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Reckitt Benckiser (India) Ltd.

Reckitt Benckiser (India) Ltd. v. Wyeth Ltd:


The importance of protecting the intellectual property in the original design of a product has
steadily increased over the years. The protection conferred by the law relating to designs to
those who produce new and original designs is primarily to advance industries, and keep
them at a high level of competitive progress. It is generally observed that those who wish to
purchase an article for use are often influenced in their choice not only by the product's
practical efficiency but also by its physical appearance. There are various prohibitions
incorporated in the Designs Act, 2000 (hereinafter referred to as the Act) to ensure that the
designs which are not new or original are not registered under the Act. One of such
safeguards enumerated under the Act is that a registered design can be cancelled under
Section 19 of the Act if such registered design has been published in India or in any other
country prior to its date of registration. However, the legal interpretation as to what amounts
to prior publication under the Act was interpreted in the judgment recently delivered by the
Honourable Delhi High Court in the case of Reckitt Benckiser India Ltd. v. Wyeth Ltd.
Facts of the case
The case at hand deals with the design of S - shaped spatula used for depilatory purposes
marketed by Reckitt Benckiser (India) Limited (hereinafter referred to as Reckitt) along
with its hair removal cream named Veet in India since 2004. This product generally
comprises a tube and a large S - shaped spatula. Reckitt has obtained a design registration in
respect of the S - shaped spatula vide registration No. 193988 dated 05.12.2003 in Class
9900. Reckitt alleged that Wyeth Limited (hereinafter referred to as Wyeth) has also been
selling a hair removal product under the brand name Anne French and the said product
contains a spatula which infringes Reckitt's copyright in its registered design. Reckitt
approached the Court to seek an ad interim injunction against the Wyeth, restraining it from
manufacturing, selling etc. the spatula with its hair removal product on account of its virtual
identity with the design of Reckitt's spatula.
Reckitt's contentions:
1. The comparison of the spatulas marketed by Reckitt and Wyeth clearly indicate that
Wyeth's design of spatula is a fraudulent and obvious imitation of spatula designed by Reckitt
which tatamounts to infringement of registered design under Section 22(1) (a) of the Act

2. According to section 4(b) of the Act, to cancel the registration of a design, it must be
shown that the design has been disclosed to the public either in India or in any other country
by publication in any of the three specified modes i.e. in tangible form or by use or in any
other way prior to the filing date or the priority date of the application for registration.
3. The Act says that prior publication either in India or abroad is a ground for cancellation of
a registered design but only the prior registration abroad would not amount to cancellation of
a registered design.
4. As per the Act a design which is new or original can be registered. Emphasizing on the
word or Reckitt submitted that even if the design may not have been new, it is definitely
original as it is originating from the author of such design.
Wyeths contentions:
1. The design in question has been disclosed to the public prior to the date of application for
registration. The Spatula sold by Reckitt under the brand name Veet has been advertised in an
Australian magazine Girlfriend in its issue December 2000 which clearly shows that the
design was exposed to the public much before it was registered in India.
2. Wyeth further submitted that registration of the impugned design in UK itself amounted to
publication. As the registration in UK (30.04.1996) was much prior to the registration of the
said design in India (05.12.2003), it clearly indicates that the design had been published prior
to the registration of the design in India.
While determining issues, the learned Single Judge held that prior registrations in other
countries are certainly not secret and are open to the public. Therefore, Wyeth has been able
to show, prima facie, that the design had been disclosed to the public in UK, USA and
Australia by publication in tangible form.
Single Judge held that there is enough evidence on record to show that the design had been
published prior to the date of registration in India which is also evident from the evidence
produced by Wyeth by way of two printouts filed with the affidavit which shows cover
advertisement of the Reckitts Veet product and displays S shaped spatula. Besides, the
advertisement in the Australian magazine also demonstrates the exact design and all the
features of spatula. Therefore, the design in question was published in foreign jurisdictions
prior to the date of registration in India.

