RECKITT BENKISER INDIA LTD. Vs. WYETH LTD.

JUDGEMENT

(1.) Reference has been made to this Full Bench, by a Division Bench of this court, vide the reference order dated 8.10.2010 in this FAO(OS), for this larger Bench to consider as to whether a Division Bench of this court in the case of Dabur India Ltd. Vs. Amit Jain & Anr., 2009 39 PTC 104 has correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be "prior publication" as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (hereinafter referred to as "the Act"). The Division Bench of this court observes that it concurs with the view of learned Single Judge of Calcutta High Court in the case of Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs, 2006 33 PTC 434 as stated in paras 39 and 40 of the judgment, as per which the learned Single Judge of the Calcutta High Court holds that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. The reference order doubts the correctness of the ratio in the judgments in the cases of Dabur India Ltd. and Gopal Gas Wors Ltd. for the reason that the said judgments are stated to have overlooked the provision of Section 44 of the Act which provides that a design which is registered abroad in a Paris Convention country, and to which convention India is a signatory, gets priority over an Indian registered design, provided that the person who gets the designs registered abroad in a Paris convention country, within six months of the date of the application made in the said convention country abroad, applies and gets registration in India.

(2.) In order to answer the reference with clarity it would be necessary first to crystallize the various issues/aspects, so that not only each of them can be approached independently, but also the inter-play and interrelation of those issues as regards points which are common to those issues/aspects can be noticed. The issues/aspects as crystallized would be as under:-

(3.) An offshoot of the aforesaid issues (iii) and (iv) above is that whether in all circumstances and all cases, the record of the Registrar of Designs open to public inspection abroad should be held to be prior publication so that on the basis cancellation can be applied under Section 19(1)(b) of the Act for the design registered in India, and if, the record of the Registrar of Designs in a convention country abroad is to be taken as a basis for cancellation of a design registered in India, whether it is an unqualified rule or whether it has to be examined as per the facts of each case that record of the Registrar of Designs in a convention country abroad does or does not amount to prior publication in terms of the expression in Section 19(1)(b) and Section 4(b) of the Act.