Reckitt stripped of Indian design by own prior art

In Reckitt Benckiser (India) v Wyeth, the Delhi High Court has clarified that publication of a foreign equivalent design detroys novelty of an Indian design, according to an article by Sudhir Kumar of Aswal Associates. Spicy IP's take on the case is here.

It appears that the court differed from its earlier case law, including Dabur v Jain, in so finding.

The design was Indian RD 193988 for an S-shaped spatula for applying depiliatory cream. The anticipating design appears to have been US D387,629, and its UK priority filing 2055969, both published some 6 years earlier, so it doesn't seem to have been a particularly close call. That spelt the end of the infringement case, alas.

It seems slightly surprising that a large company would file over seven years out of priority and then attempt to enforce the resulting registration, but perhaps I am missing something.

Asian applications- an analysis

APAA, the Asian Patent Attorneys Association, held their Design Committee meeting in Jeju, Korea on 17th October under the joint chairmanship of Minako Mizuno and Peter Heathcote.  The meeting concentrated on practical issues of what can be filed as a design, and included whether:

• designs are available for separate component parts of products,
• designs are available for integral parts of products,
• designs are available for icons,
• multiple designs are available,
• sets are available,
• dashed lines can be used,
• statements of novelty are required.

 You can find the extremely detailed sets of responses from the official groups of Australia, Hong Kong, India, Indonesia, Japan, Korea, Malaysia, New Zealand, Pakistan, Philippines, Singapore, Sri Lanka, Taiwan, Thailand and Vietnam on APAA's 2010 website here. 

Indian design registration summary

We are grateful to Vaish Associates for this summary of the Indian registration procedure which is to be found, with a commentary, in their May 2010 IP and IT Newsletter.

Fabrics - no Design Copyright in India

Our friends at K&S report the appeal judgment in Microfibres v. Giridhar & Co (taken together with two others: Mattel Inc & Ors v. Jayant Agarwala & Ors and Dart Industries v. Techno Plast & Ors). The plaintiff had not registered their fabric design, and now sought to enforce artistic copyright in the painting on which it was based.
The defence was that, once the artistic work had been industrially applied by 50 articles having been made, copyright could not be used to prevent competitors from doing likewise, under Section 15(2) of the Copyright Act, 1957 (a provision having counterparts in many other countries which share a common copyright ancestry with the UK) which
is in the following terms:

Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

The Court upheld the defendants. Indian public policy was to protect industrially exploited articles by design registration, or not at all. In this case, in fact, the plaintiff had indeed registered the designs in the UK (possibly as GB 0602285 or GB 0600566) - but not in India.
Along the way, the Court considered arguments that the intention in creating the copyright work was relevant, or that the artistic quality was relevant, and rejected both - quite correctly, we think.
There was, however, an interesting argument in the judgment for IP practitioners. Greybeards will remember Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183 - one of Catnic's interminable lintel battles. In that judgment, Whitford J held that on applying for a patent, one effectively elected to waive copyright in the corresponding drawings. According to Whitford:

"In my view, by applying for a patent and accepting the statutory obligation to describe and if necessary illustrate embodiments of its invention, a patentee necessarily makes an election accepting that, in return for a potential monopoly, upon publication, the material disclosed by him and the specification must be deemed to be open to be used by the public, subject only to such monopoly rights as he may acquire on his application for the patent and during the period for which his monopoly remains in force, whatever be the reason for the monopoly rights.

That decision certainly had a chequered history. Whitford J. cited himself with approval in Rose Plastics GmbH v. William Beckett & Co. (Plastics) Limited and Another [1989] 1 F.S.R. 113, but no other UK judge did so, and the decision was not followed in Ireland (House of Spring Gardens Limited and Others v. Point Blank Limited and Others [1985] F.S.R. 327), New Zealand (Wham-O Manufacturing Co. v. Lincoln Industries [1982] R.P.C. 281), Australia (Ogden Industries Pty. Ltd. v. Kis (Australia) Ltd [1983] F.S.R. 616) or Hong Kong (Interlego AG v. Tyco Industries Inc. and Others [1987] F.S.R. 409 CA). On the other hand, it was apparently followed in Canada (see Gordon J. Zimmerman), and statutory provision was made in New Zealand to enshrine it in the Copyright Act. It was pointedly distinguished in a later UK design case, Gardex v Sorata [1986] RPC 623, and it is now widely thought to be bad law here. It is therefore strange and sad to see it cited as authority for the proposition that you can't have your design cake and still eat copyright, and a shame that the Court did not take the chance to rule the argument out in India.