CANCELLATION OF REGISTRATION OF DESIGN

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This article is written by Divyanshi Gupta of 2^nd Semester of Lloyd School of Law, Greater Noida

Abstract

In India, the design was cancelled. Section 19 of the Indian Design Act 2000 allows for the cancellation of a registered design if one or more of the following conditions are met: the design has previously been registered in India, it has been published in India or in any other country prior to the date of registration, the design is not new or original, the design is not registrable under this Design Act, and it is not a design as defined in Section 2(d).

Keywords

Design law, Section 19 of Design act, 2000, Sec2(d) of Design Act, 2000, Infringement

Introduction

In India registered candidate have many rights and one such right is cancellation of registration of design. Anyone can file a petition if his rights being infringed. The design one can see at any place or market is very important to protect from being copied by others. The design is anything, it can be a logo, name, symbol etc. The government made an Act for the design if it does not fulfill its criteria than it will be cancelled under The Section 19 of the Design Act, 2000. The Act is only made to protect the people if their design is copied. Previously there were another Act that is “The Patents and Designs Act 1911” it was passed by British parliament but later on the Indian parliament passed a new legislation in 2000 for better protection of industrial design. This Act was implemented from 2001.

Meaning of design[1]

The definition of design is come under Section 2(d) of Design Act, 2000. “Design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (5) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code, 1860 or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The names and addresses of registered design owners, notifications of assignments and transmissions, and other information may be entered in a book called the register of designs that is kept at the Patent Office. This register may be maintained entirely or in part on a computer, floppies, or diskettes, subject to any safeguards that may be

required.

Any reference to an entry in the register in this Act that refers to an entry that is maintained entirely or partially on computer floppies and diskettes under subsection (1) will be understood to relate to an entry that is maintained in this manner.

The register of designs that were in existence at the time this Act was enacted must be included in and be a component of the register of designs created in accordance with this Act.

Any information that is directed to be recorded in the register of designs or authorised by this Act must be prima facie evidence thereof.

Section 19 of Design Act, 2000

The 1911 Design Act was in charge of this Act. The Design Act of 2000 was passed in order to bring the Design Act into compliance with international law. The Design Act of 2000 so currently governs the laws pertaining to design. It is a statute that amends and codifies the existing provisions governing the protection of designs. The Gazette of India published it, and on May 12, 2000, it became operative. This Act, which is of a statutory nature, is a full code in and of itself. Throughout all of India, it is present. The main objective of this Act[2] is to protect the design. The Design Act, 2000 can also amend the law related to protection of designs. Its purpose is to protect the design from being copied by others.

The main goal of design registration is to ensure that the creator, originator, or artisan of any design does not lose his benefit for inventing that design because others copy it to their goods or products. An industrial design aids in attracting a customer’s attention and boosting the commercial value of a product. As a result, it aids in the expansion of its market. Many rivals use bad methods to decrease competition in rival groups by abusing designs to their benefit. As a result, laws are required to protect the interests of the owners of these designs.

Procedure for cancellation of registered design
Anyone who wishes to revoke the Registration may do so by submitting a petition to the Controller in Form 9 in accordance with Rule 29 of the Design Rules, 2007.
The petition for cancellation must be accompanied by proof establishing the facts for filing a petition with the Controller.
Once the petition is received by the Controller, he or she is expected to send it to the registered owner as soon as possible. The petition must be accompanied

by a statement and proofs to support the petition filed for cancellation of a design registration in India.

If the registered owner wants to file an opposition to the petition after receiving it, he or she must do so. A petition for opposition must be filed with the Patent Office of Kolkata. The registered owner’s opposition must be supported by a counter-statement and documentation confirming the grounds on which the opposition is based. The owner shall file an opposition within one month of the date on which the Controller communicated a replication to the registered owner.
The registered owner is required to give a copy of the petitioner’s opposition to the petition.
The one-month period is extendable to a maximum of three months. For such an extension of time, the registered owner must file a petition for expansion together with the requisite costs.
After receiving any proof and counter-statement from the registered owner, the petitioner must provide a statement of reply and proof by affidavit. Such a reply statement and proofs by the petitioner must be filed with the Controller within one month of the delivery date of the counter statement and proof of the registered owner. The petitioner’s reply evidence must be severely limited to things in the proof of the registered design owner.
The one-month deadline for filing reply statements and proofs can be extended. The time period can be extended to three months. The time limit can be extended by filing a petition for extension along with the required payments.
The petitioner is expected to send a copy of their reply statement and proof to the registered owner; aside from the Controller’s directive, no other evidence is provided to the registered owner.
Where a document is in a language other than English and is referred to in any counter-statement or proof, an attested translation of such a document in replica in English must be supplied to the Controller.
The Controller may also refuse to hear any party if that party has not provided such notice of intention and the required fee.
If either party at the hearing intends to rely on any publication that is not mentioned in the petitions for the cancellation of Design Registration, statement or proofs offered by the party, he or she must notify the other party and the Controller of their intention to do so. The party must also accompany the specifics of such publication with the intention’s notification. The parties should provide this warning at least five days in advance.
The decision of the Controller will be communicated to both parties and published in the Official Journal.
The Controller must make the following entries in the Designs Register, if any are required.

Related case laws
Reckitt Benckiser (India) Ltd. v. Wyeth Limited

The Delhi High Court (HC) distinguished previously registered designs outside of India in this case. In the United Kingdom (UK), for example, there are two categories of designs: those that are kept secret after registration and those that are not kept hidden after registration. Post-registration designs that are not kept secret are considered designs “published in any other country” under Section 19 (1) (b) of the Design Act, 2000. The High Court relied on a combined reading of various sub-sections of Section 4 and Section 19 of the Design Act, 2000 to reach the following decision. In particular, the court relied on Section 44 (1) and (2) of the Design Act, 2000, which deal with claiming priority from an application for Registration of Design that 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 available in the public domain. The High Court further addressed whether there is any legislative intent in Section 19 (1) (a) of the Design Act 2000 to exclude previously registered designs outside India as a reason for cancellation of design registration. The court ruled that the legislature could never have intended that any design registered in India that is a full copy of a design registered elsewhere might be cancelled, even if the design is registered elsewhere and is available in the public domain post-registration.

Conclusion

This particular IP domain has three stakeholders: the owner(s), the consumers, and the economy. The owner is guaranteed a fair return on investment by protecting his/her registered Industrial Design or can create cash by assigning or licencing the design. Such protection stimulates creativity and safeguards customers from being mislead by all of the brands present in the world, all while contributing to the expansion of economic activity in nations. By combating design piracy and actively renewing the registration, the owner should be watchful and assert its vested statutory and common law rights over the registered Industrial Designs. Finally, an applicant should ideally choose applicable multi-class protection for its Industrial Design registration to avoid any future litigation of any kind. As has been observed, the majority of Design infringement lawsuits involve multinational companies; nonetheless, this IP domain provides a reasonable method for protecting one’s industrial property, thereby encouraging small and medium-sized businesses as well.