The Designs Act allows any interested person to file a request for cancellation of a registered design.
Who Can File a Request for Cancellation?
Any person who is not the owner of the registered design is entitled to request the registrar to cancel the registration of a registered design.
Time Limit for Filing a Petition for Cancellation
There is no time limit for filing a request for cancellation of a registered design.
Grounds for Cancellation
Section 48(A) of the Designs Act lists three main grounds for cancellation:
(1) The design was not entitled for protection as a registered design;
(2) The application for registration of the design was not filed by the owner of the design;
(3) Two or more separate applications were filed for registration of the same design or a design differentiated
Only by unsubstantial details, and the design was not registered under the name of the earlier lawful applicant.
The Burden of Proof
Once a design has been registered, it automatically enjoys the presumption of validity and registrability. Therefore, in design cancellation proceedings, the burden of proof is on the party requesting the designs’ cancellation.
The Process of Cancellation
Once an application for cancellation of a design is filed (stating the grounds for cancellation), a “mini-trial” before the design registrar is initiated:
1. Filing a Counter-Statement – The design’s owner is required within a month to file a counter statement of claims specifying the reasons for rejecting the application for cancellation and maintaining the validity of the design.
2. Filing of Evidence – A month later, the claimant is required to file evidence to support its claims, and a month thereafter, these shall be responded with evidence on behalf of the design owner. The supporting evidence can be of any admissible type, including affidavits, consumer testimonies, surveys, expert opinions, advertisements, and so forth.
3. Hearing – After both parties have filed their evidence, a court proceeding before the design registrar will then be scheduled, during which each party will be allowed to cross-examine the other party’s witnesses.
4. Summation – At the end of the hearing, each party is required to present their written summations.
5. Decision – The Registrar will decide whether or not to accept the cancellation request.
6. Appeal – Any of the parties may file an appeal to the District Court within 30 days.
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