INVALIDITY AND REVOCATION BEFORE EUIPO
An application for the invalidity of a Community design can be filed, for example filed by a competitor, only after the design to be contested has already been registered.
It is not necessary to be an OWNER of a prior right to file an application for the invalidity of a design, however it is possible to start an invalidity process against a registered design only through a professional representative.
GROUNDS FOR INVALIDITY
The grounds for invalidity that can invoked to invalidate a registered Community design are defined in Article 25(1)(b) of the Design Regulation.
The most frequently invoked reasons concern the fact that the design:
- it is not new;
- does not have an individual character;
- remains visible during normal use;
- its appearance is determined solely by features that perform a technical function;
Other less frequent reasons for invalidity concern the fact that the registered design:
- uses an earlier distinctive sign (trademark);
- constitutes an unauthorized use of a work protected by copyright law;
- constitutes an abusive use of signs, emblems and crests which are of particular public interest in a Member State.
The reasons for nullity must be supported by documentary evidence. In particular, an application for a declaration of invalidity, in order for it to support the lack of novelty or lack of individual character of the opposing design, it is necessary to demonstrate that there is a previously disclosed design and that the two designs generate the same general impression in the informed user.
For example, exhibitions at fairs and use in commerce in any country in the world are considered acts capable of making a design available to the public and as such constitute an enforceable disclosure.
In principle, disclosures on the Internet are also to be considered objectionable disclosures or part of the known state of the art, however it is often not easy to define the date from which the information was actually published. Not all web pages indicate the publication date. However, for example, the Wayback machine database provides internet pages captured at different times in a manner considered sufficiently reliable.
Written statements and sworn depositions alone are generally not sufficient to prove public disclosure of an earlier design, however they can help corroborate a claim or clarify the correctness of other documents.
CLOSURE OF INVALIDITY PROCEEDINGS
An invalidity procedure ends:
- with an amicable settlement between the parties of the dispute, or
- with the withdrawal of the application by the applicant for the nullity, or
- with the renunciation of the Community design by the holder, or
- by a decision of the EUIPO.
An appeal can be lodged against an unfavourable decision in whole or in part.
A Community design declared null is considered as if it never existed.
Our office has considerable experience in annulment actions of community designs. For example, our study was the first study ever to win a dispute obtaining the recognition that the deletion of an element from a model did not change its external appearance and therefore was not a reason for nullity.