IN THE HIGH COURT AT CALCUTTA
SPECIAL JURISDICTION
ORIGINAL SIDE
PRESENT :
THE HON’BLE JUSTICE PATHERYA
AID No.1 of 2010
AID No.2 of 2010
AID No.3 of 2010
RECKITT BENCKISER AUSTRALIA PTY. LTD.
VERSUS
CONTROLLER OF PATENTS AND DESIGNS & ORS.
For the Appellant
|
: Mr. S.N. Mukherjee, Sr. Adv.,
|
Mr. Ratnanko Banerjee, Adv.,
| |
Mr. Soumya Choudhury, Adv.,
| |
Mr. Subhojit Roy, Adv.,
| |
Ms. Debashri Dutta, Adv.
|
For the Respondent No.3 : Mr. Goutam Chakraborty, Sr. Adv., Mr. Sudipto Sarkar, Sr. Adv.,
Mr. Sayantan Bose, Adv.,
Mr. Devajyoti Bhattacharya, Adv.
Heard on
|
: 07.01.2011, 21.01.2011, 04.02.2011,
|
10.02.2011, 25.02.2011, 08.03.2011,
| |
04.04.2011 & 12.04.2011.
| |
Judgement on
|
: 5th October, 2016.
|
PATHERYA J. :
AID 1 of 2010, AID 2 of 2010 and AID 3 of 2010 are appeals
filed by the appellants from the order of the Joint Controller of Patents
& Designs, the respondent no.2 dated 28th March, 2008. The said order was passed on cancellation applications filed by the respondent no.3 in respect of the appellant’s design nos.184135, 184136 and 184137, all of which was registered in June 2000. The design is in a mosquito coil which is hexagonal in shape.
Counsel for the appellant submits that all the three designs of the appellant was registered on 13th June, 2000 that is much before the design of the respondent no.3 which was registered on 19th
October, 2004.
In January 2005 the appellants filed CS (OS No.121 of 2005) in the Delhi High Court alleging infringement of registered design nos.184136 and 184137. In the said suit the respondent no.3 filed a written statement and made a counter-claim seeking cancellation of the design of the appellants. The appellant thereafter filed cancellation petitions seeking cancellation of the respondent no.3’s design nos.197811 and 197426 in July 2005, vis-à-vis its registered design nos.184136 and 184137. The respondent no.3 in its counter- statement pleaded that the designs though virtually identical were new and novel and there had been no prior publication. Evidence affidavits were also filed. In proceedings filed before the Delhi High Court, in August 2005 issues were framed and one of the issues framed, was whether design nos.184136 and 184137 were liable to be cancelled. In 2005 after the filing of the appellant’s cancellation
petitions, the respondent no.3 filed cancellation proceedings against the registered designs of the appellant. The appellant through several letters called upon the respondent no.2 to give it an opportunity tocross-examine the persons who had affirmed the affidavit-in- opposition. Without disposing of the said request the order dated 28th
March, 2008 has been passed. No step was taken by the respondent no.2 to process the appellant’s application and without processing the appellant’s cancellation petition, the cancellation petition of the respondent no.3 reached the stage of filing evidence. The appellant filed its evidence in the cancellation petitions filed by the respondent no.3. Hearing notice was thereafter issued. In March 2007 an application was filed seeking transfer of the cancellation petition to the Delhi High Court as the same issue was pending before the Delhi High Court. Without disposing of the said interim applications, one forcross-examination and the other for transfer, the respondent no.2 sought to hear the cancellation application of the respondent no.3. This though brought to the notice of the respondent no.3 was not addressed. Without considering the said interim applications, the respondent no.2 proceeded to hear the cancellation application filed by the respondent no.3. It was only after much persuasion that the respondent no.3 proceeded to hear the interim application with regard to transfer and the same was dismissed by order dated 13th February, 2008. Applications were also filed before the Delhi High Court which was heard and disposed of by order dated 5th March, 2008 whereby the application filed by the appellants was dismissed. An appeal filed
from the said order was dismissed as withdrawn. An appeal was thereafter filed from the orders dated 13th February, 2008 and 5th
March, 2008 passed by the respondent no.2 before the Delhi High Court. The said appeal was converted to Civil Miscellaneous Petition which was heard and orders reserved. In the meantime respondent no.2 passed the order dated 28th March, 2008 thereby cancelling the registered design nos.184135, 184136 and 184137 of the appellants. Being aggrieved by the said order this appeal has been filed.
