Rickett Benkieser Case Edited
Rickett Benkieser Case Edited
Submitted By
Kartheek K
: 1226115114
Chandana K
: 1226115115
Pabitra Patro
: 1226115116
Sharon Rose
: 1226115117
Somasekhar K
: 1226115118
Subramanyam K
: 1226115120
Submitted To
Dr. V. Lakshmi Priya
Visiting Faculty
Intellectual Property Rights
GITAM School of International Business
Visakhapatnam
Case 1: Reckitt Benckiser (India) Ltd. v. Wyeth Ltd:
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 tatamounts 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 filingdate 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 maynot have been new, it is definitely
original as it is originating from the author of such design.
Wyeths 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 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.
While determining issues, 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.
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 print outs filed with the affidavit which shows cover
advertisement of the Reckitts 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.
He 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.
Principle Laws Prima Facie:
Prima facie is a Latin expression meaning "at first face" or "at first appearance. In modern,
colloquial and conversational English, a common translation would be, "on the face of it".
The term prima facie is used in modern legal English to signify that upon initial examination,
sufficient corroborating evidence appears to exist to support a case.
In common law jurisdictions, prima facie denotes evidence that, unless rebutted, would be
sufficient to prove a particular proposition or fact. The term is used similarly in academic
philosophy. Most legal proceedings, in most jurisdictions, require a prima facie case to exist,
following which proceedings may then commence to test it, and create a ruling.
Doctrine of Sufficient Visual Clarity:
The doctrine of the clarity of Scripture (often called the perspicuity of Scripture) is a
Protestant Christian position teaching that "...those things which are necessary to be known,
believed, and observed, for salvation, are so clearly propounded and opened in some place of
Scripture or other, that not only the learned, but the unlearned, in a due use of the ordinary
means, may attain unto a sufficient understanding of them"[1] Clarity of scripture is an
important doctrinal and Biblical interpretive principle for many evangelical Christians.
Perspicuity of scripture does not imply that people will receive it for what it is, as many
adherents to the doctrine of perspicuity of scripture accept the Calvinist teaching that man is
depraved and needs the illumination of the Holy Spirit in order to see the meaning for what it
is. Martin Luther advocated the clearness of scripture in his work On the Bondage of the Will.
[2] Arminius argued for the perspicuity of scripture by name in "The Perspicuity Of The
Scriptures."
Issues dealt in the case:
On appeal the Division Bench of the Delhi High Court comprising of Hon'ble Justices Sanjay
Kishen Kaul and Valmiki J. Mehta while agreeing with the Single Judges 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. 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
1. Whether design previously registered abroad is a ground under Section 19(1) (a) of the
Act for cancellation of a design subsequently 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 parimateria
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
a) 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.
b) 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. 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.
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.
3. What is the meaning of the expression "prior publication under Sections 19(1) (b) and
4(b) of the Act?
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 fulfil the tangible form or by use or any other
form requirement, the Court laid down the doctrine of Sufficient Visual Clarity.
Case 2: Reckitt Benckiser India Ltd. and Anr. V. Dabur India Ltd.
Plaintiff: Reckitt Benckiser (India) Ltd.
Defendant: Dabur India Ltd.
In the decision of Delhi High Court in the case of Reckitt Benckiser(India) Ltd v Dabur India
Ltd, the Honble court decided on the issue of deceptive similarity between the television
advertisement of Pudin Hara lemon fizz drink and Gaviscon.
Facts of the case:
The plaintiffs is a member of Reckitt Benckiser Group PLC who involved in the various
consumer and healthcare products. It also manufactures Gaviscon which provide relief from
heartburn and gastro oesophageal reflux. In the year 2006 the plaintiff started using Fireman
Device for the advertising and promoting his product in the market. Fireman Device was
registered in India in favour of the plaintiffs on 22nd October, 2007 in Class 5.
The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such
as Pudin Hara, Hajmola, and Glucose-D etc. Reckitt Benckiser alleging that the ads for
Daburs Pudin Hara lemon fizz drink had infringed its trademark and copyright. The point
of dispute is the image of Fireman /fire fighter.
Issues involved/Contentions
Both the advertisements has a person is suffering from gastro-oesophageal reflux
disease/heartburn.
Both the advertisements show fire burning inside the oesophagus.
Then a person consumes medicine & the medicine converts into the image of a fireman
which extinguishes the fire by sprinkling the product on the stomach walls.
Delhi High Court decision
Trademark infringement
After comparing the advertisement, the Delhi High court concluded that Daburs fireman
device was not deceptively similar to the registered mark. The mark appears to be different in
terms of colour, representation and number. Therefore there was no likely hood confusion and
no infringement had occurred.
Passing off
The defendant product i.e. Pudin Hara Lemon Fizz is sold in Indian market since April, 2010
whereas the plaintiff product i.e Gaviscon was introduced in Indian market in November
2011. Hence Reckitt Benckiser could not establish goodwill in India prior to Dabur and the
element of misrepresentation was also missing. So, Dabur had not committed the tort of
passing off.
Copyright infringement
The court concluded that there were several dissimilarity between both the advertisement in
respect of their colour, representation and image of fireman device. The court relied on the
Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the
established principle that only the manner of expression of ideas is protected under copyright
law (not the ideas themselves). Thus, the court held that there had been no copyright
infringement.
The court has, however, said that if there is any modification in the television commercial Ad,
Dabur would need to take necessary permission from the court.
Conclusion:
From both the cases it is clear that Reckitt Benckiser is creating unnecessary situation that
lands it in to trouble in the court of law. There are no infringements of copyright or industrial
design from any of the companies and RB is to be careful in dragging a company in to court
of law which has equal importance in the business world operating globally.
References
1. https://indiancaselaws.wordpress.com/2015/02/02/reckitt-benckiser-india-ltd-and-anrv-dabur-india-ltd/
2. http://spicyip.com/2010/10/reckitt-benckiser-india-ltd-v-wyeth-ltd.html
3. http://17thplus.blogspot.in/2014/10/full-bench-delhi-hc-design-act-reckitt.html
4. http://ssrana.in/News/2013/18/Reckitt%20Benkiser%20India%20Ltd.%20v.
%20Wyeth%20Ltd.%20%E2%80%93%20Delhi%20High%20Court%20interprets
%20%E2%80%9Cpublication%E2%80%9D%20in%20design.htm#top
5. https://en.wikipedia.org/wiki/Prima_facie
6. http://www.iiprd.com/2014/12/30/belly-fireman-rescued-by-delhi-high-court/