Registered Designs and Invalidity
13 September 2007
By Christina King
Once a design has been registered it is possible for a third party to apply to have the registration invalidated. The basisÂ for this, as set out in the Community Design Regulation 2002, include the following:
1. The design does not fit within the definition i.e. the appearance of the whole or a part of a product resulting from the features, of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation
2. The design is not new/it lacks novelty and or individual character
3. The design was disclosed more than 12 months prior to application
4. The design is dictated by its technical function
5. The design is contrary to public policy or morality
6. It conflicts with a prior design
7. The design includes a third partyÂs trade mark or copyright
OHIM has recently released a report on the most common reasons for a Community Design to be invalidated based on the statistics gathered since the Community Design System was introduced in 2003.
By far the most popular basis is lack of novelty or individual character, which has been used 376 cases which equates to a rate of 76%.
The statistics published in the report show that the next most common basis is conflict with a prior design with this reason having been used in 50 cases. While in third place is inclusion of a third partyÂs trade mark with 41 cases using this reason.
The others have all been minimally used, with each having been used in 10 or less cases.