The cancellation petition of the respondent no.3 filed subsequent to the cancellation petition of the appellant was disposed of, by virtue of the said order without considering the request forcross-examination filed by the appellant and keeping its cancellation petition pending. The right of the appellants has been vitally affected. In the counter-statement filed by the respondent no.3, to the cancellation application of the appellants in Paragraph 3, the respondent no.3 has averred that the shape, configuration and surface pattern of the registered article was new and novel ‘at the time of registration and that design no.197811 was new and original and had not been disclosed to the public in India or in any other country by publication in tangible form or by use or in other way prior to the filing date.
An affidavit was filed by Professor Vijay Parshuram Bapat, wherein he has stated that he was approached by the predecessor-in-
interest of the respondent no.3 in March 1995 for consultation and development of a lab model for manufacturing hexagon shape mosquito repellent on cut paper. He had reproduced the samples and submitted a report on the project in 1996 to the predecessor-in- interest of the respondent no.3. He had also sought to give a certificate that the report had been submitted to the client and its copy was available in the records of the Industrial Design Centre, IIT, Bombay. In the said affidavit a fact was asserted by Professor Bapat and to prove the said fact it was necessary for the appellant to cross- examine him. There has not only been denial of cross-examination but no reason has been assigned for rejecting the objection of the appellant as the appellant had filed a counter-statement and thereby raised objection. The affidavit of October 2005 does not evidence prior publication. In the certificate issued also no time of prior publication before registration finds mention. Therefore, the finding of the Controller in this respect is bad and the relationship between the designer and its client imports an element of confidentiality only.
Reliance is placed on (1995) Supplementary 3 SCC 212, (2005) 10 SCC 634 and (2008) 3 SCC 279. The requests made to the respondent no.2 by letters dated 18th May 2006, 9th April 2007, 4th
July 2007, 18th September 2007, 7th November 2007, 4th March 2008 and 7th March 2008 to dispose of the interim application was not considered and has also not been dealt with in the order dated 28th
March 2008. This has rendered the said order bad and liable to be set aside.
Counsel for the respondent no.3 submits that by its application of August 2005 it sought for cancellation of registration design nos.184135, 184136 and 184137 of the appellant. No evidence was filed with the counter-statement or objection. It was only in the application for cancellation filed by the appellants that evidence had been filed. Although by letter dated 18th March, 2006 an opportunity to cross-examine three witnesses, namely, Mr. Balchandra S. Virkar, Ms. Neelam Pandit and Professor Vijay Parshuram Bapat was sought, no reason or ground was given for seeking cross-examination of the said witnesses.
It will appear from the letters dated 9th April 2007, 12th April 2007, 4th July 2007, 18th September 2007 and 20th November 2007 that the only object of the appellant in writing the said letters was to delay and defer the hearing. No request for cross-examination was made in any of the said letters. On 19th December, 2007 the interlocutory application was heard and dismissed on 13th February, 2008 and the main petition was fixed for hearing on 5th March, 2008. The interim application filed by the appellant before the Delhi High Court for transfer and stay of proceedings before the Controller was dismissed on 5th March, 2008. The appellant by its letter dated 4th
March, 2008 sought an adjournment of the hearing on 5th March,
2008. On 5th March, 2008 as the Delhi High Court dismissed the interim application and the prayer for stay of proceeding, the Controller proceeded with the hearing on 5th March, 2008, however an opportunity was given to the appellants to file its written submission by 10th March, 2008. The appellants by letter of 7th March, 2008 requested the Controller to consider its request to cross-examine the affirmants of the affidavits. Therefore, the prayer for cross- examination is not genuine and the only object of the appellants is to delay the hearing of the respondent no.3’s cancellation petition and not to proceed with its own cancellation petition. This will appear from the letters, wherein requests were made to hear the transfer petition. On 13th February, 2008 the interlocutory application for transfer was dismissed and the hearing of the main petition was fixed on 5th
March, 2008. In the meantime on 26th February, 2008 an application was filed before the Delhi High Court for stay of proceeding before the Controller. By the said application the appellants also sought transfer of the proceedings before the High Court and on 4th March, 2008 a letter was issued to the respondent no.2 to adjourn the hearing. The Delhi High Court in its order dated 5th March, 2008 refused to stay the proceeding before the Controller or to withdraw the proceeding to itself for the reason set out in the said order. On 13th February, 2008 no request was made for cross-examination although according to the appellants the interim application was pending even thereafter, no further request was made and the initial request made stood deferred. Before the Delhi High Court too all that the appellant sought was, stay
of proceeding before the Controller and transfer. The issue of cross- examination was not pursued, no representation was also made after the order was passed dismissing the interlocutory application. There has been non-compliance with Rule 29(5) and no right has been exercised in respect of Rule 29(7) and 29(9) of the Designs Rules, 2001.
