Design examination is light, and a registration proves less than it appears to. The Act lets any person interested petition for cancellation at any time after registration, on grounds that go to whether the design should ever have been registered — and the same grounds are available as a defence the moment the proprietor sues. Cancellation is how weak registrations are tested, and the commonest way they fail.
Quick reference
| Who | Any person interested — a competitor, a defendant, a trade body |
| When | Any time after registration, for as long as it is in force |
| Where | A petition to the Controller of Designs |
| Grounds | Previously registered in India; published in India or abroad before the date of registration; not new or original; not registrable; not a design at all |
| Winning evidence | Dated proof the design was public before filing — often the proprietor’s own catalogue, website or exhibition |
| Appeal | To the High Court |
The grounds
A registration can be cancelled where the design:
- Has been previously registered in India — the same design, registered earlier, by anyone.
- Has been published in India or in any other country prior to the date of registration — the design was made available to the public, anywhere, before the filing date or priority date.
- Is not a new or original design.
- Is not registrable under the Act — it falls within one of the exclusions, for example it is dictated by function, is a trademark, or is not significantly distinguishable from known designs.
- Is not a design within the Act’s definition at all — a mode of construction, a mechanical device, an artistic work.
Grounds two and three do most of the work. India requires worldwide novelty and allows no grace period, so a design that the proprietor itself showed, sold or advertised before filing is cancellable, however new it was when it was designed. Petitioners look first at the proprietor’s own history.
Evidence
Cancellation is decided on documents. What persuades the Controller is dated, verifiable evidence that the design, or one not significantly different, was public before the relevant date:
- earlier registrations, Indian or foreign, with their dates
- catalogues, brochures and price lists with print dates or dated distribution
- archived web pages from a recognised archive service, with capture dates
- trade-fair records, exhibitor listings and dated photographs
- invoices and shipping records showing sales of the article
- published patents and design registrations showing the same shape
The comparison is visual and as a whole — through the eye of the customer likely to buy the article — and not a search for differences of detail. A registration survives where the prior design leaves a distinctly different impression; it falls where the differences are ones only the proprietor would notice.
Procedure
The petition is filed on the prescribed form with the fee — ₹1,500 at the reduced rate, ₹6,000 at the standard rate — with a statement of the grounds and the evidence. The Controller serves it on the proprietor, who files a counter-statement and evidence; the petitioner may reply. A hearing follows, and the Controller decides in writing, cancelling the registration or dismissing the petition. The Controller can also, where the registration is upheld only in part, direct amendment of the register.
The proceeding is not fast, but it is far cheaper than a suit, and it is heard by an office that examines designs every day.
Appeal
Either side may appeal the Controller’s decision to the High Court. The High Court hears it on the record and can substitute its own decision.
The same grounds as a defence
Every ground of cancellation is available as a defence in a suit for piracy. A defendant sued on a registered design pleads invalidity, and if the defendant’s challenge to validity is genuine, the suit is transferred to the High Court, because only the High Court can decide the issue in that setting. In practice most design suits are fought on validity as much as on copying, and a proprietor considering enforcement should audit its own registration first: the launch date against the filing date, the earlier products in the range, the foreign filings and their dates.
Before petitioning
Two questions. Is the design actually in the way — will cancelling it free your product, or is there a trademark or copyright behind it that survives? And what does the petition disclose — filing it identifies you to the proprietor as a person interested, and invites the suit you may have been trying to avoid. Where a design is plainly invalid, the petition is usually still the right move; where it is arguable, a defensive posture and a prepared invalidity file may serve better until the proprietor acts.
Frequently asked questions
Who can apply to cancel a registered design in India? Any person interested — typically a competitor, a party accused of piracy, or anyone whose trade is affected by the registration. The petition is made to the Controller of Designs at any time after registration.
What are the grounds for cancelling a design? That the design was previously registered in India; that it was published in India or elsewhere before the date of registration; that it is not new or original; that it is not registrable under the Act; or that it is not a design as the Act defines one.
Can a design be cancelled because the owner sold the product before filing? Yes. Sale, advertising, exhibition or online listing of the article before the filing date is prior publication, and it is the commonest ground on which registrations are cancelled. India has no grace period for the applicant’s own disclosure.
How is a design cancellation petition decided? On the petition, counter-statement and evidence, after a hearing before the Controller. Either party can appeal to the High Court.
Can I challenge a design’s validity if I am sued for piracy? Yes. Every ground of cancellation is available as a defence in the suit. Where the defendant genuinely challenges validity, the suit is transferred to the High Court.
What does a design cancellation petition cost? The official fee is ₹1,500 at the reduced rate or ₹6,000 at the standard rate. Professional fees and evidence gathering are the larger cost.
Useful official resources
- IP India — designs — the petition form, fees and the register
- WIPO — Global Design Database — foreign registrations as prior art
See our related notes on what can be registered as a design and design piracy and remedies.
A competitor’s registration blocking your product, or a validity challenge to your own? Talk to us.