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This article describe the process and the laws behind the cancellation of a Registered Design. It is only after the Registration of the design; that the option to oppose the same is allowed.
Under the Design Law in India, there is no concept of the pre-grant opposition. A design is published on its registration after the public examination of that design. Thus, the Design Law allows competitors to contest any design registration only after the design is registered; through a petition for the cancellation of Design Registration on various grounds.
Section 19 of the Designs Act, 2000 deals with the cancellation of the registration of a design. This section can be divided into two different parts according to jurisdiction. This division is based on whether the design is “Published in India” or is “Publication in any other Nation”.
A petitioner can submit a petition for cancellation at any time after the registration of the design; to the Controller on specific grounds. The primary ground to initiate such a petition is that the design has been previously registered; or published in India or any other country. Other supplementary grounds are that the design is not original; the design cannot be registered under the Act, or that it is not a design as defined under Section 2.
Here the registered owner has the right to appeal the order of the Controller before the High Court. The Controller also can refer such a petition to the High Court, themselves.
A petition for the cancellation of a design can be filed by an entity with individual interest. Such petition must include a statement with the details on which the petition is sought. The statement must include the nature of the petitioner’s interest as prescribed under Rule 29 of the Design Rules.
If the cancellation of registration is allowed it is published in the official journal; and the Controller decides on any opposition. Where such a petition is filed in an office other than the Kolkata Patent Office; it is forwarded to the same.
An individual intending to cancel the Registration can file a petition of the cancellation of Design Registration with the Controller; in Form 9 accordingly to Rule 29 of the Design Rules, 2007. The petition for the cancellation must be filed with proof supporting the facts for filing a petition with the Controller.
Once the petition is received, the Controller sends the petition, with its supporting statements and proofs to the registered owner. If the owner wishes to file an opposition petition, the same is filed in the Patent Office of Kolkata.
filing of an Opposition
The opposition is filed within a month from the date on which the Controller delivered the petition to the owner; and the latter is mandated to transmit a copy of the opposition to the petitioner. The period of 1 month can be extended to 3 months.
The petitioner is required to submit their statement of reply through an affidavit; after receiving a counter-statement from the registered owner.
Such a reply and its supporting documents by the petitioner must be filed within a month from the delivery date of the counter statement; and must be limited to matters alleged in the supporting documents provided by the registered design owner.
The duration for filing a reply statement is also extendable to 3 months, however, the same can be extended by filing a petition for an extension.
Once these steps are completed, the Controller is providing a ten-day notice for hearing to both parties. If either party wishes to be heard, a notice of intention is filed by such party through Form 20 of Rule 29 of the Design Rules, 2001.
The Controller can decline to hear any party if the party does not give such notice of intention. If either party at the hearing uses any publication, which is not cited in the initial cancellation petitions, they must give the other party and the Controller notice of their intention to do so.
The notice must include the details of such publication and must be given 5 days in advance. The Controller finally must decide the petition for the cancellation and issue a speaking order. This order is conveyed to both the parties and is published in the Official Journal.
Under Form 8 wherein the petitioner seeks the cancellation of the registration of a design; they must pay the prescribed fee depending on their nature. If the claimant is a natural person, the fee payable is INR 1500. Where the applicant is other than a natural person the fee payable for a small entity is INR 3000; and for others except a small entity is INR 6000.
The provisions of the cancellation of a design in India are provided in both the Design Rules, 2001; and the Design Act, 2000. The petitioner is required to prove the grounds cited for such cancellation under Section 19 of the Act; and the discretion of determining the petition rests with the Controller. They alone have the authority to allow for the cancellation of Registration in India.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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