Invalidity of a design

Invalidity is the sanction that retroactively nullifies the registration of a design which did not meet the requirements for protection or which infringed the rights of a third party. In French law, the grounds are listed in Article L. 512-4 of the French Intellectual Property Code and invalidity is declared by the Judicial Court. For the EU right, Article 25 of Regulation (EC) No 6/2002 sets out the grounds for invalidity, which is declared by the EUIPO or by the EU design court hearing a counterclaim.

Grounds for invalidity

The first set of grounds concerns the subject matter and the substantive requirements: the registration is invalid if it does not relate to a design within the meaning of the law, if the design is not new or lacks individual character (caractère propre), if the appearance is dictated solely by its technical function or constitutes a must-fit interconnection, or if it is contrary to public policy or accepted principles of morality. The second set concerns earlier rights: an earlier design disclosed after the filing date but filed before it, an earlier distinctive sign used in the design, a work protected by copyright, or the right of the true designer where the applicant was not entitled to file. The former may be invoked by any interested person, the latter are reserved to the holder of the earlier right.

Procedure and parties

In France, invalidity actions fall within the exclusive jurisdiction of the Paris Judicial Court, either as a main action or by way of counterclaim in response to an infringement action. The INPI carries out no substantive examination on filing and has no power to invalidate a design, unlike the position for trade marks. For the EU design, the application for a declaration of invalidity is brought before the Cancellation Division of the EUIPO, with appeal to the Boards of Appeal and then to the General Court of the European Union, except where it is brought as a counterclaim before a national court.

Effects of invalidity

Invalidity operates retroactively: the right is deemed never to have had any effect, which removes the basis for any infringement action brought on it and may justify the repayment of sums received under a licence, unless otherwise agreed. Once final, the decision has absolute effect and is entered in the register. The EU right may be maintained in an amended form where the ground for invalidity affects it only in part and its identity is retained.

Key points

A design registered without substantive examination may be invalidated for lack of novelty or individual character, functional shape, conflict with public policy or infringement of an earlier right. The action lies with the Paris Judicial Court for the French right and with the EUIPO or by way of counterclaim for the EU right. Before bringing an infringement action, the robustness of the right should be assessed against the prior art and, in defence, prior designs bearing a reliable date should be gathered.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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