In a recent judgment in Krishna Plastic Industries Vs. Controller of Patents and Designs, the Kolkata High Court has cautioned the Controllers to give speaking orders, especially the Orders which are appealable under the Designs Act, 2000.

An application was filed at Patents and Designs Office, Kolkata for cancellation of the registered design surface pattern of a plastic seal, registered by Krishna Plastic Industries. The cancellation of registration of a design is prescribed under Section 19 of the Designs Act, 2000.

19. Cancellation of registration.—

  1. Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:—

    1. that the design has been previously registered in India; or
    2. that it has been published in India or in any other country prior to the date of registration; or
    3. that the design is not a new or original design; or
    4. that the design is not registerable under this Act; or
    5. that it is not a design as defined under clause (d) of section 2.
  2. An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.

The Controller, while not making any specific observation with regards to the originality of the design, allowed the cancellation of the said registered design. The Applicants, Krishna Plastic Industries, preferred an appeal over the said impugned Order before the Hon'ble High Court as provided under Section 19(2) of the Act.

The Hon'ble High Court observed that:

"The novelty statement endorsed in each representation sheet reads: The novelty resides in the surface pattern of a "plastic seal" as illustrated. The discussion in the impugned order reveals that the Deputy Controller has examined the shape and configuration of both the designs and only a single sentence in the impugned order refers to the surface pattern. Since the said order is appealable, it is expected that a proper reasoning should be given by the Deputy Controller to arrive at a finding that there is no such distinctive surface pattern in the impugned design. There is no discussion in the impugned order in this regard. The distinctiveness of a design is to be judged by an eye alone. The ocular impression of both the designs does not prima facie appear to be the same. However, the matter is remanded to the authority concerned to reconsider the matter afresh taking into consideration that the novelty is claimed in the surface pattern of the plastic seal and this Court is not satisfied with the reasoning given by the Deputy Controller in allowing the application for cancellation, the impugned order is set aside. The reasoning does not reflect the mind of the Deputy Controller. The order dated 1st October, 2012 is set aside."

Accordingly, the Kolkata High Court remanded the matter back to the Controller to be heard afresh and advised the Controller to give adequate reasoning while deciding upon the application for cancellation of the registered design.

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