To provide a few examples for grounds of invalidity, a Community Design can be declared invalid if it does not comply with the legal definition of a "design", if it lacks novelty or individual character over designs, which have been made public before the filing date of the Community Design, or if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State.
In April 2004, the first decision on an invalidity request was announced by the competent Invalidity Division. In the meantime, nine decisions have been issued, resulting in a declaration of invalidity for five Community Designs. In most of these cases, the request was based on a lack of novelty and/or individual character. When discussing the requirements for individual character by comparing the features of the Community Design with those of earlier designs, the Invalidity Divisions emphasized that the functionality of the product covered by the Community Design has to be taken into consideration. It was argued that the basic structure of a device is simply the consequence of its functionality (i.e. a specific technical effect to be achieved) and imposes specific restrictions on the designer in developing the design. Therefore, the informed user focuses his attention on features, which are not necessarily implied by this function and, consequently, deviations in these features are more relevant for the assessment of individual character.
Since the OHIM Invalidity Divisions have just started to take decisions on requests for the declaration of invalidity, a well-established case law has still to be developed. We will continue to carefully observe the OHIM decisions on Community Designs and will inform our clients about new and interesting legal developments in this field.
