IMPORTANT POINT
Prior publication must be proven with tangible evidence; foreign registration alone does not invalidate a design registered in India.

JUDGMENT :

RAVI KRISHAN KAPUR, J.

1. “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].

2. This is an appeal filed under section 19(2) of the Designs Act, 2000 read with the relevant Rules framed thereunder, directed against an order of cancellation dated 12 April 2023 passed by the Deputy Controller of Patents and Designs cancelling the registered design of the appellant bearing no. 233559 for an Air Cooler with effect from 27 December 2010.

3. The appellant is engaged in the business of design, manufacture, sale, and export of industrial air coolers since 2009-2010. The appellant is also the creator of several designs of air coolers and has made huge investments in creating a state of art research and development for both industrial and institutional air coolers.

4. The private respondent no 3 is a trade rival of the appellant, engaged in the manufacture and sale of similar types of air coolers having its operations primarily at Rajkot, Gujrat and has registered designs for ‘Air Coolers’ bearing registration nos. 314930-001 and 314930-002 dated 22 March 2019 and 18 March 2019 respectively. The respondent nos. 1 and 2 are statutory authorities.

5. Briefly, a Chinese Company known as Ningbo Chenwu Humidifying Equipment Factory had in or about 2019 filed an application seeking cancellation of the registered design of the appellant on the ground that the Chinese company had registered a similar design bearing No. ZL200930131277.8 in China and that they were the prior publishers thereof. In such proceedings, the Chinese company had also produced its registration certificate showing photographs of all six sides of their design and details thereof.

6. The respondent no 2 considered the pleadings and evidence filed by the parties and framed the following issues:

(a) Whether the petitioner is a person interested?

(b) Whether the registered design no. 233559 has been published in India or any country prior to its date of registration?

(c) Whether the design no. 233559 is new or original?

(d) Whether the said design is registrable under the Act?

By an order dated 30 September 2019, the cancellation petition filed by the Chinese company was dismissed on the ground that the they had failed to establish any case of prior publication under section 4(b) of the Act and also that the website of the Chinese company did not establish the ground of prior publication. By such order, it was also held that the design of the appellant was original and novel.

7. Thereafter, the private respondent No. 3 had applied for registration of two designs similar to that of the appellant and the same were granted bearing registration nos. 314930-001 and 314930-002 respectively with effect from 5 February 2019. In view of the fact that the registered designs of the respondent no 3 were identical to that of the appellant, the appellant was compelled to file a suit for infringement before the High Court at Rajasthan wherein an order of restraint on the design of the respondent was passed on 28 November 2022 wherein the private respondent no. 3 was restrained from infringing the registered design of the appellant and both the impugned desings stood cancelled. It is a matter of record that both the appellant and the private respondent no. 3 have been contesting proceedings before different Courts. This litigation is obviously a sequel to the acrimonious history of litigation between the two parties.

8. On 4 May 2021, the respondent filed an application under section 19 of the Act, seeking cancellation of the appellant’s registered design no. 233559 dated 23 December 2010 under class 23-04 of the design ‘AIR-COOLER’ on the ground that the same was incapable of being registered since the same had been published prior to the filing date in Chin