Design Cancellation in India

The registered owner of a design possesses unrestricted rights to their registered Designs in India. The right to cancel a design registration is one of these rights. The Act and Rules relating to the Design Law of India clearly detail the cancellation procedure.

One may file a petition for the Cancellation of Design Registration  on numerous grounds. If the design has already been registered in India, one may cancel registration of the design. The Design Act of 2000, Section 19 (1) (b), is separated into two portions, one of which states “published in India” and the other “published in any other country.”The following are the conditions for cancelling a design registration:

• When the design isn’t one-of-a-kind or original.
•  It is already available in India or elsewhere before the registration date.
• The design is not eligible for the Design Act of 2000’s Design Registration.
• As defined in Section 2(d) of the Design Act of 2000, it does not classify as a design.

 

 

PROCEDURE

1. To revoke a Design Registration, one may do so by submitting a petition in Form 9 to the Controller in accordance with Rule 29 of the Design Rules, 2007.

2. The petition for cancellation must be filed with proof of the facts for filing a petition with the Controller.

3. As soon as the Controller receives the petition, he or she must promptly forward it to the registered owner. The petition for the cancellation of design registration in India must be accompanied by a statement and proof.

4. If the registered owner wants to file an opposition to the petition, he or she must do so after receiving the petition. A petitioner’s opposition must file such an application with the Kolkata Patent Office. The registered owner must support their opposition with a counter statement and documentation confirming the grounds on which the opposition is based. The owner must file the opposition within one month of receiving a replication from the Controller.

5. The registered owner must provide a copy of the petitioner’s opposition.

6. The registered owner must deliver a copy of the petitioner’s opposition to the petitioner.

7. One may extend their one-month period to a maximum of three months. The registered owner must file a petition for expansion along with the requisite costs to obtain such a time extension.

8. The petitioner must file their statement of reply and proof by affidavit on receiving any proof and counter-statement from the registered owner. Within one month of the delivery date of the counter statement and proof of the registered owner, the petitioner must file a reply statement and evidence with the Controller. The petitioner must restrict their reply evidence to the items in the registered design owner’s proof.

9. One may extend their one-month deadline for filing the reply statement and documentation. It is possible to increase the time limit to three months. They may file a petition for a extension to extend the time limit; they must pay the fees for the same’

10. The petitioner must supply the registered owner with a copy of their reply statement and proof.

11. There was no other evidence presented to the registered owner aside from the Controller’s direction.

12. When a document is written in other than English the Controller must receive an authentic translation of the document in English.

13. The Controller provides both parties ten days’ notice of a hearing after providing statements and evidence.

14. The Controller provides the parties with hearing notice. A party files a notice of intent to focus on the hearing. They do so only when they want a hearing. The concerned party files the notice of intention to focus on the hearing as per Form 20 Rule 29 of the Design Rules 2001. 

15. The Controller may also refuse to hear any party if that party has failed to provide the required notice of intention and fee.

16. If a party intends to rely on any publication not specified in the petitions for the cancellation of Design Registration, statement, or proofs given by the party at the hearing, he or she must notify the opposing party and the Controller of their intention to do so. The party must also escort the information of such publication together with the notice of intention.

17. The Controller resolves the petition for the cancellation of Design Registration. He resolves the petition it without hearing if no party wishes to be heard. 

18. He communicates his judgement to both parties and published in the Official Journal.

19. The Controller makes the following entries in the Designs Register as per the requirement.