Invalidating a registered design

The validity of a registered design can be challenged on the basis that it is not new, does not have individual character, or because the design is in conflict with earlier relevant rights.

In the UK, there is a distinction between grounds for refusal (i.e. because the design is not new and does not possess individual character) and grounds for invalidity. However, because no substantive search (i.e. assessment) is carried out by the UK Intellectual Property Office when an applicant applies to register a design, a design will rarely be refused. In fact, the question of novelty, individual character and earlier rights is likely to be at issue in invalidity proceedings or in infringement litigation as part of a counterclaim that a registered design is invalid.

The requirement of novelty (i.e. that the design is new) is satisfied if no identical design, or no design whose features differ only in immaterial details has been made available to the public before the date of the application.

The test of individual character is whether the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public.

A design will be declared invalid if it does not meet the above thresholds of novelty and individual character.

A design can also be declared invalid in the UK if the applicant is not the person entitled to the design right (e.g. because the applicant is not the proprietor of the design), or if it is in conflict with earlier design rights or even in conflict with a registered trade mark or with a work which is protected by copyright. A design can also be declared invalid if it is in conflict with a protected emblem (in the UK protected emblems include the Royal arms, the Crown and the Union Jack).

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