In a couple of recent cases (ICD 8384 and ICD 8249), The Community Designs Office (OHIM) has decided they are entitled to consider certain grounds for invalidity even when those grounds were not specifically raised in the validity challenge.
A Community Registered Design (CRD) is registered without examination of the merits of the application. An invalidity application may be filed by anyone at any time and most raise the question as to whether the design is new and different enough from earlier designs to justify protection as CRD.
But there’s another test for validity – so called “absolute grounds” of invalidity. Barred from registration a CRDs are:
- (i) features of a product that are solely dictated by the product’s technical function – the function exclusion; and
- (ii) features that must be reproduced in their exact form and dimensions in order to permit a product to be mechanically connected to or placed in, around or against another product so that either product can perform its function – the must-fit and must-match exclusions.
CRD owners beware: even if not in the invalidity pleadings, if the OHIM gets the hint of either of these issues (e.g. from the evidence in the case) they are likely to add these additional grounds for invalidity to those already raised by the challenger. You may have more of a defence to prepare than you first imagined.
- Alicante News January 2012 Edition
- OHIM Decision No. ICD 8384 of 9 January 2012 (English)
- OHIM Decision No. ICD 8249 of 16 January 2012 (German)
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.