CANCELLATION OF REGISTRATION OF DESIGN Cancellation of Registration

CANCELLATION OF REGISTRATION OF DESIGN

Cancellation of Registration Outlines of Presentation • Sec 19 (1) (a) to (e) and (2) • Rule 29 (1) to (13) – Procedure for filing cancellation application/petition • Rule 43 • Concerning Case Laws (UK & Indian Cases)

Section 19 – Grounds of Cancellation • (I) Design previously has been registered • (II) Design has been published – In India – In any other country Prior to the date of registration

Section 19 – Grounds of Cancellation Cont… • (III) Design not registerable under this act (Sec 4) A design shall not be registered if the design: • (a) is not new or original; original or • (b) has been disclosed to the public any where 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

Sec -19 cont… • (IV) Design not new or original – Sec 2(g) “Original”, in relation to a design, means originating from the author of such design and including the cases which though old in themselves yet are new in their application, • (V) Design is not a design as defined under Sec 2(d)

Rule 29 – Petition/Application • (1) Application for cancellation shall be made in form 8 (with 1500 Rs. Fee) and shall be accompanied by a statement of (a) setting out the nature of applicant’s interest and (b) facts upon which he bases his application. Both should be in duplicate.

Rule 29 – Counter-Statement • (2) If petition is made by other than registered proprietor then controller shall transmit a copy of petition along with statement to registered proprietor. • (3) If registered proprietor intends to continue then he shall deliver a counterstatement to design office and a copy to applicant, within specified time period by controller.

Rule 29 – Evidences by Applicant • (4) Applicant (after getting the copy of counter statement given by registered proprietor) may submit the evidence by way of affidavits in support of his case to the design office and to registered proprietor (a copy) thereof.

Rule 29 – Evidences Proprietor by Registered • (5) Registered Proprietor may submit the evidences to the design office (after getting the applicant’s evidences) by the way of affidavits in support of his case and shall also deliver to the applicant a copy thereof.

Rule 29 – Evidences in reply by Applicants • (6) After getting the copy of registered proprietor’s evidence, the applicant may leave the evidences in reply at the office by the way of affidavits and shall also deliver a copy of such evidences to the registered proprietor.

Rule 29 – Further statement by leave or on demand only • No further statement of evidence shall be submit by either party except by leave of or on requisition/demand by the controller

Rule 29 – Translation of document in English • (8) If any filed document (referred to in any statement or evidence) is in other than English language, an attested translation thereof in English shall be furnished/provided in duplicate to the office.

Rule 29 – Time Duration For Filling Counter Statement or for Leaving Evidence • (9) Time for filling the counter-statement or for leaving evidences, is one month. • This given time duration can be extended by special order of the controller. • For this purpose a petition shall be made by any party which is seeking extension of time. • The granted extension cannot exceed three months (in aggregate) in any case.

Rule 29 – Hearing and Notice for Hearing for Parties • (10) After completion of the filing of the statements and evidences, controller shall appoint a hearing of the petition for cancellation and • issue the notice to the parties which shall not be less than 10 days.

Rule 29 – Notice of Intention to Attend Hearings • (11) If either party desires to be heard, he shall give a notice (in form 20) of his intention to attend the hearing (with the 500 Rs. Fee), to the controller.

Rule 29 – Reference of Publication in Hearing • (12) In hearing, any party intends to refer any publication, he shall give the notice of such intention (not less than five days’) to the controller and another party, with the detail of the publication which he intends to refer.

Rule 29 – Decision of Controller • (13) After hearing (of desirous party/parties to being heard) or • Without a hearing, – if neither party desires to be heard or – attend the hearing, • The controller shall decide on the petition and the opposition, and • Notify his decision to the parties

Appeal Against Controller’s Order • Controller’s Orders Appealable before High Court. • Controller may refer such Petition at any time to High Court. • High Court shall decide any Petition so referred

Rule 43 – Award of Cost by Controller • (In all proceedings before the controller) the controller may award such cost as he considers reasonable, (having regard to all circumstances of the case) • Provided that the amount of costs awarded in respect of any matters set forth in the IV Schedule to the rules (shall not exceed the amount therein specified.

Other Design Laws • New or Original: Sec 43(1) of Design Act 1911 • Similar provision exists under Registered Design Act 1949 of UK ( and under predecessors of this act from which design act 1911 had been adopted)

Caron International's Design Application [1981] R. P. C. 179 • Abstract: The applicants sought to register a design for a package of rug yarn, in columnar shape inside a transparent plastic envelope. The Registrar rejected the application on the ground that the design was not "new or original. " The applicants appealed. • Summary: Held, dismissing the appeal, that in the field of design the court must have regard to what has been done in the past in that field.

Rosedale Associated Manufacturers v Airfix Products [1957] R. P. C. 239 • The appellants sued the respondents for unjustified threats in connection with the respondents' registered design for a toy bucket, while the respondents admitted threats but counterclaimed for infringement.

Cont… • On an appeal from the decision of Lloyd. Jacob J. [1956] R. P. C. 360, that the respondents' design was valid and had been infringed by the appellants, the Court of Appeal held, dismissing the appeal, that a prior written specification did not constitute an anticipation of the respondents' registered design, which was not therefore lacking in novelty and was valid.

Metco Polymers Pvt. Ltd. Vs Madhu Inflatables Pvt. MANU/TN/1130/2005 • Suit was filed by the appellants under Sec 22 of the Designs Act 2000 (Act) for grant of permanent injunction restraining the defendants from infringing upon the Registered Designs (of 2 nd plaintiff) in respect of the manufacture and sale of the articles, namely, Air Water Beds, Water Beds and Squared Water Seats/Water Cushion. • During pendency of the suit, the appellants also filed an application for grant of interim injunction. According to the plaintiffs, the 2 nd plaintiff obtained design registration for the aforesaid articles on 27 th November, 2002. The 2 nd plaintiff, who was a technocrat involved in the inflatable business for about 20 years, invented these articles with novelty, originality and specialty in shape and configuration, which were subsequently registered under the Designs Act.

Cont… • The basic allegation was that the articles were specially designed to suit the requirement of the medical profession and the respondents, who were originally the advertising agent, manufactured similar products adopting similar designs. The case of the respondents was that they were manufacturing waterbeds from 1997, much before the appellants registered the design, and that since their products were advertised much earlier, it could be taken that they had made prior publication of the Designs, which were registered by the plaintiffs subsequently on 27 th November, 2002. • The Single Judge held that even though the plaintiffs' products and the defendants' products were almost similar in design and since under Section 4 of the Designs Act there is a prohibition of registration of a design which is not new or original or has been disclosed to public or used prior to the filing of an application for registration and since such a defence was permissible to be taken, under Section 22 read with 19 of the Act, no injunction can be issued, therefore, the registration was liable to be cancelled. The said order was under challenge in the appeal. Finally appeal dismissed.

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