Can a design registered in India be canceled on the ground that it was registered abroad? Responses from the Calcutta High Court

In an important judgment, the Calcutta High Court addressed the controversial question of whether a design registered in India can be canceled on the ground that it was previously registered abroad. The case, Paresh Ajitkumar Kapoor v. Controller of Patents, Designs and Ors. (AID/5/2023), was chaired by the Hon’ble Justice Ravi Krishan Kapurwho delivered the judgment on May 24, 2024.

Background of the case

The appellant, Paresh Ajitkumar Kapoor, is engaged in the design, manufacture, sale and export of industrial air coolers. Kapoor’s design for an air cooler, registered under model number 233559, was challenged by a Chinese company, Ningbo Chenwu Humidifying Equipment Factory, which claimed that his design, registered in China under number ZL200930131277.8, was prior art. The Chinese company had previously filed a request to cancel Kapoor’s design in 2019, but its request was rejected due to insufficient evidence of an earlier publication.

Subsequently, a business rival of Kapoor, Kalpesh Manubhai Ramolia (Respondent No. 3), filed another application for cancellation on similar grounds, which was allowed by the Deputy Controller of Patents and Designs on April 12, 2023 Kapoor appealed this decision to the Calcutta High Court.

Legal issues involved

The main legal issues in this case were:

1. Pre-publication: Whether the design registered in China constituted prior publication which would invalidate Kapoor’s design under Indian law.

2. Novelty and originality: Whether Kapoor’s design was new or original, as required by the Designs Act, 2000.

3. Admissibility of evidence: The validity of the evidence presented, including on the website of the China National Intellectual Property Administration (CNIPA).

Court decision

Justice Ravi Krishan Kapur carefully analyzed the issues and delivered a detailed judgment. The court vacated the deputy comptroller’s order and remanded the case for further disposition. The main observations of the judgment include:

1. Upon pre-publication:

– The court emphasized that mere registration of a design in a foreign country does not automatically amount to prior publication under Indian law. The design must be published in a tangible form accessible to the public.

– “Simply showing such models on an unverified foreign website does not constitute prior publication.”

2. On novelty and originality:

– The court reiterated that for a design to be considered new or original, it must not have been disclosed to the public anywhere in the world before the date of filing of the application in India.

– The court found that the Deputy Comptroller had not adequately considered whether the Chinese design had in fact been published in a way that would destroy the novelty of Kapoor’s design.

3. On the admissibility of evidence:

– The court noted that evidence from the CNIPA website had not been verified and lacked proper translation, making it legally inadmissible.

– “No evidence had been provided to demonstrate that the translations provided by respondent no. 3 were true or correct.”

Important observations

Justice Kapur made several important observations in the judgment:

– “The power to cancel a registered design is a draconian power and should not be exercised in a casual and cavalier manner.”

– “Prior publication cannot be concluded on the basis of conjectures, suppositions and conjectures.”

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Parties and representation

– Caller: Paresh Ajitkumar Kapoor

– Represented by Mr. Jishnu Saha, Senior Advocate, along with Mr. Harshit Tolia, Mr. Shuvasish Sengupta, Mr. Balarko Sen, Mr. Suvradal Choudhury and Mr. Biren Panchal.

– Respondent No. 3: Kalpesh Manubhai Ramolia

– Represented by Mr. Ranjan Bachawat, Senior Advocate, along with MD Ghosh, MV Dutta, MS Dasgupta and MD Chadha.