India: What Amounts To "Prior Publication" Under Designs Act, 2000

Last Updated: 23 April 2013
Article by Kailash Choudhary

Most Read Contributor in India, September 2016

Recently the full bench of Delhi High Court on a reference1 made in the case of Reckitt Benkiser India Ltd. v. Wyeth Ltd. decided as what amounts to 'prior publication' under the designs Act, 2000. More particularly reference was made to consider as to whether publication abroad by existence in the records of the Registrar of Design which is open for public inspection amounts to publication or not. Previously mere publication of design, specification, drawings or demonstrations by the foreign patent/design office was held not to constitute prior publication by the division bench of Delhi High Court in the case of Dabur India Ltd. Vs. Amit Jain & Anr.2 and the Kolkata High Court in Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs3. In the present reference the above prior ruling was challenged for the reason that the said judgments were stated to have overlooked the provision of Section 44 of the Act which provides for reciprocal arrangements with convention countries. In full bench of HC in order to address the above issue, outlined four major issues for consideration.

Issue 1: Whether a design registered abroad can be a ground for cancellation of a design registered in India under Secti on 19(1)(a) of the Act ?

On this issue the HC stated that on a literal interpretation of section 19(1)(a)4 it is clear that only a design which is registered in India can cause cancellation of a design which is again registered in India. The design registered abroad cannot cause cancellation of design registered in India. In order to appreciate the issue the court referred to section 51A of the erstwhile Design Act, 1911 which is similar to section 19 of the present Act.

The court compared both the sections and it is noted that the parliament has used the same language while drafting the section 19(1)(a) as was used under Section 51A(1) of the 1911 Act i.e. registration of design in India. However while drafting section 19(1)(b)5 the parliament made a departure from the language of section 51A(2) of the 1911 Act, by including prior publication abroad as a ground for cancellation. Having said this court stated that the specific mandate of the legislature whereby no change has been made to the language of earlier provision. Therefore a registration of a design abroad cannot be a ground under section 19(1)(a) of the Act for cancellation of a design registered in India. However, the design registered abroad, subject to its prior publication, under certain circumstances, can be a basis of cancellation of a design registered in India under section 19(1)(b).

Issue 2: Effect of failing to apply in India for registration within six months of making of an application abroad.

The court cautiously stated that if any person fails to apply in India for registration of design within six months, as stated in section 446, from making of an application abroad, loses his entitlement to priority on the basis of application made abroad. In such case the date of registration in India will be the date on which application is made in India and not the date of application made abroad in convention country.

Further the court stated that in case if any person other than the person who has applied for registration of design abroad, applies for registration of same design in India in the six months period (or till the foreign owner makes an application in India) then such Indian applicant will then get priority to the application of the owner of the foreign registered design made after the six months period of the date of application made in a convention country abroad. Thus the registration of foreign registered design after six months will be taken as subsequently registered in India to a design which is registered in India on an application being made in the interregnum six months period, and therefore, the foreign registered design cannot be a ground for cancellation of an Indian registered design under Section 19(1)(a). The owner of the design registered abroad and fails to apply in India, though would have appropriate entitlement in the convention country, however, in India the registration in a convention country abroad will have no effect of destroying the priority date of an application made for registration in India within the interregnum six months period. The court on the above situation stated that the foreign registered design owner in the convention country in which his design is registered may take necessary action in such foreign country on the basis of registration if the Indian registered owner of the design seeks to sell articles in that country in which the design is registered by the foreigner, however, in India, it will be the Indian registered owner who will be entitled to bring an action for infringement of the design under Section 227 of the Act. 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: Meaning of prior publication under Sections 19(1)(b) read with Section 4(b) and;

Issue 4: Whether documents existing in the record of Registrar of Designs in a convention country abroad which are open to public inspection results in prior publication:

The court after looking at the provisions of section 4 (b)8 stated that a design which is already disclosed by publication in India or abroad will not be registered.

However the publication of the design should be 'in a tangible form or by use or in any other way'. Therefore mere publication will not be sufficient. The publication should be in a 'tangible form' or 'by use' or 'in any other way'. The court stated that with respect to expression 'by use' there is no doubt because use of the design would be translating the same into finished articles. However the other two expressions 'tangible form' or 'in any other way' are very much wider than the expression use. The court after discussing the Gopal Glass case extensively held that 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. The expression 'any other way' 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". Meaning thereby 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. In other words, 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 and the visual impact should be similar to when one see the design on a physical object i.e. an object in tangible form/in use.

The court on the issue of documents existing in the records of Registrar of Design which are publicly available amounts to publication held that what amounts to publication is a question of fact to be decided on a case to case basis. The test of prior publication would be satisfied only if the prior registered design is made public and has that much necessary clarity as applied to a specific article capable of judged by the visual appearance or the eye of the mind. Further the Court held that "unless and until there is complete clarity and understanding to the naked eye or the eye of the mind of the foreign registered design as found in the public record of the Registrar of design qua a specific article, it cannot be said that such public record will amount to prior publication". 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. What is publication is essentially a question of fact to be decided as per the evidence led in each case.


1 FAO(OS) 458/2009

2 2009 (39) PTC 104 (Del) (DB)

3 2006 (33) PTC 434 (Cal.)

4 Section 19. Cancellation of registration

(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration;

5 Section 19. Cancellation of registration (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

(b) that it has been published in India or in any other country prior to the date of registration.

6 Section 44. Reciprocal arrangement with the United Kingdom and other convention countries or group of countries of intergovernmental organisations

7 Section 22. Piracy of registered design

8 Section 4. Prohibition of registration of certain designs.- A design which-

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible Form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration;

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.