Thanasis Ioannou, LL.M.
Abstracts: The adoption of the strict declaratory system in the examination of applications for the registration of national or Community designs, combined with the lack of a legislative provision for opposition by anyone with a legitimate interest in the preparatory stage of the registration of the design, has the consequence that, on the one hand, it is easy to register a design, but on the other hand, it is probably difficult to keep it in force, especially if one turns against a competitor in an action or an application for injunctive relief seeking the removal of the infringement of the design.
1. The filing of an application for registration of a national or Community design before the Hellenic Industrial Property Organisation (IPO) and the EU Intellectual Property Office (EUIPO) respectively.
The registration of a national design upon filing an application with the Hellenic IPO (Industrial Property Organisation; in the register of national designs) constitutes an individual administrative act creating and conferring on the applicant an absolute and exclusive right to a design, e.g. a handbag, a chair, a stuffed toy, etc. The absolute and exclusive nature of this private law right translates into the possibility for the right holder to use the design exclusively himself and to prohibit any third party from using it without his permission. The same applies to an application for registration of a Community design before the EU Intellectual Property Office (EUIPO).
The elements of novelty and individual character are positive substantive requirements for the validity of both a national design and a Community design, which must be met cumulatively. However, the Office carries out only a formal examination of the applications submitted to it, which does not extend to examining whether either the negative or the positive substantive conditions, namely novelty and individual character, are satisfied. This system of non-examination is essentially established by Regulation No 6/2002 on Community designs. However, under Article 47 of that regulation, the EUIPO must check whether the design to be registered meets the statutory definition of a design and whether it is contrary to public policy and morality.
2. The presumption of validity of registered designs and the possibilities of rebutting it.
The consequence of the above-mentioned declaratory system, which does not require verification of the existence of the substantive conditions for the validity of a design at the stage preceding its registration, is that the registration of a design and, by extension, the absolute and exclusive right to it is endowed with a so-called 'presumption of validity'. This presumption may be rebutted by a declaration of invalidity of the registered design by a court decision, inter alia, because of the lack of the positive requirements of novelty and individual character. The grounds for invalidity of a registered design may be raised by way of an action, counterclaim or even by way of an objection to a claim by the right holder of the design seeking the removal/abandonment of the infringement or even the payment of damages. The admission of an objection to the invalidity of the design does not entail the invalidity of the design, but only the rejection of the action for infringement as unfounded in substance. However, in an action for infringement of a registered Community design, the validity of the registered Community design may be challenged only by a counterclaim for invalidity (Article 85(1) Regulation 6/2002 itself introduces an exception to the rule that grounds for invalidity may be raised only by means of the procedural vehicle of a counterclaim in cases where invalidity is based on the existence of a prior right of the defendant under national law (Article 85(85)(b) of Regulation 6/2002). (Article 85(1), last subparagraph), where an action for infringement/imitation of an unregistered Community design is brought (Article 85(2)), and where the validity of the Community design is contested in the context of an application for interim measures (Article 90).
3. Good practice.
The complete absence of any control of the substantive conditions for the protection of industrial designs at the stage of processing an application filed either before the EUIPO for the registration of a national design or before the Hellenic Intellectual Property Office for the registration of a Community design, as well as the lack of any legislative provision for a preventive remedy (such as an opposition to a trade mark application) to prevent the registration of designs lacking novelty and individual character, entails some quite serious disadvantages. In particular, in the context of the above-mentioned system, it is very easy to register a design and obtain the relevant registration certificate, but at the same time one runs the risk of invalidating one's design if a competitor brings a counterclaim for the invalidity of one's design or a plea of invalidity of one's design in defence of an action or application for interim measures brought by the proprietor for an infringement of one's design. Furthermore, the possibility of registering invalid designs at both national and European level will certainly increase legal uncertainty in the market, since an invalid design can be a source of long-term litigation with high costs and adverse consequences for free competition. Therefore, in order to protect the designer from this risk as far as possible and to avoid distortions of competition, it is recommended that, before filing an application for registration of a design at either national or European level, the existence of any earlier designs which are either identical or, in any event, create the same overall impression as the design which the designer intends to register should be investigated.