Tag: EUIPO

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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.

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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.