Page 67 - A&A Patents&Design Rewind-2016

PROOF OF PRIOR PUBLICATION- THE MOST

ESSENTIAL?petition for cancellation of registered Upon consideration of the statement of the case,
the Counter-Statement and the submissions made
design no. 252082 was filed on 12th by both the sides, the Court had the following

AFebruary 2014 under Section 19 of the
Designs Act, 2000, by T.K. Shawal Industries observations to make: -

Private Limited, the Petitioner. The said design was

registered on 5th March 2013 for the article ‘scarf’ - Both the Petitioner and Respondent are

under class 02-05 in the name of KAY CEE Exports, engaged in a similar business. Therefore,

the Respondent. the Petitioner was a person interested.

- Various scarves were submitted by the

The grounds taken by the Petitioner for cancellation Petitioner to support their case, but all

were: them differ in their visual appeal owing

1. That the design has been published in India and/ to changes in their colour and pattern.

or in any other country prior to the date of On the basis of visual appeal, the design

registration, registration under consideration cannot

2. That the design is not new or original design. be considered to be devoid of newness.

3. That the design is not registrable under the - Though Baswari, as an article of trade,

Designs Act, 2000. is known for many years, none of

4. That the design is not significantly distinguishable the submitted documents show any

from designs or combination of known design. particular design of the article except

stating that the article may be in various

The Respondent submitted a Counter Statement colours. Therefore, the impugned design

along with an evidence as well as an affidavit in cannot be said to be prior published.

support of the registration. The Respondent - Scarf samples submitted by the

submitted that the registered design consists of Petitioner did not show the date of

a surface pattern of a scarf commonly known as manufacture. Therefore, it cannot

Basrawi Arabic Square Rumaals. It was submitted be ascertained if they were sold or

by the Respondent that the Petitioner is not an placed in public domain prior to the

interested party for cancellation within the meaning impugned design. Print outs of results

of Section 19(1) of the Act. It was further contended obtained upon a Google search could

that the Petitioner had suppressed the fact of filing a not be considered as prior published

civil suit against the Respondent before the Hon’ble documents as the source and details

Court of Amritsar and that the Respondent had of publication are not provided in the

also served a legal notice to them. It was stated prints.

that the cancellation petition was a counter blast of

Respondent’s legal notice. The Respondent further In light of the above, the Court dismissed the

submitted that the evidence of prior publication application of the Petitioner for cancellation of

submitted by the Petitioner is not specific, clear and registered Design No. 252082.

cogent. Similarly, the claim of Petitioner that the

impugned design is not significantly distinguishable The order can be accessed at:-

from known designs or combination of designs, was https://indiankanoon.org/doc/90600172/

not supported by specific evidence.

Patents & Design | 67