Category: Design

Design related topics

Posted on

EU design invalidity

The EUIPO hosted a webinar on design invalidity applications, which was both very instructive and useful for practitioners.

If you are interested in this topic, you can find a recording of the webinar entitled Track on design: focus on invalidity of designs on the EUIPO’s website.

By way of background for readers from abroad: In the context of industrial property rights within the European Union (EU), design invalidity refers to the legal process by which a party may challenge the validity of a registered design before the European Union Intellectual Property Office (EUIPO). A design may be declared invalid for several reasons, including lack of novelty, lack of individual character, or if the design is not eligible for protection under EU design law.

To initiate an invalidity procedure, any party with a legitimate interest can file an application to the EUIPO. This application must set forth the grounds on which the invalidity claim is based and provide the necessary supporting evidence. If the EUIPO finds the design invalid, it will be cancelled. This mechanism is crucial as it allows for the resolution of disputes relating to the validity of designs, helping to maintain a fair competitive environment in the marketplace.

Posted on

EU design legislative reform

Both the EU design regulation and the EU design directive are likely to be modified in the near future. If you want to learn more, check out this very interesting webinar recording of the EUIPO.

One important aspect of the amendments is that (somewhat similarly to the changes made to the trademark regulation and directive a couple of years ago), the new regulation and directive will allow IP stakeholders to more easily obtain adequate design protection for designs that can be represented in a (modern) electronic register, without being necessarily limited to seven graphical representations per designs. Examples where this is important include video sequences.

Posted on

Community design for modular system component

In the judgment of 24 January 2024 in T‑537/22, the General Court (GC) held that a registered Community design for a building block of a modular system was valid. The GC affirmed the Board of Appeal’s decision which found that even if all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of that product, within the meaning of Article 8(1) of the Community Design Regulation, the contested design could not be declared invalid as it fell within the exception protecting modular systems referred to in Article 8(3) of the Community Design Regulation (points 16 and 74 et seq. of T-537/22).

This judgment of the GC is the second judgment relating to the invalidity proceedings, with the GC highlighting the importance of Art. 8(3) of the Community Design Regulation in T-515/19. The recent judgment T-537/22 confirms (a) that registered designs can be powerful intellectual property assets, and (b) that Article 8(3) of the Community Design Regulation provides an exception of great practical importance applicable to various kinds of modular systems (and not only vehicle repair parts). This is in line with recital (11) of the Community Design Regulation which stipulates that “mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection.”

Posted on

EUIPO design fees & priority

In the 2023 edition of the Guidelines, the EUIPO has introduced a paragraph ‘clarifying’ (in the EUIPO’s view) ‘that the Office will not begin examining the application, and therefore will not accord a filing date, until the fee has been paid.’ While the EUIPO ultimately has to determine whether a filing date can be accorded even when no fees are paid, the EUIPO wants users to know that it is possible that it can take months until a filing date is accorded. There is nothing that prevents the EUIPO from according a filing date only after expiry of the priority term (as explicitly stated in the EUIPO’s webinar on the Guidelines 2023 edition starting at 1:52:26).

Thus, while the EU design regulation stipulates that fee payment is not a requirement for according a filing date (in contrast to the EU trademark regulation), the EUIPO’s practice means that the only way to guarantee that an EU design application can serve as a basis for claiming a priority is to pay the fees.

For a German national filing it is not required to pay the fees for a design application to be accorded a filing date. Thus, applicants desiring to establish a priority date, while being uncertain whether they wish to proceed with the design registration, could consider filing with, e.g., the German Patent and Trademark Office. Unfortunately, this approach may have drawbacks for non-German applicants who wish to use the priority filing as basis for an international registration under The Hague design convention.