Reckitt Benckiser (India) Ltd vs. Wyeth Limited Case study

1. Assignment- 1
Reckitt Benckiser (India) Ltd vs. Wyeth Limited
Case study
Submitted by
Mohammed Naseer Khan (1226114117)
Submitted to
Dr. Lakshmi Priya. A
Faculty
Gitam School of International Business

2. 1. Case Citation in full:-
IN THE HIGH COURT OF DELHI AT New Delhi
FAO (OS) No. 458/2009 %
Reserved on: 27 th September, 2010
Pronounced on: 8 th October, 2010
RECKITT BENCKISER (INDIA) LTD.......
Appellant/Plaintiff Through: Mr. Aman Lekhi,
Senior Advocate with Ms. Shikha Sachdeva, Advocate.
VERSUS
WYETH LIMITED....
Respondent/Defendant Through: Mr. Pravin Anand,
Advocate with Ms. Taapsi Johri, Advocate.
[2010(44) PTC 589 (Del (DB))], 391 F.3d 439,460 (2d Cir.2004)
2. Introduction to the case:-
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

3. 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 canceled 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 Hon, ble Delhi High Court in the case of Reckitt
Benckiser India Ltd. v. Wyeth Ltd.
3. 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 99-00.
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.

4. 4. Principle of law:-
Thereafter, Wyeth appeared before the court and filed its application under Order
39 Rule 4 CPC seeking, inter alia, vacation of the aforesaid ex parte injunction
passed by the court. Wyeth in its contentions before the Hon, ble Court mainly
relied on following grounds:-
1. The injunction order has caused extreme hardship and irretrievable loss to
the Wyeth.
2. Registration of impugned design is liable to be canceled under the
provisions of Section 19 (1) (b) of the Act as the design had been published
in other countries prior to the date of its registration in India;
3. Registration of the design has been obtained by Reckitt by playing a fraud
on the Controller of Patents and Designs and was liable to be canceled as
Reckitt while obtaining design registration in India concealed the fact that it
prior registration for the same in foreign jurisdictions like U.S.A., UK and
Australia;
4. Wyeth has while forwarding its contentions also made reference to an
Australian magazine named Girlfriend which features advertisement of
Reckitt's product Veet along with the impugned S- shaped spatula;
5. The design in question is not new or original as it has prior registrations in
UK, USA and Australia and thus not registrable in accordance to the
provisions laid down under Section 4 (a) of the Act;
6. The design of Wyeth’s spatula is completely distinct and different from the
design of Reckitt's spatula;
5. Judgment as per the Court of Law:-

5. 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.
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 –
Issue 1- Whether a design previously registered abroad is a ground under
Section19(1)(a) of the Act for cancellationof a designsubsequently 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;
1. 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.

6. 2. 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.
Issue 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.
Issue 3 - What is the meaning of the expression "prior publication” under
Sections 19(1) (b) and 4(b) of the Act?

7. 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 fulfill 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.
Issue 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?

8. 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 colors 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”.
5. Analysis of the judgment:-
This case for the first time came before Learned Single Judge of Delhi High Court
on January 08, 2007. The Learned Judge after hearing the matter issued notice to
Wyeth and passed an ex parte order wherein it was directed that till the next date of
hearing, Wyeth, along with its representatives, agents etc. would be restrained from
manufacturing/selling or offering for sale its products with a spatula which in any
manner infringes the registered design No. 193988 of Reckitt.

9. 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 tantamount 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.
Wyeth’s 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

10. 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..
The learned Single Judge in the course of proceedings framed the following
issues for determination:
1. Whether the design registration in UK, USA or Australia by Reckitt could
amount to prior publication or disclosure to public as contemplated in
Section 4(b) of the Act?
2. Whether there is material on record to indicate, prima facie, that the design
in consideration had been published in India or in any other country prior to
the date of registration?
3. Whether prima facie, the design of the Wyeth’s spatula is a fraudulent or
obvious imitation of the registered design in question?
A decision pronounced by a Division Bench of the Delhi High Court comprising of
Justices Sanjay Kishen Kaul and Valmiki J. Mehta appears to have had a
significant impact in the world of designs and intellectual property law. Delivered
on October 8, 2010, this judgment, titled Reckitt Benckiser (India) Ltd. v Wyeth
Ltd. (FAO(OS) No. 458/2009), had sought to dispose of an appeal filed by Reckitt,
against a judgment by a Single-judge Bench, wherein Reckitt’s petition to obtain
an injunction against Wyeth had been dismissed.
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.

11. 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 determining the first issue 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.
For the purpose of second issue learned 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 Reckitt’s 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.
On third issue the learned Single Judge 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. After considering the above mentioned issues the
learned Single Judge vacated earlier issued ex parte injunction vide its order dated
7 August, 2009. Aggrieved by the aforesaid decision of Learned Single Judge
Reckitt filed an appeal against the said order before the Division Bench of Delhi
High Court. On appeal the Division Bench of the Delhi High Court comprising of

12. Hon'ble Justices Sanjay Kishen Kaul and Valmiki J. Mehta while agreeing with the
Single Judge’s 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.
6. Related case references:-
1. Gopal Glass Works Ltd. Vs. Assistant Controller of Patents and Designs:
2006 (33) PTC 434 (Cal).
2. Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (39) PTC 104.
3. Gorbatschow Wodka Kg vs John Distilleries Limited SUIT NO.3046 OF
2010 (Decided on May 2, 2011).
4. Schreder S.A & One Another vs. Trilok Chand & Sons Pvt. Ltd. 2011 (45)
PTC 157 (Del.) (Decided on November 11, 2010).

13. 7. 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.
(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.

14. 8. References:-
1. http://indiankanoon.org/doc/128213318/
2. http://delhicourts.nic.in/Oct%2010/RECKITT%20BENCHISER%20(INDIA
)%20VS.%20WYETH%20LIMITED.pdf
3. http://www.apaaonline.org/pdf/APAA_59th_council_meeting_Manila/Desig
nsCommitteeReports2011/2-INDIA-DesignsCommitteeReport2011.pdf
4. http://spicyip.com/2010/10/reckitt-benckiser-india-ltd-v-wyeth-ltd.html
5. http://ssrana.in/News/2013/18/Reckitt%20Benkiser%20India%20Ltd.%20v.
%20Wyeth%20Ltd.%20%E2%80%93%20Delhi%20High%20Court%20inte
rprets%20%E2%80%9Cpublication%E2%80%9D%20in%20design.htm#reg