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The Trade Marks and Designs Registration Office of the European Union
1. Choosing this option
If there is already an infringement action pending in one of the Community Design Courts, the defendant can bring a counterclaim for a declaration of invalidity of the allegedly infringed RCD.
2. Filing a counterclaim
A counterclaim for declaration of invalidity can be brought only by the defendant in related infringement proceedings.
3. The Community Design Court
All Member States have designated in their territories a limited number of courts and tribunals of first and second instance having exclusive competence in Community design matters (Community Design Courts). The local jurisdiction depends on the domicile of the defendant or on where it has an establishment in the case of no domicile. In the absence of a defendant's domicile or establishment in a Member State of the EU, the proceedings are brought in the courts of the Member State in which the plaintiff is domiciled or in case of no domicile in the Member State where it has an establishment.
If neither the defendant nor the plaintiff are domiciled or have an establishment in one of the Member States, the proceedings are brought in the Spanish Community Design Court in Alicante. In addition, an action can be brought in the designated Community Design Courts of the Member State in which the act of infringement has been committed or threatened
4. Applicable law
The Community Design Courts apply the provisions of the Community Design Regulation (CDR). On all matters which are not covered by the Regulation, Community Design courts apply their national law (including their private international law). A Community Design Court applies the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated.
5. National court proceedings
The Community design court having received the counterclaim for a declaration of invalidity of an RCD informs OHIM of the date on which this took place. OHIM records this fact in the Register. If the design holder is not already a party to the legal action, it will be informed and may be joined as a party to the action in accordance with the conditions set out in the law of the Member State where the court is situated.
6. Decisions
The Community Design Court can declare the Community design invalid or reject the counterclaim if none of the grounds mentioned in Article 25 CDR is found to apply.
The Community Design Court will send a copy of its final judgment to OHIM. The decision will be recorded in the Community Design Register. After it has become final, a judgment of a Community Design Court declaring an RCD invalid has the same effect in all Member States.
7. Right of appeal
Each party can file an appeal against the decision at the appropriate court, in accordance with the civil procedures of the Member State where the court is located.