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A reference (order available here) was made to a Full Bench of the Delhi High Court to consider as to what amounts to ‘prior publication’ under the Design Act, 2000.
Previously, mere publication of a design by a foreign patent office was held not to constitute prior publication (Dabour Ltd. v Amit Jain (Del HC) and Gopal Glass Works v Asst. Contoller of Patents and Designs (Cal HC)). However, this ratio was questioned as it seemed to have overlooked the implications of Section 44 (reciprocal arrangements with convention countries) of the Act.
In order to address these issues, the Full Bench of the Del HC delineated four major issues -
Issue 1- Whether a design registered abroad can be a ground for cancellation of a design registered in India under Section 19(1)(a) of the Act? Implication of Section 44 on Section 19(1)(a)?
In this regard, the court referred to Section 51A of the erstwhile Design Act, 1911 which is similar to Section 19 of the present Act. It was noted that with regard to the drafting of Section 19(1)(a), the Parliament has used the same language as was used under Section 51A(1) of the 1911 Act i.e. registration of the design in India. However, the Parliament made a conscious departure with regard to clause (b) of Section 19. Prior publication as a ground for cancellation was no more limited to prior publication in India but expanded to include prior publication in any other country. This, the court said, shows that registration of a design abroad cannot be a ground included under Section 19(1)(a) since the Parliament consciously did not include ‘or any other country’ in clause (a).
Therefore, the court found that under Section 19(1)(a) only a design which is registered in India can cause the cancellation of another deign subsequently registered in India.
The court also held that such an interpretation would not allow Section 44(1) to widen the sweep of Section 19(1)(a). This was because once a foreign registered design is registered in India (within the statutory requirement of six months), it becomes a design previously registered in India.
Therefore, this registration can be a ground for cancellation of a design (whose application is made after the date of priority of foreign registration) subsequently registered in India.
Issue 2- Failure to apply for registration in India within six months of making of an application abroad.
The court cautioned that this benefit - of a foreign registered design seeking cancellation of an Indian registered design under Section 19(1)(a), will only be available if the application for registration in India is made within six months of the date of application made in the convention country abroad. If this criterion is not fulfilled, the applicant loses his entitlement to priority. In such cases, the consequence would be that registration of a similar design in India in the six months period (or till the foreign owner makes an application in India) would get priority over the foreign registered design. 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 & 4 – i) Meaning of prior publication under Section 19(1)(b) read with Section 4(b) of the Act. ii) Whether documents existing in the record of the Registrar of Designs in a convention country abroad result in prior publication.
The court considered Section 4(b) of the Act which bars registration of a design which is disclosed to the public in India or abroad through publication ‘in a tangible form or by use or in any other way’. Therefore, it is not mere publication but publication by use, or in a tangible form or in any other way. The meaning of the term ‘any other way’ is guided by ‘tangible form’ or ‘use’. So, a design on paper would qualify as publication only if the visual impact of the design is similar to when we see the design in a tangible form or in use. After quoting the Single Judge and Supreme Court in the case of Gopal Glass Works extensively, the court observed that the Supreme Court and the Single Judge had rightly held that documents downloaded from the UK Patent Office website did not amount to prior publication as they did not add that amount of clarity required to fulfill the ‘tangible form or by use or any other form’ requirement.
The court held that what amounts to publication is a question of fact to be decided on a case to case basis. 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. The test of prior publication would be satisfied only if the registered design is made public and is presented with such clarity that the design’s application to a specific article can be visually judged.
Conclusion
With regard to the facts of the present case, the court observes that the Division Bench has approved the decision of the Single Judge on the existence of prior publication as the spatula in question was found in actual use prior to registration in India. However, this is only a prima facie determination for the disposal of an interim injunction. The court directed both parties to appear before the Single Judge on the 17th of April, 2013, for further proceedings.
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