The Design Unit registers the design without examination of all substantive requirements. Should it become apparent, after registration, that, for example, the design lacks novelty or individual character, a third party can file an application for the determination of invalidity. If the registered design is invalid, it will be cancelled from the Design Register after conclusion of invalidity proceedings. The registration will be deemed not to have had any protective effect as from the outset.
Design invalidity in Germany
The Design Act (Designgesetz) distinguishes between an “application for the determination of invalidity” and an “application for the declaration of invalidity”.
The “application for the determination of invalidity” relates to absolute grounds for invalidity (the appearance of the product does not constitute a design, lack of novelty/individual character, exclusion from design protection). Anybody may file this application.
The “application for the declaration of invalidity” relates to relative grounds for invalidity (works protected by copyright, registered designs or distinctive signs with an earlier filing or priority date). The application can only be filed by the right holder concerned.
The application for the determination or declaration of invalidity is subject to a fee and must be filed in writing including a statement of grounds. Please note that you must indicate all the facts and evidence in support of the statement of grounds. The grounds of invalidity on which the application is based must be clearly stated. The application for the determination or declaration of invalidity determines the matter to be examined in a way that the German Patent and Trade Mark Office is bound by the grounds stated in the application. In addition, the conflicting earlier designs or other rights cited against the challenged registered design must be indicated precisely.
Before filing such an application you should consider the financial risk because in the case of a dispute, the losing party must usually also bear the costs of the opposing party.
The DPMA informs the holder of the registered design about the application for the determination or declaration of invalidity. If the right holder does not contest the application within one month, invalidity will be determined or declared. Where the applicant contests the application, the Design Division continues invalidity proceedings and decides on the application on the basis of the submitted facts and evidence – after a hearing, if necessary. If the registered design is invalid, it will be cancelled from the Design Register. Such a design does not have had any protective effect as from the outset.
Action brought before the regional court
The regional court will decide on question of invalidity only if a “counterclaim” is filed. If, for example, a design holder is sued because of infringement of another design right, they can file a counterclaim, arguing that the registered design of the claimant does not fulfil the requirements of protection. Otherwise, the court will presume in such infringement proceedings that the registered design of the claimant is legally valid.