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Invalidity of international design registrations: OHIM speaks
The current online issue of OHIM's Alicante News features the helpful text below under the heading Invalidity of international design registrations:
"International registrations of designs under the Geneva Act of the Hague Agreement designating the European Union may be subject to invalidity proceedings before OHIM according to Article 15 Geneva Act and Article 106f Community Design Regulation (CDR).
[Class 99 note: Article 106f was one of the amendments to the original Regulation that was made in December 2006 to give effect to the EU's membership of Hague. It reads as follows: 
Invalidation of the effects of an international registration 
1. The effects of an international registration in the Community may be declared invalid partly or
in whole in accordance with the procedure in Titles VI and VII or by a Community design court
on the basis of a counterclaim in infringement proceedings.
2. Where the Office is aware of the invalidation, it shall notify it to the International Bureau
Since the accession of the European Union to The Hague Agreement in 2008, OHIM has received a number of applications for declaration of invalidity of International design registrations. The procedure is similar to invalidity proceedings concerning registered Community designs. The application must be submitted directly with OHIM. The language of proceedings must be the language of filing of the contested registration. Since the Geneva Act allows filing in English, French and Spanish, the invalidity application to OHIM can be submitted in any of these three languages. A fee of 350 Euro must be paid together with the application. The Invalidity Division in the Designs Service of OHIM is in charge of the proceedings.

An invalidity application against an International registration can only be based on the grounds which also apply against a registered Community design, namely the grounds of Article 25(1) CDR [which was also amended in December 2006 to make it Hague-compliant]. This means that errors in the registration such as an erroneous filing date or inconsistent views are no grounds for an invalidity attack [but will this stop those grounds being pleaded ...?].

Where the Invalidity Division finds the application admissible, it will forward it to the holder of the contested International registration. Where the holder needs to be represented before OHIM according to Article 77 CDR, the Invalidity Division will invite him/her to appoint a representative.

The examination of an invalidity application against an International registration is the same as for a registered Community design, namely OHIM will invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself.

However, a difference lies in the decision at the end of the proceedings: where the invalidity application is well founded, it is not the International registration as such which will be declared invalid but only its effects in the European Union. The effects of the International registration in other countries designated therein, if any, are not affected by the decision of OHIM [this resonates with the position concerning the EU's current travails over patent reform, as to whether an EU institution such as a unitary patent court could invalidate the effects of a European patent so far as it covered EPC territories outside the EU. It couldn't].

An applicant contesting an International registration enjoys the same remedies as any party to proceedings before OHIM, in particular they may lodge an appeal against a decision of the Invalidity Division and bring an action before the Court of Justice against a decision of OHIM’s Boards of Appeal .

Where the effects of an International registration in the European Union have been declared invalid by a final decision, OHIM will notify WIPO accordingly. There is no entry in the Register or the Bulletin of OHIM but invalidity decisions concerning International design registrations can be searched for in the case-law database of OHIM".
Posted by: Blog Administrator @ 17.59
Tags: international designs, Invalidity,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA276

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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