NOVATEUR ELECTRICAL & DIGITAL SYSTEMS PVT LTD Vs V-GUARD INDUSTRIES LTD -Judgment by Delhi High Court
$~36 (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 567/2021
NOVATEUR ELECTRICAL &
DIGITAL SYSTEMS PVT LTD ….. Plaintiff
Through: Mr. Hemant Singh, Ms. Mamta Jha, Mr. Shakti Priyan Nair and Ms. Pragya Jain, Advs.
versus
V-GUARD INDUSTRIES LTD ….. Defendant
Through: Mr. Sachin Gupta, Mr. Yashi Agrawal, Ms. Swati Meena, Mr. Rohit Pradhan and Mr. Manan Mandal, Advs.
CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT(ORAL)
% 17.01.2023
REVIEW PET. 18/2023 (for review of Order dt. 04.01.2022) in CS(COMM) 567/2021
1. By this petition, the review petitioner/defendant in CS (Comm) 567/2021, seeks review of the judgment dated 4th January 2023, passed by this Bench in IA 14683/2021, preferred by the defendant under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), whereby the said IA stands dismissed.
2. Paras 2 to 4 of the present Review Petition, which set out the ground for review may be reproduced thus:
�2. By way of the present application, the Appellant seeks review of the final order dated 04.01.2023 passed by this Hon�b1e Court on the ground that the counsel for the Defendant failed to cite a binding precedent namely, Reckitt Benckiser India Ltd. v. Wyeth Ltd., FAO (OS) 458/2009 which leads to an error apparent on the face of the record. The judgment of the Hon�ble Supreme Court in the case is a leading authority which holds that �publication in tangible form […] or in any other way� as given under Section 4(b), Designs Act, 2000 does not refer to an actual product only, but could be in any other way such that the shape or other features of the article are made clear to the eye.
3. Vide final order dated 4.01.2023, this Hon�ble Court was pleased to record in para 45 that �Concept 6 design was a mere concept in the form of a computer image. Such a computer image cannot constitute a depiction of the design in a tangible form, so as to enable the court to apply the design and visualize the final product which would emerge by application of the design.�
4. It is most respectfully submitted that the Ld. Full Bench of the Hon�ble High Court of Delhi in Reckitt Benckiser India Ltd. v. Wyeth Ltd. (supra) categorically holds that different view which stands binding on this Hon�ble Court qua the present matter. A copy of the said judgment is annexed herewith as DOCUMENT-2. The relevant portion is reproduced herewith:
19(i). In our opinion the expression �tangible form� refers to a specific physical form or shape as applied to an article and not the mere ability to replicate, convert and give a physical shape to the design, though of course to fall under the expression �tangible form � it is not necessary that the article should have been used, but the expression �in any other way� takes some of its colour from the words �used” or �tangible form�. The principle of Nositur a Sociis will be applicable. Section 4(b) therefore, not only, requires publication but it should be publication by use, in tangible form or in any other way. The expression �any other way� here is wider in context and takes into its ambit a design which has been created though not still put to use or exists in tangible form but at the same time it is guided by the words �use� and �tangible form�. Thus, to disqualify a claim for registration or cancel registration of a design in India, the publication abroad should be by use, in Tangible form, or in some other way, means that the design should not be a factum on paper/document alone, but further that the design on paper should be recognizable i.e. have the same impact in the public as a furnished article will appeal when judged solely by the eye (see Section 2(d)). Putting it differently if the design is on paper then it must exist upon a piece of paper in such a way that the shape or other features of the article are made clear to the eye. The visual impact should be similar to when we see the design on a physical object i.e. an object in tangible form/in use. As noted otherwise in the present judgment, registration of a design is article specific and thus-depending on the facts of each case registration or publication of design of a particular article may or may not necessarily result in rejection or cancellation of registration of the same or similar design on another article. The Act protects the original artistic effort not inform of an idea or on its own as an artistic work, but is an embodiment in a commercially produced artefact. Thus the primary concern is what the finished article is to look like. [see observations of the Supreme Court in Bharat Glass Tube Ltd.�
3. I have heard Mr. Chander Lall, learned Counsel for the defendant/review petitioner on the Review Petition at length as well as Mr. Hemant Singh on behalf of the original plaintiff/respondent in Review Petition.
4. On a plain reading, I do not see how the finding in para 45 of the judgment of this Court under review is, in any way, contrary to para 19(i) of the decision of the Full Bench of this Court in Reckitt Benckiser India Ltd. v. Wyeth Ltd1. I may note that, in fact, the issue in controversy in Reckitt Benckiser1 was entirely different from that in controversy in the present case and does not at all, on facts, apply to the controversy at hand. For that purpose, I may reproduce para 2 of the decision of the Full Bench in Reckitt Benckiser1, which reads thus:
�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:-
(i) When Section 19(1) (a) of the Act provides for cancellation of a design registered in India on account of a design previously registered in India, whether the said provision has to be read literally only i.e only a design registered in India can be basis for cancellation of a subsequent design registered in India and not a design registered abroad in a convention country or whether the provision of Section 19(1) (a) takes within its sweep and includes a previous design registered abroad in a convention country for cancellation of a design registered in India. Putting it differently, is a design previously registered abroad in a convention country a ground under Section 19(1) (a) of the Act for cancellation of a design subsequently registered in India.
