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

Relevant Acts and provisions

Designs Act, 2000

Section 19Section 4(b)

Provisions considered: Section 4(b) of the Designs Act, 2000, on prior publication of a design abroad.

Brief facts

Wyeth held a registered design for an S-shaped spatula used to apply a hair-removal cream and obtained an interim injunction against Reckitt Benckiser restraining sale of a similarly shaped applicator. On appeal, Reckitt Benckiser argued that the design lacked novelty because an identical or similar shape was already disclosed in documents available at a foreign design office before Wyeth's Indian application, amounting to prior publication under Section 4(b). A Division Bench doubted an earlier ruling on what amounts to publication abroad and referred the question to a Full Bench.

Issues before the Court

1. Does the mere existence of a design in the records of a foreign patent or design office amount to prior publication under Section 4(b)?
2. What degree of visual clarity must foreign material show to disclose a design as applied to a particular article?

Court's findings

The Court held that the mere existence of a design in the record of a foreign patent or design office, accessible only on a specific request or by visiting the office, does not by itself amount to prior publication under Section 4(b), unless the material was shown to have been made available to the public with sufficient clarity to disclose the design as applied to a particular article.

The Court explained that publication in any other way requires that the design be disclosed in a manner allowing an ordinary person to perceive visually the shape, configuration or pattern applied to the article in question; documents merely existing on file, without evidence of actual access, inspection or circulation, do not meet this threshold.

Applying this standard, the Court examined the material relied upon and held that it fell short of establishing prior publication abroad with sufficient visual clarity to defeat the registration.

Decision

The Full Bench answered the reference on the Section 4(b) publication test and remitted the appeal for disposal accordingly.

Keywords

Cancellation Design Registration Novelty Prior Publication Scope Of Design Protection