The opposition is done when any person thinks that the design advertised for registration is similar or a replica of their design. In case the person believes that their design is copied, they can file for the opposition. The person filing the opposition is termed as an opponent, and the person against whom the application is filed is termed as an applicant.
Unlike any other IPR, the opposition of design is a very peculiar and different concept. There are two types of design opposition in India:
- Pre-registration opposition
- Post-registration opposition or cancellation of design.
Pre-registration opposition arises when the Controller believes that the objections are adverse to the applicant or the application submitted requires some changes, modifications, or amendments. In such cases, the Controller shall communicate the statement of objections to the applicant by registered post or e-communication. There can be the following grounds of opposition recognized in this stage of opposition:
- Not appealable to the eye
- Relates to the functional element
- Any other relatable grounds
Once the statement of opposition is sent to the applicant, the applicant has to reply to the opposition within three months from the date of communication of objection, which can be extended up to six months from applying sole discretion of the Controller. The Controller could further extend six months to three months after filing Form-18 with the reason for condoning delay before the expiry of six months.
If the applicant fails to comply with the objections within the prescribed time or does not appear for the hearing as and when required, the application stands withdrawn.
After the applicant files the reply to the objection, the Controller shall examine the reply and if the applicant appears for all the hearing within the given time frame, files written submissions within the stipulated time, and complies with all the rules and requirements laid down in the Act, the Controller will register the application.
Post-registration cancellation of design: Unlike trademarks, opposition under designs is very different. Once the objections are cleared in the pre-registration stage, the design is accepted and registered. After the registration, it is notified in the patent journal.
There is no opposition of designs under the designs Act, but it is termed as cancellation of the registered design. If, after being notified in the journal, anyone wishes to object to the registration, they have to apply for cancellation of registration under Form 8 on either of the following grounds:
- The said design or similar design is already registered in India
- There is a lack of originality or novelty
- The design has already been published in India or any other country before the dating of registration
- It does not qualify for registration as per the Act.
- It does not fall under the definition of design as per section 2(d).
The following procedure has to be followed for cancellation of design:
- Any person must file a petition for cancellation of design as per the prescribed rules under Rule 29.
- The said petition has to be filed under Form 8 along with the required documents and prescribed fees.
Documents required for filing cancellation of design:
- Form 8 application
- Statement of facts on which cancellation is sought.
- Statement of facts which states that the opponent seeking cancellation is a “person interested.”
- Evidence in support of the application.
3.The said application for cancellation has to be filed either online or at any patent office. Once the Controller receives the petition of cancellation, he has to send it to the registered proprietor of the design and the documents and evidence supporting cancellation.
4.After receiving the cancellation petition, if the registered proprietor desires to contest opposition, then he /she has file written submissions along with evidence in the form of a counter-statement within one month from the date of receipt of the communication of cancellation. One copy of the reply has to be delivered to the petitioner as well.
5.The petitioner has to file his statement of reply and evidence in the form of affidavits within one month from the date of receipt of the counter-statement. This period can be extended up to 3 months by applying a condone delay with prescribed fees. The petitioner has to believe a copy of his reply to the registered proprietor of the design.
6.No additional evidence can be introduced unless directed by the Controller.
7.After the documents’ filing, Controller gives a ten-day notice period to both the parties to appear for the hearing. Upon receiving the notice, if either party wants to contest for hearing, a notice to attend the hearing must be filed by such a party under rule 29 of the design rules, 2001 in the prescribed form- 20.
8.If either party at the hearing requires to rely on any additional document or evidence not submitted earlier, he/she has to give notice in writing to the opposite party and the Controller at least five days before the date of hearing.
9.The Controller, after hearing the parties, shall conclude the petition and issue a speaking order in the same regard.
10.The Controller shall notify its decision to both the parties and be published in the Official Journal and required amendments if any has to be done in the register.
The advantage of Design Registration in India are:
- To be attractive and eye-appealing, the design of the product has to be unique and different. A unique Design increases the commercial value of the product, consequently the market value.
- An appealing and attractive Design will pull off the sale faster than other articles having no design. The marketability improves with a Unique Design.
- The registered owner has the exclusive rights to sue or file a case against any third party for unauthorized copying or imitation of the design.
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