Cancellation of Registration
Chapter Eighteen
Syllabus topic 1.5, "Rights conferred by registration"
Pages 66 to 69 of 683
In one line
Any person interested may ask the Controller at any time to cancel a registration, on five grounds, and every one of those grounds is also a defence to an infringement suit.
Why the law has this
There is no pre-grant opposition in design law. A trade mark or a patent application can be opposed before it is granted. A design cannot. So the only way for the trade to attack a bad registration is afterwards, and section 19 is that route.
And a defendant must be able to say the registration should never have been granted. Section 22(3) makes every section 19 ground available as a defence, so the same five grounds do double duty.
The provision itself
Section 19(1). "Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:
- (a) that the design has been previously registered in India; or
- (b) that it has been published in India or in any other country prior to the date of registration; or
- (c) that the design is not a new or original design; or
- (d) that the design is not registrable under this Act; or
- (e) that it is not a design as defined under clause (d) of section 2."
Section 19(2). "An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred."
Broken down
Who may petition: "any person interested". The phrase is not defined in the Act. In practice it means a person with a real commercial interest, typically a trader in the same class of articles, a person threatened with proceedings, or a person whose own application has been refused because of the registration. A stranger with no interest cannot petition.
When: "at any time after the registration". There is no limitation period. A registration may be attacked in its tenth year as readily as in its first.
Where: to the Controller. The petition goes to the Controller in the first instance, and he may at any time refer it to the High Court.
The five grounds, taken in turn.
(a) Previously registered in India. Somebody else got there first, on the Indian register. Note the contrast with (b): this ground is India-only, because it is about the register.
(b) Published in India or in any other country prior to the date of registration. This is the section 4(b) ground in cancellation form. Note that section 19(1)(b) says "prior to the date of registration", and by section 5(6) the date of registration is the date of the application.
Cancellation of Registration
(c) Not a new or original design. The section 4(a) ground.
(d) Not registrable under this Act. This is the sweeping-up ground and it carries the rest of section 4 into the petition, including section 4(c), not significantly distinguishable, and section 4(d), scandalous or obscene matter. It also reaches a registration made contrary to section 5(1) or section 35.
(e) Not a design as defined under section 2(d). The registration is of something that is not a design at all: a mode or principle of construction, a mere mechanical device, a trade mark, a property mark or an artistic work.
Who bears the burden
The petitioner. This is the holding of the Supreme Court in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, worked in chapter 70. The Court said in terms that the burden was on the complainant to show that the design was not original or new, and that it had not been discharged. It also held that the comparison must be of the finished articles.
And the register helps the proprietor. Section 10(4) makes the register prima facie evidence, so the petitioner starts behind.
Section 19 and section 22 together
This is the part of the module examiners return to.
Section 22(3). In any suit or other proceeding for relief under section 22(2), "every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence".
Section 22(4). Where such a ground has been availed of as a defence, "the suit or such other proceedings shall be transferred by the Court, in which the suit or such other proceeding is pending, to the High Court for decision", notwithstanding the second proviso to section 22(2), which otherwise fixes the District Judge as the lowest court.
So a defendant controls the forum. He is sued before a District Judge; he pleads want of novelty; the suit must go to the High Court. That is a real tactical fact and chapter 220 works it out.
A worked example
Suraj Ceramics registers a design for a floor tile on 8 April 2021.
Vinita, a competing tile maker, wants it removed. She is a person interested, because she trades in the same class.
What grounds does she have?
She produces a Spanish manufacturer's catalogue of 2019 showing the same tile. That is section 19(1)(b), published in any other country prior to the date of registration.
She produces an Indian registration of 2017 for a tile differing only in the size of the motif. That supports section 19(1)(a) if the design is the same, and section 19(1)(d) read with section 4(c) if it is a mere combination or trade variation.
Cancellation of Registration
She argues that the raised nodules on the tile are there only to stop slipping. That is section 19(1)(e), because a mere mechanical device is not a design under section 2(d).
What must she prove? Following Bharat Glass Tube, the burden is hers, and the catalogue must show the design as it appears in the finished article, not merely a drawing.
Suraj sues Vinita for piracy in the District Court at Nashik and Vinita pleads want of novelty. By section 22(4) the suit must be transferred to the Bombay High Court.
Suraj loses before the Controller. He appeals to the High Court under section 19(2).
What this is not
Cancellation is not rectification. Section 31(5) says expressly that nothing in the rectification section empowers the Controller to make an order cancelling a registration as provided for in section 19. Chapter 200 works the distinction.
There is no time limit. "At any time after the registration".
A stranger cannot petition. The petitioner must be a person interested.
The five grounds are exhaustive. Section 19(1) says "on any of the following grounds". A petitioner cannot invent a sixth, though ground (d) is wide.
Limits and criticism
The absence of pre-grant opposition is the standing criticism. The trade cannot object before registration and must litigate afterwards, which is slower and more expensive.
"Person interested" is undefined, and the Act gives no guidance, so the point is argued from first principles in each case.
Ground (a) is India-only while ground (b) is worldwide. That asymmetry is deliberate but it puzzles students. A foreign registration is relevant only if it amounts to a publication under ground (b); it is not itself a prior registration in India.
Quick revision
- Who: any person interested. When: at any time after registration. Where: to the Controller, who may refer the petition to the High Court.
- Five grounds: (a) previously registered in India; (b) published in India or any other country before the date of registration; (c) not new or original; (d) not registrable under the Act; (e) not a design under section 2(d).
- Burden on the petitioner, Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657; the register is prima facie evidence, section 10(4).
- Appeal to the High Court, section 19(2).
- Section 22(3): every section 19 ground is a defence to an infringement suit. Section 22(4): pleading one transfers the suit to the High Court.
- Section 31(5): rectification is not cancellation.
Cancellation of Registration
Test yourself
1. List the five grounds for cancellation. Previously registered in India; published in India or in any other country prior to the date of registration; not a new or original design; not registrable under the Act; not a design as defined in section 2(d).
2. Is there a limitation period for a cancellation petition? No. Section 19(1) allows it at any time after registration.
3. Who bears the burden of proving want of novelty, and on what authority? The petitioner. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, where the Supreme Court held the burden was on the complainant and had not been discharged.
4. A defendant sued in a District Court pleads that the design was published in a foreign catalogue. What happens to the suit? It must be transferred to the High Court for decision, under section 22(4), because a ground on which the registration may be cancelled under section 19 has been availed of as a defence.
5. Can the Controller cancel a registration in a rectification proceeding under section 31? No. Section 31(5) provides that nothing in section 31 empowers him to make an order cancelling the registration as provided for in section 19.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.