Section 37 empowers viva-voce evidence to be taken in addition to affidavit evidence only in case the Controller thinks it right to do so. Therefore, it is not within the domain of the appellant to seek forcross-examination. No case has also been made out for cross- examination and a party seeking cross-examination must file an application which in the instant case has not been done. The case cited by the appellants are distinguishable as in (1995) Supp. 3 SCC 212 oral evidence had been given but cross-examination had been denied. (2005) 10 SCC 634 is a case of concession and the request tocross-examine was in reply to a show cause but is not a case of consent. In (2008) 3 SCC 279 the document was relied on and it is only for such purpose that cross-examination was allowed. In the instant case no such situation has arisen to warrant cross- examination.
In AID 1 of 2010 there has been prior publication as will appear from the affidavit of Neelam Pandit. Between March 1995 and August
1995, research was undertaken, publication was made in October 1996 whereas the appellant’s design has been registered in 2000.
The appellant in its counter-statement has dealt with the affidavits of Ms. Neelam Pandit, Professor V.P. Bapat and B.S. Virkar. Virkar has relied on the affidavit of Ms. N. Pandit. Except for bare denials nothing of substance has been averred. Paragraph 3.39 to Paragraph 3.96 of Russel Clarke 6th Edition which deals with “prior publication” be considered. As held in 45 RPC 26, perversity in the order of the Controller must be evident and if not evident the order should not be interfered with.
In reply counsel for the appellants submits that the points urged by counsel for the respondent no.3 is that the appellants sought an adjournment as it is not interested in appearing before the Controller and is interested only in pursuing parallel proceedings. The letters have not been read in proper perspective as by the letter dated 18thMay, 2006 cross-examination was sought and a request was made to fix a date. In the letter dated 9th April, 2007 also there was a reference to the letter dated 18th May, 2006. In the letter of 4th July, 2007 also a request was made for reply to the letters dated 9th April, 2007 and 12thApril, 2007. The letters dated 18th September, 2007 and 7th November, 2007 have been misread. In the order under appeal the issue of request to cross-examine has not been considered. No reason has also been given for either not allowing the said request or
even any indication that the prayer had been made and rejected. On 5th March, 2008 the matter was listed for final hearing when an adjournment was sought and the parties were asked to submit written submissions. The said hearing was followed by the letter dated 7th
March, 2008. In the affidavit of Professor Vijay Parshuram Bapat it has been stated that the original affidavit would be produced at the time of hearing. The public have no access to the report of Bapat.
In the counter-statement of the respondent no.3 in paragraph 3, the respondent no.3 has categorically stated that the design has not been disclosed to the public anywhere in India prior to the date of filing, i.e., on 6th December, 2004. Prior publication is a requirement as per Russel Clarke paragraph 3.89. Access by public is not known and the date of access has also not been given. Contrary to this Bapat has given a certificate that his report was open to the public to inspect. This has been dealt with by the appellant while dealing with paragraph 6 of Neelam Pandit’s affidavit. The original affidavit of Bapat has not been produced. The drawing by IIT is also not in public domain as no date has been given. It will appear from the counter- statement filed by the respondent no.3 that it was not published before filing and the original not produced, therefore, the order passed by the Controller on 28th March, 2008 is liable to be set aside as this aspect was not considered by the Controller.
Having considered the submission of the parties, in the cancellation application filed by the respondent no.3 an interim application was filed by the appellant for transfer of the cancellation application to the Delhi High Court as issues in the suit filed by it alleging infringement and in the cancellation application was the same. By letter dated 18th May, 2006 a request was made for cross- examination and an independant application for cancellation of the respondent no.3’s registered Trade Mark in July 2005 was also filed by the appellant.
The application for transfer of the cancellation application to the Delhi High Court was dismissed by the Controller by order dated 13th
February, 2008.
Applications for stay of proceedings pending before the Controller and for transfer of the cancellation application was also filed before the Delhi High Court by the appellant which by order dated 5th March, 2008 was dismissed. No appeal was filed from the said order and the said order has reached finality. Therefore, the issue with regard to stay of proceedings and transfer was not further pursued by the appellant.
No application for cross-examination of the persons who had affirmed the affidavits was filed. A request was made by letters alone.
The application for cancellation of the respondent no.3’s Trade Mark was also pending.
