Design rights denied after application is modified

Can the Controller of Designs refuse to register a design for lacking novelty after the applicant deletes some representations of the design on the recommendation of the examiner? A recent decision of the Calcutta High Court points out that an examination report only facilitates the controller’s final decision, and concludes that a design application can be refused registration even after it is amended. The decision also clarifies the role of the examiner and controller in the design registration process.

The design application in this case (Simon vs The Controller of Patent and Designs, AID 2 of 2018, AID 3 of 2018 and AID 4 of 2018, Calcutta High Court, 27 September 2018) pertained to  certain “Accessories For Electrical Devices”, claiming priority from a Spanish design application. The application was received in May 2012, and was forwarded by the controller for examination. The First Examination Report arrived in January 2013, in which the examiner suggested that some changes be made in the application. Accordingly, the applicant agreed to delete two out of a total of six representations of the design that formed part of the application.

By reason of such deletion, it transpired that the aesthetic value of the design as claimed no longer survived. What remained was merely the design of an electrical switch cover plate. The question arose as to whether the design now met the tests of novelty and originality, which are key tests for design registrability. When the application came before the controller for final consideration, the controller decided that the design was taught by prior publication, and lacked novelty, and hence could not be registered.

Relevant provisions of the law were also discussed. Section 5 of the Designs Act of 2000 requires the controller to refer the application for examination by an examiner as to whether the design is capable of being registered, and subsequently consider the examiner’s report on such reference. Rule 18 of the Designs Rules 2001 deals with the objections to be considered before registering or refusing to register the design upon consideration of the examiner’s report.

The court was of the view that although the examiner’s report would be a relevant consideration in either registering or refusing to register a design, but the ultimate decision rests with the controller. According to the court, the examiner only facilitates the controller to arrive at a decision. In this case,  the findings of the examiner were not conclusive on originality or novelty, both of which are essential requirements for a design to claim registration. The examination report required the applicant to file certified copies of prior published documents that was lacking when the applications were originally sent to the examiner. Once the prior published documents were placed on record, it was found that they showed that the designs lacked novelty.  The actual question of whether the design was informed by prior publication and whether the designed lacked novelty or not was finally considered only by the controller.

The design applicant, and the petitioner in this case, also tried relying on an earlier decision of the Calcutta High Court (M/s. Devans Modern Breweries Ltd. Vs. Controller of Patents And Designs And Anr. reported at 2012 (4) Cal LT 489 (HC)) to argue that once an examiner had examined an application, and asked the application to delete a few representations, which was duly undertaken, it was no longer possible for the controller to deny registration of that design on the ground of lack of novelty.

In the Devans case, the Controller of Designs had, in fact, concluded that novelty alone was not sufficient for registration of design, and there had to be substantial originality in a design. If that was not established, then the application for registration ought not to be allowed to proceed for registration. The court, however, found this was a questionable conclusion as it led to potentially different yardsticks being used to measure the originality of designs in the same class. In that case, it sent the application in question back for consideration by Design Office. In the present context, the court decided that the Devans case was not relevant to the present case.

Eventually, the court upheld the controller’s decision to refuse registration of the design applications, agreeing that the designs which remained for consideration after the cancellation of two representations, the designs no longer appeared to be novel.

This is a useful example of how design applications may play out in the Indian Design Office, after the examination process. Essentially, there can be no presumption of registrability after an examiner has asked modifications to be made to an application.

As an aside, a slightly problematic issue is that of the time this case has taken. For a design application that was originally filed in May 2012, an adjudication has come only in September 2018, well after five years. Considering that design registrations are valid only for ten years, extendable for another five, this is already one-third of the maximum period for which the design would have been valid, had it been registered.