GLAXO SMITHKLINE CONSUMER HEALTHCARE

GMBH AND CO. KG AND ORS. VS. ANCHOR

HEALTH AND BEAUTY CARE PRIVATE LIMITED
2004(29)PTC72(DEL)

SINGLE JUDGE BENCH: JUSTICE RAMESH CHANDRA CHOPRA

MADE BY: AASHI GOYAL

ROLL NO. - 2015002
 FACTS
• IN THE PRESENT CASE, A SUIT FOR INJUNCTION WAS FILED BY THE PLAINTIFFS ON ACCOUNT OF INFRINGEMENT
OF THEIR TOOTH BRUSH DESIGN WHICH WAS REGISTERED ON 7TH JULY 1995 UNDER THE BRAND NAME OF
'AQUAFRESH FLEXI’. AN EX PARTE AD INTERIM INJUNCTION WAS ALREADY ISSUED AGAINST THE DEFENDANT
VIDE ORDERS DATED 26TH NOVEMBER, 2002.
• THE DEFENDANT WAS OFFERING FOR SALE THE TOOTH BRUSHES UNDER THE BRAND NAME 'ANCHOR FLEXI GRIP'
WITH A DESIGN WHICH WAS INFRINGING THE PLAINTIFF'S AFORESAID REGISTERED DESIGN.
• THE TOOTH BRUSHES SOLD BY DEFENDANT WERE HAVING 'S' SHAPED ZIGZAG ANGULAR NECK AND CURVED
HANDLE WITH IDENTICAL SHAPE.
• IT WAS CONTENDED THAT THE SHAPE AND CONFIGURATION OF THIS BRUSH WAS PRE-KNOWN AND PRE-
PUBLISHED IN INDIA AS WELL AS OTHER COUNTRIES AND ARE BEING MANUFACTURED AND MARKETED BY A
LARGE NUMBER OF COMPANIES THEREFORE NO NOVELTY RESIDES IN THE SHAPE AND CONFIGURATION OF THE
NEWLY REGISTERED DESIGN.
• THE DEFENDANT SPECIFICALLY REFERRED THE SUIT FILED BY THE PLAINTIFFS AGAINST HINDUSTAN LEVER LIMITED
ON THE BASIS OF THEIR EARLIER REGISTERED DESIGNS IN WHICH THE PLAINTIFFS APPLICATION FOR AN AD
INTERIM INJUNCTION WAS DISMISSED. IN THE SAID SUIT, THE PLAINTIFFS GAVE UP THEIR CLAIM OF
INFRINGEMENT OF REGISTERED DESIGNS AND ADMITTED PRIOR PUBLICATION.
• THE DEFENDANT PLEADED THAT THE FILING OF THE AFORESAID SUIT AND ORDERS PASSED THEREIN WAS
NOT DISCLOSED IN THE PRESENT PLAINT WHICH WAS CONCEALMENT OF MATERIAL FACTS FROM THE
COURT WITH A VIEW TO OBTAIN AN EX-PANE INJUNCTION.
• ACCORDING TO THE PLAINTIFFS, THEY DID NOT PRESS FOR ANY RELIEF IN REGARD TO THE "S" SHAPED
ZIGZAG NECK OR OTHER PARTS OF THE BRUSH EXCEPT
a) THE RUBBER CUSHIONING IN THE GAPS OF THE "S" SHAPED ZIGZAG ANGULAR NECK,
b) RUBBER PATCHES ON THE FRONT AND BACK SIDE OF THE NECK AND
c) THE LINE RUNNING ON THE FRONT AND BACK SIDE OF THE HANDLE OF THE BRUSH.
• AS OTHER FEATURES AS TO THE SHAPE AND CONFIGURATION OF THIS BRUSH HAD ALREADY GONE INTO
PUBLIC DOMAIN IN VIEW OF THE PRIOR PUBLICATION OF DESIGNS AND EARLIER DESIGNS.
GLAXO SMITHKLINE TOOTHBRUSH ANCHOR FLEXI GRIP TOOTHBRUSH
 RELATED PROVISIONS
• 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; OR
(c) IS NOT SIGNIFICANTLY DISTINGUISHABLE FROM KNOWN DESIGNS OR COMBINATION OF KNOWN DESIGNS; OR
(d) COMPRISES OR CONTAINS SCANDALOUS OR OBSCENE MATTER SHALL NOT BE REGISTERED
• 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; OR
(c) THAT THE DESIGN IS NOT A NEW OR ORIGINAL DESIGN; OR
(d) THAT THE DESIGN IS NOT REGISTRABLE UNDER THIS ACT; OR
(e) IT IS NOT A DESIGN AS DEFINED UNDER CLAUSE (D) OF SECTION 2..
(2) AN APPEAL SHALL LIE FROM ANY ORDER OF THE CONTROLLER UNDER THIS SECTION TO THE HIGH COURT, AND THE CONTROLLER
MAY AT ANY TIME REFER ANY SUCH PETITION TO THE HIGH COURT, AND THE HIGH COURT SHALL DECIDE ANY PETITION SO REFERRED.
 ISSUES

