“In an ideal world, all good patents ought to be granted and all bad ones should be refused. How that is to be achieved given the ever-rising flood of applications and the ever-increasing importance of Chinese prior art, I have no real idea” [“IP and Other Things”-Robin Jacob at page 239]

It is a settled principle of law that a registered Design can be cancelled on the ground that the same has been published in India or any other country before the date of registration. Calcutta High Court examined this issue in an Appeal from the order of the Controller of Patents & Designs. Whether publication of a design by way of Registration in a foreign country per se amounts to publication and therefore, ground for cancellation of a design registered in India, Paresh Ajitkumar Kapoor Vs. Controller of Patents and Designs and Ors. The Appeal was filed against the order dated 12th April 2023 passed by the Deputy Controller of Patents & Designs (Controller), cancelling the registered design of the Appellant for an ‘Air Cooler’, with effect from 27th December 2010.

Brief Facts

1. The Appellant obtained registration of the design of an Air Cooler under number 233559 dated 27th December 2010 under Class 23-04 (Ventilation and Air-Conditioned Equipment).
2. In 2019, a Chinese Company, Ningbo Chenwu Humidifying Equipment Factory filed a cancellation petition against the Appellant’s registered design on the ground that the Chinese company had obtained registration of a similar design in China bearing No. ZL200930131277.8 and therefore are the prior publishers of the same.
3. After hearing the arguments of both parties and considering the evidence led by them, the Controller vide order dated 30 September 2019, dismissed the cancellation petition on the ground that the Chinese company failed to establish the prior publication of the impugned design and therefore the Appellants design was original and novel.
4. Respondent No. 3 is a competitor of the Appellant and is engaged in the manufacturing and sale of similar products i.e., Air Coolers. Respondent No. 3, in March 2019, obtained registration for designs of Air Coolers bearing registration no. 314930-001 and 314930-002 with effect from 05th February 2019.
5. The Appellant filed a design infringement suit against Respondent No. 3 before the Rajasthan High Court which passed an injunction order dated 28th November 2022, thereby restraining Respondent No. 3 from infringing the registered design of the Appellant.
6. Respondent No. 3, on 04th May 2021, filed a cancellation petition against the Appellant’s registered design on the ground that the same was incapable of registration considering the prior publication of the design in China.
7. The Deputy Controller of the patents Vide the impugned order dated 12th April 2023 allowed the cancellation petition on the ground that the overall features of shape and configuration of the Appellant’s design are the same and similarly arranged as the prior published design of the Chinese company.

Submissions by Appellant

• The Controller solely relied on the registered design of the Chinese company and China National Intellectual Property (CNIPA) website and failed to consider that the same issue was decided in favour of the Appellant vide order dated 30 September 2019.
• Respondent No. 3 did not file legally admissible evidence to conclude prior publication of the Appellant’s design.
• The Controller ought not to have reopened/ reviewed the foreign registration which has already been rejected by the same authority.

Submissions by Respondent No. 3

• The Controller considered all material facts and analysed the CNIPA website thereby concluding that the design registered by the Chinese company had a prior publication date, application, and filing date.
• The order dated 30th September 2019 is not res judicata since the same was not passed on merits and the proceedings were between different parties.
• The Appellant’s design is liable to be cancelled since there had been prior publication in a tangible form before the Appellant applied for registration of the design.

Court’s decision

The Court held that the “Registration in a foreign country per se is not a ground for cancellation of a design registered in India” and thus, allowed the present appeal and remanded the cancellation petition back to the Controller of Patents & Designs (Controller). The Court further observed:

1. The Design Act does not define publication and distinguishes between prior registration in India and abroad.
2. According to Section 19 (1)(a), registration of design in a foreign country is not a ground for cancellation of design. Instead, the publication of the design being made available to the public in India is a ground for cancellation.
3. Registration of the Chinese design on 06th January 2010 does not conclude that the same was published on the said date.
4. The Controller relied on the photo of the Air Cooler of the patent certificate to be sufficient to constitute publication. However, the said photo cannot be considered as the application of design on an article but instead be a graphic model.
5. “To constitute prior publication, an image or design must be published in such a way that a person possessing ordinary knowledge of the subject is able to apply the design, to the article or see the design to the article or to see the design to the eye of the mind. The publication must be in a tangible form of the design applied to the same article.”
6. “Even publication in the form of photographs must be explicitly illustrated so that there is sufficient clarity in such a way which could depict the application of the design on the article. If the illustrations or the dimensions, shapes, and patterns are not clear from the pictures provided as evidence, the same does not destroy novelty.”
7. The Controller failed to consider the admissibility of the registration of Chinese design but instead held the Chinese design registration would amount to publication.
8. “Merely showing such designs on a foreign unverified website does not amount to prior publication.” Respondent No. 2 should have verified the authenticity of the documents challenged by the Appellant.
9. The impugned order failed to consider that there must be sufficient evidence to substantiate the publication of the design to the public.
10. Since the order dated 30th September 2019 had been passed relying on the same Chinese design with similar issues having been framed, the Controller ought to have considered the same in the impugned order.

Our comments

The case highlights the difference between registration of a design and its publication to the public and further emphasizes The publication must be in a tangible form of the design applied to the same article” and a foreign design registration per se would not amount to publication unless a person possessing ordinary knowledge of the subject is able to apply the design, to the article or see the design to the article or to see the design to the eye of the mind.