could not be prior publication within ss. 4(b) and 19(1)(b).

1. Is the existence of a design registered abroad in a convention country a ground for cancellation of an Indian registration under s. 19(1)(a), which speaks of a design previously registered in India?
2. What effect does s. 44, the convention priority provision, have on that question?
3. Does the existence of a design in the public record of a foreign Registrar of Designs amount to prior publication under s. 4(b) read with s. 19(1)(b)?

The Full Bench answered the reference in five propositions.

1. The existence of a design registered abroad in a convention country is not, by itself, a ground under s. 19(1)(a). That clause speaks of a design previously registered in India.
2. Section 44 does not change the literal reading of s. 19(1)(a), but it has a consequence. Under s. 44 a foreign registered design becomes an Indian registered design, and its Indian date of registration relates back retrospectively to the date of the first application in the convention country. Once it is an Indian registered design, the priority rule makes it a previously registered design in India, and so a ground of cancellation of a design registered in India on an application made after that priority date.
3. That benefit is available only where the Indian application is made within six months of the application in the convention country, notwithstanding any prior publication during that six-month window.
4. Where the Indian application is not made within the six months, a design registered in India in the meantime cannot be cancelled under s. 19(1)(a). But the foreign design owner, on proving prior publication, still has an effective defence to an infringement action, by virtue of s. 22 read with s. 19(1)(b) and s. 4(b).
5. What amounts to publication is essentially a question of fact in each case. The existence of a design in the record or office of a foreign Registrar of Designs may or may not amount to prior publication. There is prior publication only if the prior registered design is made public with enough clarity, as applied to a specific article, to be judged by the visual appearance or the eye of the mind, so that from the public record an article could be made using that design which would be a piracy of it. Unless there is complete clarity and understanding, to the naked eye or the eye of the mind, of the foreign registered design as applied to a specific article, the public record does not amount to prior publication.

The Bench added the evidential discipline. Each case must be judged by putting the subject design with the articles side by side with the prior publication material, and only after thoroughly scrutinising them can any finding of prior publication be given. It also adopted the patent-law rule against mosaicing: it is not permissible to make a mosaic of a number of prior documents to attack novelty; the design must be disclosed in a single prior document, though where one document refers to another the two may be read together.

On the facts of the case itself, the Division Bench had approved the single Judge's finding of prior publication because the spatula had been found in actual use abroad before registration in India. The Full Bench observed that observations made in an interim order are prima facie only, and that prior publication on the facts would be finally decided after evidence.

1. Section 19(1)(a) is confined to designs previously registered in India; a foreign registration bites only through s. 44 priority, and only if the Indian application follows within six months.
2. A foreign register entry is prior publication under s. 4(b) only where it discloses the design applied to a specific article with sufficient clarity that an article could be made from it; otherwise it is not publication at all.
3. Novelty must be destroyed by a single prior disclosure, not by a mosaic of documents.