Now that you own a registered Community design, it can serve as a basis to 'challenge' potentially conflicting rights ... but it can also be 'challenged', or 'attacked' itself.
These attacks can take place at different levels – either before OHIM or before the national courts. The following describes how to proceed before OHIM. For information about court actions please refer to the section 'looking after your rights'.
Unlike trade marks, where disputes can arise before registration of the trade mark, designs can only be challenged once registered. This challenge is called — in legal jargon — an application for a declaration of invalidity. The following explains the invalidity procedure from the point of view of both the invalidity applicant and the RCD owner.
Commencing invalidity proceedings
How to file for invalidity
Using the official form to file an application for a declaration of invalidity is not mandatory but is highly recommended as it facilitates the processing of the application and avoids errors. The application, including the supporting documents, should be submitted in two sets: this allows one set to be kept in the Office's Archive and the other to be sent to the RCD owner without incurring a loss of quality due to copying.
An application for a declaration of invalidity can be filed with the OHIM by post or fax. However, transmission by fax is not recommended because the quality of the representation of the prior design(s) can be deteriorated by fax transmission and colour information will be lost.
Please refer to the notes on the application form for a declaration of invalidity of a registered Community design if you have doubts on how to fill it in. It is also recommended that you obtain legal advice before applying for a declaration of invalidity.
The fee for the application for a declaration of invalidity is €350. Applications will not be considered filed until the fee has been paid in full.
The invalidity process
OHIM sends the application for a declaration of invalidity to the RCD owner and gives them two months to reply. If the RCD owner decides not to reply, OHIM makes a decision based on the application as filed by the invalidity applicant. If the RCD owner decides to reply, their observations are communicated to the invalidity applicant immediately.
If OHIM considers that there is sufficient information to make a decision, it does so. If not, a further round of correspondence might be exchanged.
Either party can ask for an extension of time if the two-month period is not sufficient. As a general rule, a first request for extension of this period is granted automatically. Further extensions are granted only if sufficiently and properly justified.
The timeline describes the invalidity process, the first step is the 'Notification of declaration of invalidity', the RCD owner has 2 months to respond. The next step is the 'Notification of RCD owner's observations to invalidity applicant' two months from this moment is the Final time limit for the invalidity applicant to respond.
- 2 months
- 2 months
- Notification of declaration of invalidity
- Time limit for RCD owner to respond
- Notification of RCD owner's observations to invalidity applicant
- Final time limit for invalidity applicant to respond
Reasons for invalidation
Article 25(1)(b) of the Design regulation states the different grounds that can be invoked. The most frequently used are that the design is not new or does not possess individual character. Other grounds can be found in the manual.
Anybody can file a request for invalidity. You do not need to OWN an earlier right in order to file such a request. All you have to prove is that the design is not new or does not possess individual character, which you do by showing that the same design or a similar one, whether yours or not, existed before the one against which the invalidity request is directed.
Two things need to be proven in order for an application for a declaration of invalidity based on lack of novelty or individual character to be successful
- That an earlier design has been disclosed
- That the two designs make the same overall impression on the informed user
OHIM will assess the overall impression only if an earlier design has been disclosed.
Disclosure of an earlier design
A representation of the prior design(s), supported by documentary evidence of disclosure, is required.
The following list contains examples of documents that can serve this purpose. The manual explains how OHIM assesses them and how much weight is given to each of them
- Official publications: publication of an earlier design in the bulletin of any IP office anywhere in the world generally constitutes disclosure, as can publications in trade mark and patent bulletins
- Exhibitions and use in trade: making a design available to the public at an international exhibition anywhere in the world generally constitutes disclosure, as can use in trade
- Disclosures on the internet: as a matter of principle, disclosures on the internet form part of the prior art. Information disclosed on the internet or in online databases is considered to be publicly available as of the date the information was posted. However, the nature of the internet can make it difficult to establish the actual date on which information was made available to the public: not all web pages mention when they were published
- Statements in writing, sworn or affirmed (affidavits): as a matter of principle, affidavits in themselves are not sufficient for proving the disclosure of an earlier design. They can, however, corroborate and/or clarify the accuracy of other documents
Overall impression on the informed user
When comparing two designs, OHIM applies the same criteria as should be applied when conducting a search for earlier rights and finding potentially similar rights. You can find more information on how to assess the overall impression in the manual.
Conclusion of invalidity proceedings
An invalidity procedure comes to an end
- Either because one of the parties (or both) decide(s) to terminate the proceedings (because the parties have reached an amicable settlement, because the invalidity applicant withdraws their application or because the RCD owner surrenders the Community design)
- Or because OHIM issues a decision that concludes the proceedings. Any party to invalidity proceedings has the right to appeal against a decision which affects them adversely
A Community design that has been declared invalid will be deemed never to have existed.
Who pays costs
Which party has to bear costs depends on the outcome of the decision or on who terminates the proceedings.
When OHIM issues a decision there are generally two possible outcomes
The RCD is not declared invalid
The applicant pays representation costs to the RCD owner – typically €400
The RCD is declared invalid
The RCD owner pays costs to the applicant – typically €750, made up of €350 for the invalidity application fee and €400 for representation costs.