Recently the full bench of Delhi High Court on a reference1 made in the case of Reckitt Benkiser India Ltd. v. Wyeth Ltd. decided as what amounts to ‘prior publication’ under the designs Act, 2000. More particularly reference was made to consider as to whether publication abroad by existence in the records of the Registrar of Design which is open for public inspection amounts to publication or not. Previously mere publication of design, specification, drawings or demonstrations by the foreign patent/design office was held not to constitute prior publication by the division bench of Delhi High Court in the case of Dabur India Ltd. Vs. Amit Jain & Anr.2 and the Kolkata High Court in Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs3. In the present reference the above prior ruling was challenged for the reason that the said judgments were stated to have overlooked the provision of Section 44 of the Act which provides for reciprocal arrangements with convention countries.

In full bench of HC in order to address the above issue, outlined four major issues for consideration.

Issue 1: Whether a design registered abroad can be a ground for cancellation of a design registered in India under Secti on 19(1)(a) of the Act ?

On this issue the HC stated that on a literal interpretation of section 19(1)(a)4 it is clear that only a design which is registered in India can cause cancellation of a design which is again registered in India. The design registered abroad cannot cause cancellation of design registered in India. In order to appreciate the issue the court referred to section 51A of the erstwhile Design Act, 1911 which is similar to section 19 of the present Act

The court compared both the sections and it is noted that the parliament has used the same language while drafting the section 19(1)(a) as was used under Section 51A(1) of the 1911 Act i.e. registration of design in India. However while drafting section 19(1)(b)5 the parliament made a departure from the language of section 51A(2) of the 1911 Act, by including prior publication abroad as a ground for cancellation. Having said this court stated that the specific mandate of the legislature whereby no change has been made to the language of earlier provision. Therefore a registration of a design abroad cannot be a ground under section 19(1)(a) of the Act for cancellation of a design registered in India.

However, the design registered abroad, subject to its prior publication, under certain circumstances, can be a basis of cancellation of a design registered in India under section 19(1)(b).

Issue 2: Effect of failing to apply in India for registration within six months of making of an application abroad.

The court cautiously stated that if any person fails to apply in India for registration of design within six months, as stated in section 446, from making of an application abroad, loses his entitlement to priority on the basis of application made abroad. In such case the date of registration in India will be the date on which application is made in India and not the date of application made abroad in convention country.

Further the court stated that in case if any person other than the person who has applied for registration of design abroad, applies for registration of same design in India in the six months period (or till the foreign owner makes an application in India) then such Indian applicant will then get priority to the application of the owner of the foreign registered design made after the six months period of the date of application made in a convention country abroad. Thus the registration of foreign registered design after six months will be taken as subsequently registered in India to a design which is registered in India on an application being made in the interregnum six months period, and therefore, the foreign registered design cannot be a ground for cancellation of an Indian registered design under Section 19(1)(a). The owner of the design registered abroad and fails to apply in India, though would have appropriate entitlement in the convention country, however, in India the registration in a convention country abroad will have no effect of destroying the priority date of an application made for registration in India within the interregnum six months period. The court on the above situation stated that the foreign registered design owner in the convention country in which his design is registered may take necessary action in such foreign country on the basis of registration if the Indian registered owner of the design seeks to sell articles in that country in which the design is registered by the foreigner, however, in India, it will be the Indian registered owner who will be entitled to bring an action for infringement of the design under Section 227 of the Act. But this does not prevent the foreign owner to initiate infringement action under Section 22 of the Act on the ground of prior publication (19(1)(b) read with 4(b)).

Issue 3: Meaning of prior publication under Secti ons 19(1)(b) read with Section 4(b) and;

Issue 4: Whether documents existing in the record of Registrar of Designs in a convention country abroad which are open to public inspecti on results in prior publication:

The court after looking at the provisions of section 4 (b)8stated that a design which is already disclosed by publication in India or abroad will not be registered. However the publication of the design should be ‘in a tangible form or by use or in any other way’. Therefore mere publication will not be sufficient. The publication should be in a ‘tangible form’ or ‘by use’ or ‘in any other way’. The court stated that with respect to expression ‘by use’ there is no doubt because use of the design would be translating the same into finished articles. However the other two expressions ‘tangible form’ or ‘in any other way’ are very much wider than the expression use. The court after discussing the Gopal Glass case extensively held that the expression ‘tangible form’ refers to a specific physical form or shape as applied to an article and not the mere ability to replicate, convert and give a physical shape to the design. The expression ‘any other way’ is wider in context and takes into its ambit a design which has been created though not still put to use or exists in tangible form but at the same time it is guided by the words “use” and “tangible form”. Meaning thereby that the design should not be a factum on paper/ document alone, but further that the design on paper should be recognizable i.e. have the same impact in the public as a furnished article will appeal when judged solely by the eye. In other words, if the design is on paper then it must exist upon a piece of paper in such a way that the shape or other features of the article are made clear to the eye and the visual impact should be similar to when one see the design on a physical object i.e. an object in tangible form/in use.

The court on the issue of documents existing in the records of Registrar of Design which are publicly available amounts to publication held that what amounts to publication is a question of fact to be decided on a case to case basis. The test of prior publication would be satisfied only if the prior registered design is made public and has that much necessary clarity as applied to a specific article capable of judged by the visual appearance or the eye of the mind. Further the Court held that “unless and until there is complete clarity and understanding to the naked eye or the eye of the mind of the foreign registered design as found in the public record of the Registrar of design qua a specific article, it cannot be said that such public record will amount to prior publication”. Therefore, mere existence of a design in the record of a Registrar of Design in a convention country does not in all cases amount to publication. What is publication is essentially a question of fact to be decided as per the evidence led in each case.