REVOCATION OF INDUSTRIAL DESIGNS
JURISDICTION REPORT: INDIA
Manisha Singh Nair
Lex Orbis
Design registration plays a crucial role in protecting the rights of designers and promoting industrial progress by keeping industries competitive in this age of rapid modernisation and globalisation. Practical utility coupled with aesthetic appeal influences the consumer in choosing a particular article of merchandise. Where the practical efficiency of any two given articles is the same, the visual appearance plays the decisive role. Te object of design law is to ensure that the originator or creator of a profitable and aesthetic design is not deprived of his reward as a result of unauthorised application of his design by others. Tis is achieved by protecting the novel designs that are applied to particular articles manufactured and marketed commercially.
When can the design be revoked?
Design law does not provide for opposition to the registration of designs. Hence, in order to protect the rights of bona fide designers, certain provisions for cancelling and altering the registered design have been incorporated in the Designs Act. Aſter registering the design, any person can make a petition for its cancellation to the controller on the grounds that it:
• Has been previously registered in India • Has been published in India or elsewhere, prior to the date of registration • Is not new or original • Is not registrable under the Designs Act • Is not a design within the meaning of Section 2(d) of the act.
For the purposes of registration, the first-to-file rule is applicable and, consequently, if a newly registered design is the same as an earlier registered design in India, it will become a ground for cancellation. Again, prior publication occurs only if the design is either made available to the public or if it is shown or disclosed to some person without any obligation to keep it secret, whether in India or elsewhere.
Te third and most important ground for cancellation is ‘lack of novelty or originality’. It is not necessary that the design per se should be novel. Novelty may reside in the application of a known shape or pattern to new subject matter. Also, the whole design need not be new; it is sufficient if some part of it is new or original. Te test for determining novelty is objective: whether a customer can distinguish it from existing variants.
Te fourth ground for cancellation is that the design is not registrable under the act. A design cannot be registered if it is not new or original; if it has been disclosed to the public anywhere in India or in any other country prior to the filing date or, where applicable, the priority date of the application for registration; if it is not significantly distinguishable from known designs or combination of known designs; or it comprises or contains scandalous or obscene matter.
44 World Intellectual Property Review March/April 2010
“THE OBJECT OF DESIGN LAW IS TO ENSURE THAT THE ORIGINATOR OR CREATOR OF A PROFITABLE AND AESTHETIC DESIGN IS NOT DEPRIVED OF HIS REWARD AS A RESULT OF UNAUTHORISED APPLICATION OF HIS DESIGN BY OTHERS. THIS IS ACHIEVED BY PROTECTING THE NOVEL DESIGNS THAT ARE APPLIED TO PARTICULAR ARTICLES MANUFACTURED AND MARKETED COMMERCIALLY.’’
It is necessary that the design should be applied or capable of application to any article by any industrial process or means. Further, the article must have an existence independent of the applied design. So, the design as applied to an article should not be an integral part of the article. Te cardinal principle of design law is that the features of a design are judged solely by the eye. Terefore, the design must appear and should be visible on the finished article. Any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in a closed state. However, when any design suggests any mode or principle of construction or mechanical action, a suitable disclaimer is required on its representation, provided there are other registrable features in the design.
Finally, the design should not include any trademark or property mark or artistic works as defined under the Trade Marks Act, 1999; Indian Penal Code, 1860; and Copyright Act, 1957, respectively. Tus, by using the provisions of revocation contained in the Designs Act, 2000, a bona fide designer can get relief against fraudulent registration of his designs.
manisha@lexorbis.com
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76