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Sakshi Sharda
| Updated: 20 May, 2020 | Category: Design Registration

Cancellation of Design Registration in India

Cancellation of Design Registration

In India, the registered proprietor of design is given exclusive rights to his/her registered Designs. One such right is the right of the Cancellation of Design Registration. The registered proprietor or any other person interested can file for a petition of Cancellation of Registration of Design on the grounds mentioned in the Design Act, 2000, read with the Design Rules, 2001. The procedure for Cancellation is also provided in the Act and the Rules regarding the Design Law of India. In the article, we will discuss the process for the Cancellation of Design Registration in India.   

What is the Cancellation of Design Registration in India?

There is no concept of a Pre-Grant Opposition in the Design law of India, like in the case of Patents law. Such a difference is based on the fact that the publication of design is done upon Registration. Publication of a Design also involves public inspection of that registered design. Hence, the Design law of India, on the lines of the Post-Grant Opposition in Patents Law, provides an opportunity for invalidating any Design only after Registration of such Design. The Registration of Design can be challenged by presenting a petition for the Cancellation of Design Registration on various grounds.         

The Registration of Design can be canceled in case if the design has been previously registered in India. Publication of a Design in India or any other country prior to the date of Registration can also lead to the Cancellation of Design Registration in India. Section 19 (1) (b) of the Design Act, 2000, can be divided into two parts, where one-part states “published in India,” and the other part states “published in any other country.”

The petition for Cancellation of Design Registration in India can be filed on certain grounds, as mentioned in Section 19 of the Design Act, 2000. The grounds for Cancellation of Design Registration in India are as follows:

Cancellation of Design Registration

What are the essential requirements for the Cancellation of Design Registration in India?

The essential requirements for Cancellation of Design Registration in India are as follows:

  • A petition for Cancellation of Design Registration in India can be filed by any person interested;
  • The petition for Cancellation of registered Design should be filed in Form 8 as prescribed under Rule 29 of the Design Rules, 2001;
  • The petition for Cancellation of Design Registration in India can be filed at any of the Patent Offices;
  • In case a petition is filed in an office other than Kolkata Patent Office, such a petition will be transmitted to Kolkata Patent Office;
  • The fact that the Cancellation of Registration of Design is permitted should be published in the Official Journal;
  • The petition for Cancellation of Design should be accompanied by a statement setting out facts on which the petition for Cancellation of Registration of Design is filed with the Controller;
  • The petition should also be accompanied with certain evidences supporting the facts setting out the reason for filing the petition of Cancellation of Registration of Design with the Controller;  
  • The statement should also state the nature of the applicant’s interest to determine whether the petitioner is an interested person or not;
  • If the petition for Cancellation of Registration of Design is made by any person who is not the registered proprietor of the design, a copy of the petition for Cancellation of Registration of Design along with the statement should be transmitted by the Controller to the registered proprietor of the design.
  • The Controller should decide on the petition and any Opposition, and should notify his/her decision to the parties.

Read our article:Design Registration and Protection in India

What is the process for the Cancellation of Design Registration in India?

The process for Cancellation of Design Registration in India is as follows:

  • Any person interested can file for a petition of Cancellation of Registration of Design with the Controller in Form 8 as per Rule 29 of the Design Rules, 2001[1];
  • The petition should be filed with evidence supporting the facts for filing the petition with the Controller;  
  • After the petition for Cancellation of Registration of Design is received by the Controller, he/she is required to send that petition to the registered proprietor of the design as soon as possible. The petition should be accompanied by the statement and evidences to support the petition filed for Cancellation of Registration of Design in India;  
  • The petition, when received by the registered proprietor, if he/she desires to file for Opposition, shall file for the same. The Opposition of petition should be filed at the Patent Office of Kolkata. The Opposition should be accompanied by the counter statement and evidences supporting the grounds on which the Opposition is set out by the registered proprietor. The registered proprietor should file the Opposition within one month from the date on which the Controller communicated an imitation to the registered proprietor;
  • The registered proprietor is required to deliver a copy of such Opposition to the petitioner also;
  • The time period of one month is extendable to a maximum of 3 months. For such an extension in the time period the registered proprietor is required to file a petition for extension along with the required fees; 
  • The petitioner should file his/her statement of reply and evidence by way of affidavits after receipt of any counter statement and evidence from the registered proprietor. Such a reply statement and evidences by the petitioner should be filed to the Controller within one month from the date of delivery of the counter statement and evidence of the registered proprietor. The reply evidence of the petitioner should be strictly confined to matters in the evidence of the registered proprietor of the design;
  • The time period of one month for filing of reply statement and evidences is extendable. The time period can be extended by a maximum of 3 months. The time period can be extended by filing a petition for extension along with the required fee;
  • At the same time, the petitioner is required to deliver a copy of his/her reply statement and evidence to the registered proprietor;
  • Except with the direction or leave of the Controller, no further evidence should be delivered by either party;
  • Where a document is in a language other than English and such a document is referred to in any statement or evidence, an attested translation of such a document in duplicate in English should be furnished to the Controller;
  • When the filing of statement and evidences by the petitioner and registered proprietor is completed, the Controller is required to give at least 10 days’ notice for hearing to both the parties.
  • On receipt of the notice of hearing by the Controller, if either of the party desires to be heard, a notice of intention to attend the hearing should be filed by such a party. The notice of intention to attend the hearing should be filed in Form 20 as per Rule 29 of the Design Rules, 2001.
  • The Controller can also refuse to hear any party if in case any of the parties have not given such a notice of intention and the prescribed fee for the same.
  • If either party at the hearing intends to rely on any publication, which is not mentioned in the petition for Cancellation of Registration of Design, statement or evidences provided by the party, in such a case he/she is required to give to the other party and the Controller a notice of his/her intention to do so. The party is also required to accompany the details of such publication with the notice of intention. Such notice of intention should be given at least 5 days in advance by the party.
  • The Controller, after hearing the parties, or if neither of the party desires to be heard, then without a hearing, should decide the petition for Cancellation of Registration of Design and issue a speaking order in the same regard.
  • The Controller’s decision shall be notified to both the parties and be published in the Official Journal.
  • Subsequent entries, if any necessary, should be made in the Register of Designs by the Controller.

