Cancellation of registered Design IPR notes UNIT IV

IPR NOTES cancellation of registered designs unit 4 ipu notes lecture notes

1. Cancellation of registered industrial designs under section 19 of Designs Act, 2000 Ramandeep Kaur

2. Introduction to Designs Act, 2000 The Designs Act, 2000 governs the registration and protection of industrial designs in India. Industrial design refers to the aesthetic aspect of an article, including its shape, configuration, pattern, or ornamentation.

3. Definition of Industrial Design   • Industrial design enhances the visual appearance of a product and distinguishes it from others in the market. • It can include designs for everyday items such as appliances, gadgets, clothing, and packaging.

4. Design Rules, 2001 Cancellation 29. Cancellation of registration of designs under section 19. – (1) A petition to the Controller for the cancellation of the registration of a design shall be made in duplicate in Form - 8 ( https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_48_1/Form_8.pdf ) and shall be accompanied by a statement in duplicate setting out the nature of the applicant’s interest and the facts upon which he bases his application. (2) If the petition for the cancellation of the registration of a design is made by person who is not the registered proprietor, a copy of the petition along with the statement shall be transmitted by the Controller to the registered proprietor. (3) If the registered proprietor intends to oppose the application he shall within a time to be specified by the Controller, leave at the office a counter statement setting out the grounds on which he intends to oppose the application and shall, within the same time, deliver to the applicant a copy of the counter-statement. (4) The applicant may, after delivery to him of the copy of the registered proprietor’s counterstatement, leave at the office, evidence by way of affidavits in support of his case and shall also deliver to the registered proprietor a copy thereof. (5) The registered proprietor may, after delivery to him of the applicant’s evidence, leave at the office evidence by way of affidavits in support of his case and shall also deliver to the applicant a copy thereof.

5. (6) The applicant may, after delivery to him of a copy of the registered proprietor’s evidence, leave at the Office evidence in reply by way of affidavits and shall also deliver to the registered proprietor a copy of such evidence. (7) No further statement of evidence shall be left by either party except by leave of or on requisition by the Controller. (8) Where a document is in a language other than English and is referred to in any statement or evidence filed in connection with an petition under section 19 or opposition thereto, an attested translation thereof in English shall be furnished in duplicate. (9) The time allowed for filling the counter-statement or for leaving evidence shall ordinarily be one month which may be extended only by a special order of the Controller given on a petition made by party seeking extension of time: Provided that the extension so granted shall in no case exceed three months in aggregate. (10)On completion of the filing of the statement and the evidence referred to sub-rules (3) to (8) or at such other time as he may decide, the Controller shall appoint a hearing of the petition for cancellation and shall give the parties not less than ten days’ notice of such hearing. (11)If either party desires to be heard, he shall give to the Controller a notice in Form 20 of his intention to attend the hearing. (12)If, at the hearing, either party intends to refer to any publication, he shall give to the Controller and to the other party not less than five days’ notice of such intention, together with the details of the publication to which he intends to refer. (13)After hearing the party or parties desirous of being heard or without a hearing, if neither party desires to be heard or attends the hearing, the Controller shall decide on the petition and the opposition, if any, and notify his decision to the parties.

6. Importance of Registering Industrial Designs   Registration provides exclusive rights to the owner, preventing others from using or reproducing the design without permission. It helps protect investments in innovation and creativity, encouraging further design development.

7. Overview of Section 19: Cancellation of Registered Designs   • Section 19 of the Designs Act, 2000, deals with the cancellation of registered designs. • It allows for the removal of a registered design from the register under certain circumstances.  

8. Section 19 in The Designs Act, 2000 19. Cancellation of registration.— (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:— (a) that the design has been previously registered in India; or (b) that it has been published in India or in any other country prior to the date of registration; or (c) that the design is not a new or original design ; or (d) that the design is not registerable under this Act; or (e) that it is not a design as defined under clause (d) of section 2. (2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.

9. Grounds for Cancellation   Lack of novelty or originality: If the design is not new or lacks originality compared to existing designs. Prior publication or public use: If the design was disclosed to the public before the application for registration. Lack of registrability: If the design does not meet the criteria for registrability, such as being functional or contrary to public order. Fraud or false representation: If the registration was obtained through deception or misrepresentation. Non-compliance with formal requirements: If there are procedural irregularities in the registration process.

10. Procedure for Filing a Cancellation Petition   The Controller of Designs has jurisdiction to hear cancellation petitions. The petitioner must serve a notice to the registered proprietor of the design. The registered proprietor has the opportunity to respond and defend the registration. The Controller conducts a hearing and decides on the cancellation petition based on evidence and arguments presented.  

11. Consequences of Cancellation   If the registration is cancelled, the design is removed from the register, and the exclusive rights associated with it cease. Others may then use or reproduce the design without infringing on any rights.

12. Case Studies or Examples   In Apple Inc. v .  Samsung Electronics Co, 580  U.S .  53 the defendant copied the plaintiff’s design and utility patent for iPhone. Samsung even filed a countersuit but the jury awarded zero damages and gave a verdict that Samsung was responsible for diluting the reputation of Apple and was held liable for infringing its trade dress. Another case involving a giant in the field of Mobile Industry, was Blackberry Ltd.  v.  Typo Prods LLC.  Document 157 (N.D. Cal. 2015) where the defendant was accused of infringing the very famous QWERTY keyboard design patent of the plaintiff. The lawsuit ended in a settlement between the parties. It is very interesting to note that all the five grounds given under Section 19 of the 2000 act can be adopted as defence in design infringement matters. This was held in the case of Steel bird  v.  Gambhir , CS(OS)--2407/2013 where the defendant based its arguments on the plaintiff’s helmet to have a purely functional feature, therefore rendering it to not be a subject matter of Industrial Design. 

13. Conclusion: Importance of Adhering to the Designs Act   It is crucial for designers and businesses to adhere to the requirements of the Designs Act to maintain the validity of their registered designs. Proper registration and protection of industrial designs contribute to innovation, creativity, and competitiveness in the market.

14. Questions and Discussion   •