(ii) If under Section 19(1)(a) a design registered in a convention country abroad is a ground for cancellation of a design registered in India, is this rule absolute or the rule falls in those circumstances where the design registered abroad is not applied to be got registered India within a period of six months of making of the application in a convention country abroad. Be it noted that the issue of design registered abroad alongwith its prior publication can be under certain circumstances a basis of cancellation of a design which is registered in India, however, that is the subject matter of Section 19(1)(b) and not 19(1)(a), because the aspect of prior publication is within the subject matter of Section 19(1)(b) as stated in the immediately following issue.
(iii) If a design registered in a convention country abroad is not a ground for cancellation of a design registered in India under Section 19(1)(a), then, whether the registration abroad entitles cancellation of a design registered in India because the registration abroad conclusively amounts to prior publication as per that expression found in Section 19(1)(b) read with Section 4(b) of the Act.
(iv) What is the meaning of the expression �publication abroad�/�published abroad�, for it then to be argued that on account of such publication abroad, the design registered in India becomes liable to cancellation in terms of Section 19(1)(b) of the Act.�
5. The Full Bench, in Reckitt Benckiser1 was, therefore, not directly seized with the issue of the interpretation of the expression �design� vis-�-vis the definition of the expression �articles� in Section 2 much less to the applicability of the said definitions to Section 4 of the Designs Act. The issue before the Full Bench was essentially the impact of the foreign registration of a design as �publication� within the meaning of Section 4 of the Designs Act.
6. The submission of Mr Lall is that the view expressed by this Court in para 45 of the judgment under review is in fact contrary to the opinion expressed in para 19(i) of the judgment in Reckitt Benckiser1.
7. Inasmuch as Reckitt Benckiser1 is a judgment of the Full Bench of this Court, I have examined this argument. Having done so, to my mind, para 19(i) of Reckitt Benckiser1, if anything, fortifies the view expressed in para 45 of the judgment under review.
8. The defendant/review petitioner had, in the present case, sought to rely on a mere computer image which, admittedly, had never been put or applied to any physical product or article, as sufficient to constitute prior publication within the meaning of Section 4(b) of the Designs Act. It is also an admitted position, acknowledged during the course of hearing today as well, that the said image was a mere concept, which existed only in the mind of the person who communicated the image. It was, therefore, a mere mental concept, which has been held, on facts in the judgement under review, to have been ultimately rejected.
9. The question is whether this Court erred in holding that mere communication of such a concept by NIPA to the defendant by email could constitute prior publication of the article within the meaning of Section 4(b) of the Designs Act. I chose to hold in the negative. The submissions advanced by the learned Senior Counsel for the defendant/review petitioner do not convince me to alter my view.
10. Adverting now, to para 19(i) of the judgment of the Full Bench in Reckitt Benckiser1, it is clearly held, in the said paragraph, that
(i) �the expression �tangible form� refers to a specific physical form or shape as applied to an article and not the mere ability to replicate, convert and give a physical shape to a design�,
(ii) �it is not necessary�, however, �that the article should have been used� (significantly, the paragraph does not say usage the expression �the article should have been used� and not �the design should have been used�),
(iii) Section 4(b) employs the expression �publication by use, in tangible form or in any other way�,
(iv) the words �in any other way� have to be guided by the expressions �use� and �tangible form�,
(v) �the design should not be a factum on paper/document alone�,
(vi) the design, if on paper, �should be recognizable, i.e. have the same impact at the public as a finished article will appeal when judged solely by the eye�,
(vi) �if the design is on paper, then it must exist on a piece of paper in such a way that the shape or other features of the article are made clear to the eye�, and
(vii) what is protected by the Act is �the original artistic effort not in form of an idea or on its own as an artistic form, but is embodiment in a commercially produced artefact�.
11. Each of the afore-noted observations contained in para 19(i) of the judgment of the Full Bench in Reckitt Benckiser1, therefore, fortifies the view expressed in para 45 of the judgment under review, that the mere communication, by one person to the another of a computer image, which either prior to such communication or even thereafter, was never applied to any physical article, cannot constitute prior public within the meaning of Section 4(b) of the Designs Act. Para 19(i) of the judgment of the Full Bench in Reckitt Benckiser1 clearly notes, inter alia, that (i) the mere ability to replicate, convert and give a physical shape to the design would not suffice to constitute a �tangible form� and (ii) �the design should not be a factum on paper/document alone�.
12. A computer image is merely an idea of what the design should look like. It is not even a prototype, or a photograph of a prototype. Reckitt Benckiser1, in my view, clearly forecloses such a concept as being regarded as a design, so as to render the mere communication of the computer image, by one person to the other by e-mail, as �prior publication� within the meaning of Section 4(b) of the Designs Act.
13. I do not find, therefore, that para 19(i) of the judgment of the Full Bench of this Court in Reckitt Benckiser1 makes out any case for me to re-examine the judgment under review dated 4th January 2023. No other ground for review has been urged in the Review Petition.
14. Accordingly, the Review Petition is dismissed.
C.HARI SHANKAR, J
JANUARY 17, 2023
rb
1 2013 SCC OnLine 1096
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Neutral Citation Number : 2023/DHC/000361
CS(COMM) 567/2021 Page 1 of 7