Design Rectification

Overview:

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 

Grounds of cancellation- section 19:

  1. The said design or similar design is already registered in India
  2. There is a lack of originality or novelty
  3. The design has already been published in India or any other country before the dating of registration
  4. It does not qualify for registration as per the Act.

It does not fall under the definition of design as per section 2(d).

Important Information:

  1. Any person must file a petition for cancellation of design as per the prescribed rules under Rule 29
  2. The said petition has to be filed under Form 8 along with the required documents and prescribed fees.

Documents required: 

  • 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.

Procedure for cancellation of design:

  1. 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.
  2. After receiving the cancellation petition, if the registered proprietor desires to contest opposition, then he /she has to 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.
  3. 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. No additional evidence can be introduced unless directed by the Controller. 
  4. 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.
  5. 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.
  6. After hearing the parties, the Controller shall conclude the petition and issue a speaking order in the same regard. The Controller shall notify its decision to both parties and be published in the Official Journal and required amendments if any has to be done in the register.