Can design registered in India be cancelled on ground that it was registered abroad? Calcutta High Court answers

The Calcutta High Court recently made pertinent observations on whether a design registered in India under the Designs Act of 2000 could be cancelled on the ground that a similar design has already been registered in a foreign country [Paresh Ajitkumar Kapoor vs Controller of Patents and Designs]..Single-judge Justice Ravi Krishan Kapur said that the mere registration of a design abroad may not always be a ground to cancel the registration of a design in India.The Court observed the primary ground for the cancellation of a registered design is "prior publication", that is, if the design has been described in a publication before the filing of the application for design registration. Such prior publication takes away the novelty of a design, making it ineligible to be granted protection again under intellectual property law. The Court emphasised that such prior publication should be properly proved to make it a ground for the cancellation of a registered design though the mere registration of a design abroad may not necessarily be a ground to cancel the registration of a design in India. "Prior publication cannot be concluded on the basis of guesswork, surmises and conjectures. Registration in a foreign country per se is not a ground for cancellation of a design registered in India. An application under 12 section 19(1)(b) of the Act, for cancellation of registration of a design in India can only be justified on the ground of prior publication," the Court held in its May 24 judgment..The Court was dealing with an appeal challenging an order passed by the Deputy Controller of Patents and Design on April 12, 2023.By this order, the Deputy Controller had cancelled a design registration earlier granted in India to the appellant for a certain kind of air-cooler.The Deputy Controller had passed the order after a Chinese company, Ningbo Chenwu Humidifying Equipment Factory, claimed that it had registered similar designs for the air cooler in China before the Indian design registration was granted.The High Court, however, set aside the Deputy Controller's decision on finding that the authority did not properly deal with the question of whether there was prior publication. The Court found that the Deputy Controller only relied on a Certificate of Registration and a snapshot from the China National Intellectual Property Authority (CNIPA) website to hold that there was prior publication. "(The Deputy Controller) failed to consider the authenticity or admissibility of such evidence and verify the same. Merely showing such designs on a foreign unverified website does not amount to prior publication," the Court observed.There must cogent evidence to show publication of the design had been made available to the public, the Court emphasised."The impugned order has been passed without any consideration of this aspect of the matter ... The power to cancel a registered designed is a draconian power and ought not to be exercised in a casual and cavalier manner," the Court added..The Chinese company had claimed that it filed its design in 2009 and that its design was registered in 2010. However, the Court found that the company could not properly prove that its design had been published in 2010. In order, to constitute prior publication, an image or design must be published in such a way that a person possessing ordinary knowledge of the subject is able to apply the design or see the design in their mind, the Court explained. The prior publication must be in a tangible form and if the publication is in the form of photographs, it must be explicitly illustrated so that there is sufficient clarity that would depict the application of the design, the Court added."If the illustrations or the dimensions, shapes and patterns are not clear from the pictures provided as evidence, the same does not destroy novelty. The six view pictures brought on record were unverified and legally inadmissible. No proof had been furnished to show that the translations provided by the Chinese company were true or correct," the Court added.The Court, therefore, set aside the Deputy Controller's decision and remanded the dispute back to the same authority for a fresh decision. .Senior Advocates Jishnu Saha and Harshit Tolia assisted by advocates Shuvasish Sengupta, Balarko Sen, Suvradal Choudhury and Biren Panchal appeared for the appellant.Senior Advocate Ranjan Bachawat assisted by advocates D Ghosh, V Dutta, S Dasgupta and D Chadha represented the Chinese company..[Read Judgment]