• WHETHER THE PLAINTIFFS ARE ENTITLED TO AN AD INTERIM INJUNCTION IN REGARD TO THE

INFRINGEMENT OF THEIR REGISTERED DESIGN?
• WHETHER THE DESIGN REGISTERED IN FAVOUR OF THE PLAINTIFF SUFFERS FROM ANY OF THE
VICES ENUMERATED IN SECTIONS 4 AND 19 OF THE DESIGNS ACT, 2000?
 REASONING
ISSUE 1
• IT WAS HELD THAT THERE WAS NO PRIMA FACIE CASE IN REGARD TO THE INFRINGEMENT OF THEIR REGISTERED
DESIGN. THE COURT FOUND THAT THE SAID DESIGN REGISTERED IN FAVOUR OF THE PLAINTIFFS IS A VIRTUAL
REPRODUCTION OF THE PLAINTIFFS EARLIER DESIGNS WHICH APPEAR TO HAVE ALREADY GONE INTO PUBLIC
DOMAIN.
• THE THREE CHANGES AS POINTED OUT BY THE PLAINTIFFS DO NOT CONSTITUTE A NEW DESIGN AND ARE MERELY
TRADE VARIATIONS WHICH ARE NEITHER INVENTIVE NOR INNOVATIVE. NOVELTY SHOULD BE CAPABLE OF
MAKING A DESIGN DIFFERENT AND DISTINCTIVE AT FIRST SIGHT OF THE CONSUMER, SHOULD BE NEW AND
SHOULD NOT REQUIRE LOT OF EFFORT TO FIND OUT THE NOVELTY.
• THIS COURT FURTHER HELD THAT ZIG ZAG S BEND IS A UTILITARIAN AND FUNCTIONAL PART REGARDING WHICH
THE PLAINTIFFS HAD EVEN OBTAINED A PATENT ON THE GROUND THAT THIS ZIG-ZAG BEND INTRODUCES MERE
FLEXIBILITY IN THE TOOTH BRUSH. BY MERELY PUTTING SOME RUBBER CUSHIONS IN THE GAPS THIS PART DOES
NOT BECOME A DESIGN SO AS TO PRECLUDE OTHERS FROM USING IT. THESE RUBBER CUSHIONS MAY ENHANCE
THE FLEXIBILITY AND AS SUCH ARE UTILITARIAN COMPONENTS. THE HANDLE ALSO IS A UTILITARIAN PART AND
INTRODUCTION OF CERTAIN PATCHES THEREON DOES NOT INTRODUCE ANY DESIGN THEREIN.
 ISSUE 2
• THIS COURT IS PRIMA FACIE WAS OF VIEW THAT THE PLAINTIFFS DESIGN IN QUESTION IS HIT BY SECTION
19(1)(B)(C) READ WITH SECTION 4(C) OF THE DESIGN ACT, 2000 IN AS MUCH AS THERE IS NOTHING NEW IN
THIS DESIGN AND THE SO CALLED NEW OR INNOVATIVE STEPS AS POINTED OUT BY THE PLAINTIFFS ARE
ONLY TRADE VARIANTS AND AN ATTEMPT TO CONTINUE ITS HOLD OVER OLD DESIGN OF THE TOOTH BRUSH
WHICH HAS GONE INTO PUBLIC DOMAIN AND REGARDING WHICH THE PLAINTIFFS HAVE BEEN REPEATEDLY
REBUFFED BY THE COURTS.
• THE REGISTRATION WAS OBTAINED BY THE PLAINTIFFS WITHOUT POINTING OUT THE SO-CALLED NOVELTIES
WHICH CREATED A NEW DESIGN. IT IS TRUE THAT EVEN A SMALL INCENTIVE STEP MAY CREATE A NEW
DESIGN BUT IN THE PRESENT CASE, THE THREE IMPROVEMENTS IN THE EARLIER DESIGN AS POINTED OUT BY
LEARNED COUNSEL FOR THE PLAINTIFFS ARE NEITHER INVENTIVE NOR INTRODUCED NEW FEATURES IN THE
DESIGN.
• ONLY BY INTRODUCING FEW INSIGNIFICANT CHANGES, THE PLAINTIFFS HAVE SUCCEEDED IN GETTING THE
NEW DESIGN REGISTERED WHICH WAS ALREADY IN PUBLIC DOMAIN. IT TANTAMOUNT TO PLAYING FRAUD
ON THE STATUTE WHICH CONTEMPLATES TO PUT REGISTERED DESIGNS IN PUBLIC DOMAIN AFTER THE EXPIRY
OF THE STATUTORY PERIOD.
 JUDGEMENT
• FINALLY, THE COURT HELD THAT THE PLAINTIFFS AFTER SURRENDER OF EARLIER DESIGNS WHICH HAD
GONE INTO PUBLIC DOMAINS ARE ONLY TRYING TO OVERCOME THEIR DISABILITY BY DUBIOUS MEANS.
THE DISTINCTIVE FEATURES OF THE DESIGN IN QUESTION AND EARLIER DESIGNS WHICH ARE IN PUBLIC
DOMAIN ARE ALMOST IDENTICAL AND OBVIOUS IMITATION.
• THE PLAINTIFFS WOULD NOT SUFFER ANY IRREPARABLE LOSS/INJURY IF THE DEFENDANT ALSO
MANUFACTURES THE BRUSHES WITH SIMILAR FEATURES AS BOTH HAVE A HEALTHY COMPETITION IN THE
MARKET. THE DEFENDANT WOULD RATHER SUFFER IRREPARABLY IF THE PLAINTIFFS SUCCEED IN OUSTING
IT FROM THE MARKET ON THE BASIS OF A REGISTERED DESIGN WHICH IS ALREADY IN PUBLIC DOMAIN
AND WAS NOT EVEN PRIMA FACIE REGISTERABLE.
• IN THE RESULT, THIS COURT HELD THAT THE PLAINTIFFS HAVE FAILED TO MAKE OUT A PRIMA FACIE CASE
FOR THE GRANT OF AD INTERIM INJUNCTION ON THE BASIS OF REGISTERED DESIGN. THEIR APPLICATION
IS THEREFORE, DISMISSED WITH COSTS OF RS. 25,000/-.
• THE EX-PARTE AD INTERIM ORDER WAS VACATED.
THANK YOU