According to the appellant several requests were made by it to the Controller to dispose of the application for cross-examination before hearing the main matter. The letters by which cross-examination was sought is mentioned hereinbelow:-
“Lall Lahiri & Salhotra
ADVOCATES PATENT AND TRADE MARK ATTORNEYS
May 18, 2006
The Controller of Patents & Design
The Patent Office
CP 2, Sector – 5
Salt Lake City,
Kolkata – 700 091
Re: Reckitt Benckiser (Australia) PTY Limited Indian Design No.184135 dated 13.06.2000 in Class 12
= = = = = = = = = = = = = = = = = = = = = = = = =
………………………………….. We hereby request you to kindly grant us, the Attorneys of Proprietor of Registered Design No.184135, under Section 37 read with Section 32 of the Designs Act, 2000 an opportunity to cross- examine………………………………….
Thus we request you that a date for cross-
examination may be fixed under prior intimation to
us. Shall ever remain.
Yours faithfully,
Anuradha Salhotra
of LALL LAHIRI & SALHOTRA
(AGENT FOR REGISTERED PROPRIETOR)
LALL & SETHI ADVOCATES
April 9, 2007
Dr. D.K. Chakraborty
Asstt. Controller of Patents & Designs
The Patent Office
Baudhik Sampada Bhawan,
Kolkata – 700 091
Dear Sirs,
Sub: Registered Design No.184135 under Class 12 in the name of Reckitt Benckiser Australia Pty. Ltd.
And
Cancellation Petition filed by Godrej Sara Lee Limited
………………………………………………interlocutory
petition strikes at the very root of the issue and if decided in our favour the entire cancellation petition would get transferred to the Hon’ble Delhi High Court. Accordingly, we once again request the Learned Asst. Controller to defer the hearing on the main Petition till a decision is taken in the above IP. The same is
the position with regard to the letter dated May 18,
2006 requesting for the cross examination of the
Applicant’s witness.
……………………………………………………………….
Regards,
Chander M. Lall
LALL & SETHI ADVOCATES
March 7, 2008
The Controller of Patents & Designs
The Patent Office
Baudhik Sampada Bhawan,
Kolkata – 700 091
Dear Sirs,
Sub: Registered Design No.184135 under Class 12 in the name of Reckitt Benckiser Australia Pty Ltd.
And
Cancellation Petition filed by Godrej Sara Lee Limited
= = = = = = = = = = = = = = = = = = = = = = = =
……………………………………………that the Respondent’s request for cross examination of the witness of the Petitioner be allowed before the Learned Controller can proceed with the matter.
………………………………………….
Regards,
Shikha Sachdev
of Lall & Sethi”
The letter dated 18th May, 2006 is the first letter by which cross- examination was sought of the deponents who had affirmed theaffidavits-in-evidence. By the next letters dated 22nd May, 2006 and 21st June, 2006 the appellant called upon the Controller to take steps for hearing of its application filed prior in point of time and rightly so.
By letter dated 9th April, 2007 the appellants sought to canvas that the issue of transfer strikes at the root of the matter and the same position existed also in respect of cross-examination. The said contention of the appellant with regard to cross-examination in the said letter dated 9th April, 2007 was not correct, as the issue of cross- examination would only arise at the hearing of the main matter and as transfer application had not been disposed of the question of hearing the main matter would not arise according to the appellant. By its letter dated 4th July, 2007 all that the appellant’s advocate sought was a reply to its letter dated 9th April, 2007 and 12th April, 2007. In the letter dated 12th April, 2007 the appellant was seeking a hearing of the interlocutory petition and the interlocutory petition filed was only in respect of transfer. The said transfer petition was considered and dismissed by order dated 13th February, 2008. Except for the letters dated 18th May 2006, 9th April 2007 and 7th March 2008 the issue ofcross-examination was not raised in any other letters and all that the appellant sought was transfer and expediting the hearing of the transfer application, which was heard on 19th December, 2007 and
disposed of by order dated 13th February, 2008 and on its being disposed of, the main matter was fixed for hearing on 5th March, 2008. The request for cross-examination was made in only two letters before 5th March, 2008 and in one letter (7th March, 2008) after 5th March, 2008. Between 9th March, 2007 and 5th March, 2008 no request forcross-examination was made. On 5th March, 2008, the hearing was concluded and the appellant directed to file written submission by 10th March, 2008 it is only then that by letter dated 7th March, 2008 the said issue was once again raised.
From the aforesaid, therefore, it is evident that the said issue though raised initially in earnest was not pursued in earnest and as and when convenient to the appellant was used as a ploy to defer the hearing. It is not the allegation of the appellant that sufficient notice was not given to it. In fact, after the order dated 13th February, 2008 an application was filed on 26th February, 2008 before the Delhi High Court for stay and transfer of the cancellation petition to the Delhi High Court and just one day before hearing of the main matter on 5th
March, 2008, i.e., on 4th March, 2008 a letter was written by the appellant’s advocate to the Controller seeking an adjournment. Even in the said letter the issue of cross-examination was not raised. The said issue remained in a dormant stage even after the order dated 5th
March, 2008 was passed by the Delhi High Court. On 5th March, 2008 two things happened –
1)Delhi High Court dismissed the application filed by the appellant for stay of proceedings and for transfer; and
2)The Controller proceeded to hear the cancellation application.
