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Invalidity

During the examination process, OHIM does not check whether an application for a registered Community design (RCD) is infringing an intellectual property right of a third party. Once an RCD has been registered, however, a third party may apply for a declaration of invalidity by -

  • commencing proceedings at OHIM
  • submitting a counterclaim in infringement proceedings before a Community Design court.

 

Proceedings at OHIM
For commencing invalidity proceedings at OHIM, a person has to submit an application for a declaration of invalidity. The application has to be a written statement containing certain facts, evidence and arguments. It has to be submitted by post, special delivery service, personal delivery, or fax. A fee of EUR 350 is payable with the application. The holder of the contested Community design will be given at least one opportunity to comment before OHIM issues a decision on the invalidity. An appeal against OHIM’s decision can be filed with the Boards of Appeal.

To find out more about the proceedings:

 

Counterclaim in infringement proceedings
If there is already an infringement action pending in one of the Community Design courts it is possible to bring a counterclaim there for a declaration of invalidity. The court may declare the contested Community design invalid or reject the counterclaim if it is not substantiated.

To find out more about the proceedings:

 

Grounds for invalidity

There are several grounds on which a Community design may be declared invalid. Article 25 of the Community Design Regulation contains an exhaustive list:

  • the design does not correspond to the definition of a Community design under Article 3 (a) of the Regulation
  • the design does not fulfill the requirements of Articles 4-9 (especially novelty and individual character)
  • the registered holder is not entitled by virtue of a court decision
  • the Community design is in conflict with a prior national design
  • the Community design makes unauthorised use of a design
  • the Community design makes unauthorised of a work protected by copyright
  • the design constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property or of badges, emblems and escutcheons other then those covered by Article 6ter and which are of public interest in a Member State.