What is the case law related to the Cancellation of Design Registration in India?

The case law related to Cancellation of Registration of Design in India is as follows:

  • Reckitt Benckiser (India) Ltd. v. Wyeth Limited

In this case, the Delhi High Court (HC) distinguished previously registered designs outside India. For example, in the United Kingdom (UK), there are two types of design, i.e., kept secret Post Registration and those that are not kept as a secret Post Registration. The design that is not kept as a secret Post Registration is considered as Designs “published in any other country” within the meaning of Section 19 (1) (b) of the Design Act, 2000. To come to the above conclusion, the High Court relied on a combined reading of other sub-sections of Section 4 and Section 19 of the Design Act, 2000. In particular, the court relied on the provisions of Section 44 (1) and (2) of the Design Act, 2000, that deals with claiming priority from an application for Registration of Design, which is filed in a convention country, and the same Design Registration application is filed in India within 6 months from the priority date, in such a case Section 4 (b) of the Design Act, 2000, will be applied which has a broader scope, and make such a Design to be available in the public domain as compared to Section 19 (1) (b) of the Design Act, 2000, which deals with mere publication of design. 

The High Court also answered whether there is any legislative intent for not including a previously registered Designs outside India as a ground for Cancellation of Design Registration in Section 19 (1) (a) of the Design Act 2000. The court held that the legislature could never have intended that any Design in India, which is a complete copy of the design registered abroad, cannot be canceled, although the design is registered abroad and is available in public domain Post Registration outside.  

What are the advantages of Design Registration in India?

The advantage of Design Registration in India are as follows:

  • An article will be attractive and appealing only when it has a unique design. A unique Design adds to the commercial value of the product and also increases the market value.
  • An appealing and attractive Design will sell the articles faster than the other articles having no design. The marketability gets a good build-up with a Unique Design.
  • The Registration of Design gives the registered owner the exclusive rights to sue or file a case against any third party who is doing any unauthorizing copying or imitation of the design.
  • Registration of Design also helps in the identification of the design to be exclusive to a particular registered owner, and the consumers or customers can at once do identification of such a Design.
  • The owner of a registered Design is also permitted to exploit his/her design in many ways.
  • The owner of a registered Design is allowed to use his/her design to protect the market share; even the owner is eligible to sell the design for a sum of money.

Conclusion

The Design Act, 2000, and Design Rules, 2001, provide for the provisions related to Cancellation of Design registration in India. The petitioner is required to prove the grounds available for the Cancellation of Design Registration in India under Section 19 of the Design Act, 2000. The Controller plays an important role in allowing the Cancellation of Registration of Design in India. The procedure of the Cancellation of Design Registration in India is lengthy and time-consuming. We at Corpbiz have qualified experts to help you with the process of Cancellation of Design Registration in India. Our experts will assist and guide you with the process of Cancellation of Design Registration. Our skillful experts will ensure the timely and successful completion of your work.

Read our article:Renewal and Restoration of Design in India

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Sakshi Sharda

Sakshi Sharda has done BBALLB(HONS) and holds a strong knowledge on the matters pertaining to finance and law. From the past one year she is working as a legal advisor and in her leisure time she works on improvising her knowledge. Sakshi is spreading her knowledge by writing for Corpbiz.

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