The appellant’s advocate appeared belatedly at the said hearing and sought for time as the order of the Delhi High Court dated 5th
March, 2008 had been received by him that morning and he was not ready with any document to proceed with the case. The said adjournment was objected to by the advocate of the respondent no.3. The Controller continued to hear the matter and after hearing submissions of both the parties directed the parties to file written notes by 10th March, 2008, 5 p.m. The appellant’s advocate did not file a written note instead by letter dated 7th March, 2008 raised the issue of cross-examination which according to it was imperative before the Controller could proceed in the matter although the issue was not raised by him at hearing on 5th March, 2008.
On an analysis of the various letters written by the appellant to the Controller, it appears that by letter dated 9th April, 2007 transfer was sought and by and by a request for cross-examination was also made. According to the appellants as stated in the said letter transfer would go to the root of the issue and although it was stated that the said same position existed with regard to cross-examination the question ofcross-examination would only arise after the issue of transfer had been considered and decided. In the letter of 12th April, 2007 the
appellants sought for the interlocutory proceedings to be heard and on record before the Controller there was only one interlocutory proceeding, i.e., of transfer. No application for cross-examination was ever filed, no such prayer was ever made before the Delhi High Court or any other forum. It is only by letters dated 18th May 2006, 9th April 2007 and 7th March 2008 that the request was made and revived. By letter dated 4th March, 2008 an adjournment simpliciter was sought and by the letter of 18th September, 2007 and 7th November, 2007 requests to expedite the matter was made. The first time that cross- examination was sought was in May, 2006 thereafter, on 9th April 2007 but on 9th April, 2007 the issue of cross-examination was not the primary request and on 7th March, 2008 the issue was invoked to avoid filing of written submission by 10th March, 2008.
From the aforesaid, therefore, it can be concluded that the appellant was not pursuing the issue of cross-examination very seriously and this also is true as inspite of filing applications before the Delhi High Court no prayer was ever made to cross-examine or direct the Controller to allow the appellant to cross-examine the affirmants of the affidavits, namely, Balchandra S. Virkar, Neelam Pandit and Professor Vijay Parshuram Bapat.
Section 32 of the 2000 Act empowers the Controller with the powers of the Civil Court while Section 37 of the 2000 Act is covered
by Chapter VIII which deals, inter alia with evidence and reads as follow:-
“Evidence before the Controller – Subject to any rules made under Section 44, in any proceeding under this Act before the Controller, the evidence shall be given by affidavit in the absence of directions by the Controller to the contrary; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by affidavit or may allow any party to be cross-examined on the contents of his affidavit.”
Therefore, the Controller is to take evidence by affidavit and in case he is desirous of taking evidence viva-voce in addition or in lieu will be entitled to allow any party to be cross-examined. In the instant case except for the request no application was filed and in the order under appeal it has been recorded that the petitioner for cancellation, namely, the appellant by its letter dated 4th December, 2006 submitted that it did not wish to produce any evidence further as the registered proprietor’s evidence was time barred and by the said letter requested for fixing a date of hearing. Having taken the plea that the registered proprietor’s evidence was time barred, the question of the appellant seeking to cross-examine the affirmants of the affidavits is not only contrary in terms but by the letter dated 4th December, 2006 the appellant has given a go-bye to its plea to cross-examine.
Therefore, the insistence of the appellant to cross-examine is not bona fide. No written submission was also filed in spite of time given. On the date fixed for hearing the appellants sought adjournment and it cannot be said that the Controller violated principles of Natural Justice. No written submission was filed in spite of opportunity given. No submission was also made at hearing by the appellant with regard to prior publication.
The appellant’s submission with regard to prior publication cannot be accepted as the said issue was considered by the adjudicating authority and conclusion reached that there had been prior publication. This finding is further supported by the affidavit of Ms. Neelam Pandit. The appellant in spite of numerous opportunity given chose not to argue the case on merit nor did it file its written Note of Arguments.
For all the said reasons the order dated 28th March, 2008 cannot be faulted or interfered with and the appeals fail. Accordingly, AID 1 of 2010, AID 2 of 2010 and AID 3 of 2010 stand dismissed.
Let a certified copy of this order, if applied for, be given to the parties on priority basis.
(PATHERYA, J.)
