Once a UK design is registered with the United Kingdom Intellectual Property Office (UKIPO), it can be cancelled or invalidated.
In accordance with Registered Designs Act 1949, a registered design registered on or before 9 December 2001 could be declared invalid “if it was not new or lacked individual character when compared with an earlier design at the time it was applied form or other reasons under the amended law”. The grounds for invalidation can be found in Section 11ZA of the Registered Designs Act 1949 as amended.
If the design was registered with the UKIPO before 9 December 2001, it could be cancelled in accordance with Section 11 of the Copyright Designs and Patents Act 1988 (as amended).
The first recommended step in design invalidation/cancellation proceedings is to first approach the registered proprietor to see if both the applicant and proprietor can reach an amicable agreement prior to opting for the legal process. Should this fail, the next step to make an application to invalidate or cancel a registered design is to file a DF19A form with the UKIPO detailing the grounds on which the application to invalidate/cancel is based. The fee for the DF19A form is £48 and must be submitted to the UKIPO at the time of making the application.
Once the DF19A is received, the UKIPO will first check if all the required information has been provided. Should further details be required, the Tribunal will write to the applicant with a time limit. Once all the checks have been finalised, the Tribunal will then serve the DF19A on the registered proprietor of the design who will have 6 weeks from the date the form is served to file a defence by way of a DF198B form (no fee). It is important to note that there is no extension on the time limit to file a DF19B and should the defence be filed later or not at all, the proprietor will run the risk of the Tribunal considering the proprietor as not opposing the application to invalidate/cancel.
Once the Tribunal accept both the DF19A and DF19B, both parties will be provided with a timetable to file their evidence and/or written submissions.
Following either a full review of the applications and supporting arguments/evidence, the Hearing Officer will issue a final decision in writing as to whether the mark will be invalidated/cancelled.
If you have any questions relating to this article or have discovered a registered that you wish to invalidate, contact the experts at Lawdit Solicitors today.