Unlike trademarks, where disputes can arise before registration of the trade mark, designs can only be challenged once registered. This challenge is called — in legal jargon — an application for a declaration of invalidity. The following explains the invalidity procedure from the point of view of both the invalidity applicant and the RCD owner.
How to file for invalidity
Using the official form to file an application for a declaration of invalidity is not mandatory but is highly recommended as it facilitates the processing of the application and avoids errors. The application, including the supporting documents, should be submitted in two sets: this allows one set to be kept in the Office’s Archive and the other to be sent to the RCD owner without incurring a loss of quality due to copying.
An application for a declaration of invalidity can be filed with the OHIM by post or fax. However, transmission by fax is not recommended because the quality of the representation of the prior design(s) can be deteriorated by fax transmission and colour information will be lost.
Please refer to the notes on the application form for a declaration of invalidity of a registered Community design if you have doubts on how to fill it in. It is also recommended that you obtain legal advice before applying for a declaration of invalidity.
Source: OHIM
