A design registered abroad cannot be a ground for cancellation of a design registered in India under Section 19(1)(a) of the Designs Act, 2000. However, a design registered abroad may be a ground for cancellation under Section 19(1)(b) if it has been published in India or in any other country prior to the date of registration in India.

VALMIKI J. MEHTA, J

1. Reference has been made to this Full Bench, by a Division Bench of this court, vide the reference order dated 8.10.2010 in this FAO(OS), for this larger Bench to consider as to whether a Division Bench of this court in the case of Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (39) PTC 104 (Del) (DB) has correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (hereinafter referred to as ‘the Act’). The Division Bench of this court observes that it concurs with the view of learned Single Judge of Calcutta High Court in the case of Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs 2006 (33) PTC 434 (Cal.) as stated in paras 39 and 40 of the judgment, as per which the learned Single Judge of the Calcutta High Court holds that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. The reference order doubts the correctness of the ratio in the judgments in the cases of Dabur India Ltd. and Gopal Gas Works Ltd. for the reason that the said judgments are stated to have overlooked the provision of Section 44 of the Act which provides that a design which is registered abroad in a Paris Convention country, and to which convention India is a signatory, gets priority over an Indian registered design, provided that the person who gets the designs registered abroad in a Paris convention country, within six months of the date of the application made in the said convention country abroad, applies and gets registration in India.

2. In order to answer the reference with clarity it would be necessary first to crystallize the various issues/aspects, so that not only each of them can be approached independently, but also the inter-play and inter-relation of those issues as regards points which are common to those issues/aspects can be noticed. The issues/aspects as crystallized would be as under:-

(i) When Section 19(1) (a) of the Act provides for cancellation of a design registered in India on account of a design previously registered in India, whether the said provision has to be read literally only i.e. only a design registered in India can be basis for cancellation of a subsequent design registered in India and not a design registered abroad in a convention country or whether the provision of Section 19(1) (a) takes within its sweep and includes a previous design registered abroad in a convention country for cancellation of a design registered in India. Putting it differently, is a design previously registered abroad in a convention country a ground under Section 19(1) (a) of the Act for cancellation of a design subsequently registered in India.

(ii) If under Section 19(1)(a) a design registered in a convention country abroad is a ground for cancellation of a design registered in India, is this rule absolute or the rule falls in those circumstances where the design registered abroad is not applied to be got registered India within a period of six months of making of the application in a convention country abroad. Be it noted that the issue of design registered abroad alongwith its prior publication can be under certain circumstances a basis of cancellation of a design which is registered in India, however, that is the subject matter of Section 19(1)(b) and not 19(1)(a), because the aspect of prior publication is within the subject matter of Section 19(1)(b) as stated in the immediately following issue.

(iii) If a design registered in a convention country abroad is not a ground for cancellation of a design registered in India under Section 19(1)(a), then, whether the registration abroad entitles cancellation