He held that while comparing the two designs any layman cannot conclusively say that one is
an imitation of the other design. However the learned single Judge also put up a caveat that
this opinion of his is only a prima facie opinion.
Principle Laws
Prima Facie:
Prima facie is a Latin expression meaning "at first face" or "at first appearance. In modern,
colloquial and conversational English, a common translation would be, "on the face of it".
The term prima facie is used in modern legal English to signify that upon initial examination,
sufficient corroborating evidence appears to exist to support a case.
In common law jurisdictions, prima facie denotes evidence that, unless rebutted, would be
sufficient to prove a particular proposition or fact. The term is used similarly in academic
philosophy. Most legal proceedings, in most jurisdictions, require a prima facie case to exist,
following which proceedings may then commence to test it, and create a ruling.
Doctrine of Sufficient Visual Clarity:
The doctrine of the clarity of Scripture (often called the perspicuity of Scripture) is a
Protestant Christian position teaching that "...those things which are necessary to be known,
believed, and observed, for salvation, are so clearly propounded and opened in some place of
Scripture or other, that not only the learned, but the unlearned, in a due use of the ordinary
means, may attain unto a sufficient understanding of them"[1] Clarity of scripture is an
important doctrinal and Biblical interpretive principle for many evangelical Christians.
Perspicuity of scripture does not imply that people will receive it for what it is, as many
adherents to the doctrine of perspicuity of scripture accept the Calvinist teaching that man is
depraved and needs the illumination of the Holy Spirit in order to see the meaning for what it
is. Martin Luther advocated the clearness of scripture in his work On the Bondage of the Will.
[2] Arminius argued for the perspicuity of scripture by name in "The Perspicuity Of The
Scriptures."
Issues dealt in the case:
On appeal the Division Bench of the Delhi High Court comprising of Hon'ble Justices Sanjay
Kishen Kaul and Valmiki J. Mehta while agreeing with the Single Judges decision in not
granting injunction to Reckitt on the basis of prior publication/existence in public domain

through foreign registration referred the matter to a Larger Bench for considering the
consequences of publication of the impugned design overseas which is not kept secret after
registration. Decision of Full Bench of Delhi High Court In order to determine the reference,
the Full Bench of the Delhi High Court comprising of Justice Sanjiv Khanna, Justice Valmiki
J. Mehta and Justice S.P. Garg discussed the following four major issues
1. Whether a design previously registered abroad is a ground under Section 19(1) (a) of the
Act for cancellation of a design subsequently registered in India?
For the purposes of appreciating this issue, the court referred to the Section 51A of the
erstwhile Designs Act, 1911 (hereinafter referred as the 1911 Act) which is pari materia
with Section 19 of the present Act. The court noted that a careful comparison of Section 51A
of the 1911 Act with Section 19 of the Act would reveal that, there is a marked change in
approach of the legislature while dealing with the two separate grounds of cancellation of a
registered design. These grounds of cancellation are as follows
a) Prior Publication [Section 19(1)(b)]
In this regard the court noted that earlier the factum of prior publication abroad was not a
ground for cancellation of a design registered in India but it has now become a valid ground
of cancellation.
b) Prior Registration [Section 19(1)(a)]
On the other hand, the court held that both under the 1911 Act and the present Act it is only a
prior registration in India (and not abroad) which is a ground for cancellation of a
subsequently registered design. In view of the first issue the Hon'ble Court observed that
Section 19(1)(a) of the Act has to be interpreted literally, and only a previously registered
Indian design can be a ground for cancellation of subsequently registered design in India, and
a foreign registered design cannot under Section 19(1)(a) be a ground for seeking
cancellation of a design registered in India. The court also held that once a foreign registered
design is registered in India within six months of the date of application made in the
convention country abroad, it becomes a design registered in India with an earlier priority
date. Therefore, this registration can be a ground for cancellation of a design registered in
India having a subsequent priority date.
2. What are the consequences of failure to apply for registration in India within six months
of making of an application in a convention country?

In response to the second issue, the Court held that if any person who has applied for
registration in a convention country abroad fails to make an application for registration of the
design in India within six months from the date on which the design was applied for in a
convention country, then such an applicant will lose his entitlement to priority and the date of
registration recorded in such cases would be the date on which the design application had
been made in India. The Court further held that if a similar/same design exists in India till the
time foreign owner makes an application in India, then such Indian applicant will get priority
over proprietor of foreign registered design.
3. What is the meaning of the expression "prior publication under Sections 19(1) (b) and
4(b) of the Act?
The Hon'ble Court noted that the term 'published' or 'publication' is not defined in the Act but
various earlier judgments have defined these expressions. The Court further noted that some
judgments have defined publication as being opposed to one which is kept secret, whereas
other judgments have defined publication as something which is available in public
domain.
However, the Court held that according to Section 4(b) of the Act, it is not mere publication
but publication in a tangible form or by use or in any other way which constitutes a
ground for cancellation under Section 19 of the Act. Moreover the Court also observed that
the use of a design by translating the same into a finished article by an industrial process or
means constitutes publication by use. Thereafter, in order to address the issue determining
the extent there should be publication to fulfil the tangible form or by use or any other
form requirement, the Court laid down the doctrine of Sufficient Visual Clarity.
According to this doctrine, in order to satisfy the conditions of publication in a tangible
form or in any other way as prescribed under Section 4(b) the visual impact of the
publication should be similar to the design as it visually appears on a physical object. The
Court further observed that what amounts to publication is a question of fact and has to be
decided on a case to case basis.
4. Whether documents existing in the record of Registrar of Designs in a convention country
abroad which are open to public inspection results in prior publication?
In response to fourth issue, the Court held that design existing in the records of Registrar of
Designs in a convention country abroad which are open to public inspection may or may not

