Disputes

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 guidelines.

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.

Proof

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 guidelines explains how EUIPO 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, EUIPO 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 guidelines.

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 owner surrenders the Community design).
• Or because EUIPO 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.