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Design invalidity: clearing the way for your product

Picture the scene: you’ve spent months designing an amazing new product, you’re pretty sure it ticks all the boxes in terms of eligibility to be registered as a design in the EU – as far as you’re aware, it’s novel (no identical designs exist) and it possesses individual character (the impression it creates is different to previous designs). You conduct a search of the EUIPO’s design register just to be sure, and – horrors – you discover the existence of an existing Registered Community Design (RCD) that covers a design with a similar appearance to your own.

So, what does this mean? Well, in short, that the owner of the RCD owns the design rights and may be able to prevent you from selling your product throughout the EU.

What options do you have in this scenario? You could consider going back to the drawing board and changing the design of your proposed product to try and avoid potential infringement.

If this isn’t feasible or desirable, you could also seek a declaration of invalidity of the design with the European Union Intellectual Property Office (EUIPO). Essentially this amounts to attacking the existing RCD to have it struck off the design register, clearing the way for your product in the EU.

Sounds complicated, costly, and time-consuming, right? Fortunately, this is not the case. It is, in fact, a simple administrative process (at least in the first instance). It’s worth taking a look at how an RCD qualifies for registration in the first place to understand how they may be challenged to clear the way for your product.

How to register an RCD

To register an RCD, the following criteria must be fulfilled:

  • The design must relate to a product. It can be of the whole or a part of a product and may cover the lines, contours, colours, shape, texture or materials of the product or its ornamentation (i.e., decoration). It can include packaging, get-up, graphic symbols, and typefaces. Designs can be 2D or 3D. No artistic merit is required.
  • Novelty. The design must be new. An identical design (or a design with immaterial differences) must not have been disclosed to the public anywhere in the world prior to the relevant date (typically the date of application for registration). Certain disclosures (for example, disclosure in breach of a confidentiality agreement) will not count.
  • Individual character. The design must give a different overall impression from previous designs to the ‘informed user’, who does not have to be a design expert, but who is familiar with the products in question.

However, the EUIPO does not scrutinise prospective RCDs for novelty or individual character at the point of application. The idea is to process applications quickly and cost-effectively and allow them to be challenged for invalidity later. If an RCD is successfully challenged, it is removed from the design register and it is as if it was never registered, leaving the way clear for your product in the EU.

On what grounds can you attack an RCD?

You may claim any one (or a combination) of the following grounds. That the design:

  • does not qualify as a design under relevant legislation
  • the RCD owner is not entitled to the design
  • is solely functional
  • is not novel
  • does not have individual character
  • conflicts with a prior design right
  • is contrary to public policy or morality
  • constitutes a design infringement of a third party’s intellectual property.

Once you have identified the grounds on which you wish to challenge the RCD, you can file your application for a declaration of invalidity with the EUIPO. The EUIPO will send a copy of the challenge to the RCD owner, and they have two months to respond. If they do not reply, the EUIPO will make a decision based on the information you have submitted. If the RCD owner does reply, their comments will be forwarded to you and the parties will commence negotiations.

If the EUIPO feels it has enough information to make a decision, it will do so. If not, there may be further exchanges of information. Either party may ask for an extension of the two-month timeframe; this request is typically granted first time, but there must be a very good reason for any further extension.

Options for resolution

There are several options in terms of resolution. You and the RCD owner may reach a settlement and agree to terminate the proceedings. If the RCD owner responds robustly or presents information that you did not previously know about, you may decide to withdraw your application and re-visit the re-design option. Alternatively, the RCD owner may suspect their RCD is shaky and surrender it. Or the EUIPO may ultimately make a decision that concludes the proceedings.

What are the risks with attacking an RCD?

The only risk is financial. It costs €350 to submit an application, and if you choose to seek legal advice, you will also incur legal costs. If the RCD is not declared invalid, you will pay the RCD owner costs of around €400. If the application is successful, the RCD owner will be required to pay costs of €750 to you. There is a risk that the RCD owner may appeal the decision, which could result in the issue ending up in the courts, which would lead to higher costs.  

And what about Brexit?

For a brief guide on how RCDs will be treated in the UK after the end of the Brexit transition period on 31 December 2020, read our transition guide for registered community designs.

In brief, as of 1 January 2021, new ‘re-registered’ designs will come into existence in the UK, originating from the existing EU RCDs. So, what will happen with regards to challenging the validity of these new re-registered designs?

For any EUIPO invalidity proceedings that are in progress on 31 December 2020, the outcome will also apply to the UK re-registered designs. So, in this scenario, if the RCD is declared invalid, the corresponding re-registered UK design will automatically be deemed invalid too.

From 1 January 2021 onwards, any new invalidity application made to the EUIPO will not automatically apply to the re-registered UK design – applications to invalidate new UK re-registered designs will need to be raised with the UK Intellectual Property Office (UKIPO).

In terms of costs, a separate fee of £48 will apply, and the party that wins may be able to recover some of their costs from the other party.

The process will be similar to the EUIPO process – submissions will be made by both parties, though a hearing can be requested if required, and a written decision will be issued confirming the outcome. There’s also the opportunity to appeal.

If you require support with challenging EU RCDs or new UK re-registered designs, our intellectual property lawyers will be happy to help. Our team is also skilled in robustly defending RCDs under attack.

About our expert

Gemma Pickavant

Gemma Pickavant

Intellectual Property Solicitor
Having originally joined us in 2016 as a legal assistant, Gemma trained as a solicitor with Harper James and qualified as an intellectual property solicitor in 2021. Gemma has a strong corporate background which enables her to see the bigger picture of a business and informs her strategic advice.

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