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Cancellation of registered design – Is prior registration abroad a valid ground?

By Jayaram Sekaran        

Introduction        

Like any other Intellectual Property Right, industrial design registration protects  the rights of the proprietor in his ‘registered design’. In general, an industrial design right is awarded for the aesthetic appeal of an article, which is not purely functional in nature [end note 1]. According to Section 2 (d) of the Designs Act, 2000 (hereinafter the ‘Act’), ‘design’ is defined as features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article by any industrial process or means. This definition is similar to the definition of design in the UK. Section 1 (2) of the UK Registered Designs Act, 1949 defines ‘design’ as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.        

Registration of Industrial Designs

As in the case of patents, protection of industrial designs is territorial. Registration is mandatory to seek protection in any jurisdiction. Registration of industrial designs has several benefits attached to it. Registration protects industrial designs from being copied and falsely imitated. Many stakeholders are under the false notion that a separate protection to aesthetic features of an article is not necessary in view of a parallel protection offered to the industrial drawings under the Copyright Act. However, according to the provisions of Section 15 (2) of the Copyright Act, copyright in any design which is capable of being registered under the Designs Act, but which has not been so registered under the Designs Act, shall cease as soon as the article to which the design has been applied has been reproduced more than fifty times by an industrial process. Hence, registration of design becomes all the more important.          

In addition to meeting the basic requirements of being judged solely by the eye, a design has to meet certain other requirements for being registered. A design should be new or original [end note 2], should not be disclosed to the public anywhere in India or in any other country by (i) publication in tangible form, (ii) use, or (iii) in any other way prior to the filing or the priority date of the application [end note 3], should be distinguishable from known designs or combination of known designs [end note 4], and should not include any scandalous or obscene matter [end note 5].        

Cancellation of registration            

There is no concept of pre-grant opposition in the design law like in the case of patents [end note 6]. This difference is based on the fact that the design is published only upon registration [end note 7]. Publication of design also involves public inspection of the registered design. Hence, the design law, on the lines of the post-grant opposition in patents, provides an opportunity for invalidating a design only after its registration. The registration of a design can be challenged by presenting a petition for cancellation of registration of the design on several grounds [end note 8].          

Registration can be cancelled if the design has been previously registered in India  [end note 9]. Publication of the design in India, or in any other country prior to the date of registration can also lead to cancellation of registered design [end note 10]. Section 19 (1) (b) of the Act can be separated into two parts, where one part refers to “published in India”, and the other part refers to “published in any other country”. The words “published in any other country” have been the subject matter of controversy.        

Case analysis            

The decision of the Delhi High Court in Reckitt Benckiser (India) Ltd. v. Wyeth Limited [end note 11] may be of interest. The division bench referred the matter to be examined by a larger bench in view of disagreement with the stand taken by it in the matter of Dabur India Ltd. v. Amit Jain [end note 12]. In Dabur case, the court concurred with the Calcutta High Court decision in Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs [2006 (33) PTC 434 (Cal)] and concluded that prior registration of similar article in the U.S. cannot be considered as “published in any other country”. On the contrary, the division bench of the Delhi High Court in Reckitt Benckiser (supra) preferred to differ. In Reckitt the court distinguished previously registered designs outside India as, for example in the UK, designs that are kept secret post registration and those that are not kept secret post registration, and considered those that are not kept secret post registration as designs “published in any other country” within the meaning of Section 19 (1) (b) of the Act. To come to this conclusion, the court relied on a combined reading of other sub-sections of Section 19 and Section 4. In particular, it relied on the provisions of Section 44 (1) and (2) that deal with claiming priority from an application filed in a convention country if the design application in India is filed within six months from the priority date, and Section 4 (b) which is broader in scope, available in public domain as compared to Section 19 (1) (b), mere publication.          

The court also answered the question whether there is any legislative intention for not including previously registered designs outside India as a ground for cancellation of registration in Section 19 (1) (a) of the Act. It held that the legislature could never have intended that a design in India, which is a complete copy of the design registered abroad, cannot be cancelled although the design is registered abroad and available in public domain post its registration.        

Conclusion            

The current position of law in respect of considering previous registration of design outside India as a valid ground of cancellation under the provisions of Section 19 of the Act, and as a defence against infringement under the provisions of Section 22 (3) of the Act is not yet decided. Under the present scenario, applicants aspiring to file design application in India by taking priority from a previously filed foreign application may comply with the provisions of Section 44 of the Act and file within six months from the priority date to avoid cancellation of registration.

End notes:
1.      http://en.wikipedia.org/wiki/Industrial_design_right
2.      Section 4 (a) of the Act
3.      Section 4 (b) of the Act
4.      Section 4 (c) of the Act
5.      Section 4 (d) of the Act
6.      Section 25 (1) of the Patents Act, 1970
7.      Section 7 of the Act
8.      Section 19 of the Act
9.      Section 19 (1) (a) of the Act
10.  Section 19 (1) (b) of the Act
11.  FAO (OS) No. 458/2009, 8 October 2010 (Del HC).
12.  FAO (OS) No. 293/2007, 3 December 2008 (Del HC).

[The author is a Principal Associate in the IPR Division, Lakshmikumaran & Sridharan, New Delhi]
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