result in prior publication. Mere publication of design specification by a registering authority


in a convention country, in connection with registration of a design, would not amount to
prior publication. The main criterion which is to be considered in such cases is whether such
document pass the test laid down in doctrine of Sufficient Visual Clarity.
In simple words, if the publication solely consists of the features of the shape, configuration,
pattern, ornament or composition of lines or colours of design (hereinafter referred as
features of design) and not the application of such features of design on any particular
article, then such publication will not amount to publication as envisaged under Section 4(b)
unless there are clear and unmistakable directions to make an article which is the same or
similar enough to the impugned design. On the other hand, if the publication clearly depicts
the application of such features of design on a particular article then such publication will
tantamount to publication as required by Section 4(b) or doctrine of Sufficient Visual
Clarity.
Conclusion
After dealing with the above mentioned issues, the Full Bench of Delhi High Court upheld
the decision of Division Bench as well as the Single Judge as to existence of prior publication
of the impugned design of Reckitt's spatula as it was found in actual use prior to its
registration in India. The court directed both parties to appear before the Single Judge for
further proceeding.

Reckitt Benckiser India ltd. and anr. V. Dabur India ltd.


In the recent decision of Delhi High Court in the case of Reckitt Benckiser (India) Ltd v
Dabur India Ltd, the Honble court decided on the issue of deceptive similarity between the
television advertisement of Pudin Hara lemon fizz drink and Gaviscon
Facts of the case:
The plaintiffs is a member of Reckitt Benckiser Group PLC who involved in the various
consumer and healthcare products. It also manufactures Gaviscon which provide relief from
heartburn and gastro oesophageal reflux. In the year 2006 the plaintiff started using Fireman
Device for the advertising and promoting his product in the market. Fireman Device was
registered in India in favour of the plaintiffs on 22nd October, 2007 in Class 5.
The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such
as Pudin Hara, Hajmola, and Glucose-D etc. Reckitt Benckiser alleging that the ads for
Daburs Pudin Hara lemon fizz drink had infringed its trademark and copyright. The point
of dispute is the image of Fireman /fire fighter.
Issues involved/Contentions
In both the advertisement a person is suffering from gastro-oesophageal reflux
disease/heartburn.
Both the advertisements show fire burning inside the oesophagus.
Then a person consumes medicine & the medicine converts into the image of a fireman
which extinguishes the fire by sprinkling the product on the stomach walls.
Delhi High Court decision
Trademark infringement
After comparing the advertisement, the Delhi High court concluded that Daburs fireman
device was not deceptively similar to the registered mark. The mark appears to be different in
terms of colour, representation and number. Therefore there was no likely hood confusion and
no infringement had occurred.
Passing off

The defendant product i.e. Pudin Hara Lemon Fizz is sold in Indian market since April,
2010 whereas the plaintiff product i.e Gaviscon was introduced in Indian market in
November 2011.Hence Reckitt Benckiser could not establish goodwill in India prior to
Dabur and the element of misrepresentation was also missing. So, Dabur had not committed
the tort of passing off.
Copyright infringement
The court concluded that there were several dissimilarity between both the advertisement in
respect of their colour, representation and image of fireman device. The court relied on the
Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the
established principle that only the manner of expression of ideas is protected under copyright
law (not the ideas themselves). Thus, the court held that there had been no copyright
infringement.
The court has, however, said that if there is any modification in the television Commercial
Ad, Dabur would need to take necessary permission from the court.

References
1. https://indiancaselaws.wordpress.com/2015/02/02/reckitt-benckiser-india-ltd-and-anrv-dabur-india-ltd/
2. http://spicyip.com/2010/10/reckitt-benckiser-india-ltd-v-wyeth-ltd.html
3. http://17thplus.blogspot.in/2014/10/full-bench-delhi-hc-design-act-reckitt.html
4. http://ssrana.in/News/2013/18/Reckitt%20Benkiser%20India%20Ltd.%20v.
%20Wyeth%20Ltd.%20%E2%80%93%20Delhi%20High%20Court%20interprets
%20%E2%80%9Cpublication%E2%80%9D%20in%20design.htm#top
5. https://en.wikipedia.org/wiki/Prima_facie
6. http://www.iiprd.com/2014/12/30/belly-fireman-rescued-by-delhi-high-court/