CANCELLATION OF DESIGNS

[Mr. M. GOVINDARAJAN]

Design

The term ‘design’ is defined under Section 2(d) of Designs Act, 2000 (‘Act’ for short) as only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any-

• trade mark as defined in section 2(1)(v) of the Trade and Merchandise Marks Act, 1958; or
• property mark as defined in section 479 of the Indian Penal Code; or
•  any artistic work as defined in section 2(c)  of the Copyright Act, 1957.

Cancellation of registration

Section 19 of the Act provides the procedure of cancellation of designs.  The said section provides that a person interested, may present a petition for the cancellation of a design at any time after its registration, to the Controller on any of the following grounds-

• that the design has been previously registered in India; or
• that it has been published in India or in any other country prior to the date of registration; or
• that the design is not a new or original design; or
• that the design is not registrable under this Act; or
• that it is not a design as defined.

Any person, aggrieved against the order of cancellation of design by the Controller of Designs, may file an appeal to the High Court.  The Controller may at any time refer such petition to the High Court for its decision on the said petition.

Section 51A of the Indian Patents and Designs Act, 1911 (before the enactment of Designs Act, 2000) provides the procedure for cancellation of design.  The said section provides that any person interest may present petition for the cancellation of the registration of a design at any time after the registration of the design, to the High Court on any of the following grounds-

• that the design has been previously registered in India; or
• that it has been published in India prior to the date of registration; or
• that the design is not a new or original design; or
• that the design is not a new or original design,

within one year from the date of registration.  The petition for cancellation may be filed to the Controller on the following grounds-

• that the design has been previously registered in India; or
• that it has been published in India prior to the date of registration.

An appeal shall lie from the order of the Controller to the High Court.  The Controller may at any time refer any such petition to the High Court for its decision.

In MR. R. ARUN, MR. M. DINESH AND M/S. ESPOIRS SOLUTIONS VERSUS M/S. INTEGRAY HEALTH CARE PRIVATE LIMITED, MR. VIJAYAKUMAR IRUSAPPAN, MR. SABRINATHAN IRUSAPPAN AND DEPUTY CONTROLLER OF PATENTS AND DESIGNS, CHENNAI - 2024 (10) TMI 317 - MADRAS HIGH COURT, the original petition has been filed to cancel the registration of the first respondent. The High Court considered the question as to the maintainability of the petition before the High Court.  The petitioner submitted the following before the High Court-

• The Designs Act is not a complete Code itself.
• There is no express ouster of jurisdiction of the High Court.
• Originally the Designs Office was at Kolkata and later another office was opened at Chennai.
• When both the petitioner and the respondent are in Chennai, it would be improper and unfair to direct the petitioner to go to Kolkata for seeking cancellation of the Design.

The following are submitted by the side of Government to the High Court-

• The High Court is the appellate forum as against the order passed by the Controller under Section 19 of the Act.
• The High Court cannot act as a Controller and decide a petition for cancellation of registration of Design.
• Therefore, the writ petition is not maintainable before the High Court.

The High Court considered the submissions of the parties to the petition.  The High Court analyzed the provisions of Section 19 of the Act and Section 51A of the erstwhile Act on Design.  The High Court observed that it was open to any interested person to seek cancellation of registration of design after the registration of design by approaching the High Court under Section 51A (1)(i) and (ii).  An appeal may be filed before the High Court against the order of Controller cancelling the registration.  The High Court further observed that Section 19 of the Act expressly mandates such person seeking cancellation of registration to approach the Controller.  Section 19(2) provides an appeal to the High Court against the order of Controller.

The High Court held that when an appeal is made available to the aggrieved party by approaching the High Court, it cannot be said that the High Court can exercise concurrent jurisdiction along with the Controller.  The High Court did not find any merit on the argument of the petitioner that the ouster has to be express and in the absence of an express ouster, it has to be implied that the jurisdiction of the High Court is available to be exercised by the High Court.  The phraseology employed in Section 19 of the Act is clearly taking away the jurisdiction of the High Court for cancellation of registration of the Design. 

The High Court held that the original petition filed by the petitioner is not maintainable and the petitioner is to approach the Controller of Designs.  The petitioner is given liberty to approach the Controller within 60 days from the date of receipt of the order and the Controller is to decide the case on merits and in accordance with law after hearing all the parties concerned.