Have you ever wondered whether you can modify a registered community design ("RCD") that is challenged by an application for declaration of invalidity by removing certain prohibited design elements to maintain the registration?
Well, under Article 25 (6) of the Community Design Regulation ("CDR") you can. An RCD that is declared invalid because it is found to contain a distinctive sign (like a registered trademark) can be maintained in an amended form provided three prerequisites are met: (i) this is requested in a corresponding application; (ii) the amended design fulfils the general protection requirements (e.g. individual character and novelty); and (iii) the amended design is identical to the original (in a design law sense, meaning the designs must not differ from each other in more than insignificant details).
A recent decision by the General Court has given us a heads-up on this topic and urged us to take a closer look at the provision. In certain cases, knowing about this option can lead to great benefits.
Background: invalidity of an RCD containing a registered trademark?
In the case concerned, the proprietor of the European Union trademark registration for the word PIANEGONDA filed an application for declaration of invalidity against an RCD because this mark was used in the RCD. It was registered for a pendant in the shape of an elongated heart characterised by an engraving of the word PIANEGONDA in capital letters on the right side of the front part.
Pursuant to Article 25 (1) (e) CDR, a Community design may be declared invalid if a distinctive sign is used in a subsequent design and Community law or the law of the Member State governing that sign confers on the rightholder of the sign the right to prohibit such use.
Potential solution: application for maintenance in an amended form
During the invalidity proceedings, the design owner requested that the RCD be maintained in an amended form, namely without the engraving of the word PIANEGONDA.
While the application for declaration of invalidity of the RCD was granted, the GC also granted the design owner's application for maintaining the RCD in an amended form pursuant to Article 25 (6) CDR. This provision provides that an RCD which has been declared invalid pursuant to Article (1) (b) (i.e. lack of fulfilment of protection requirements), (e) (i.e. use of a distinctive sign), (f) (i.e. the design constitutes an unauthorised use of a copyright-protected work) or (g) (i.e. the design constitutes badges, emblems and escutcheons) may be maintained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained (which is why this solution will mostly apply if the invalidity is limited to insignificant details of the design). "Maintenance" in an amended form may include registration accompanied by a partial disclaimer by the holder of the RCD or entry in the register of a court decision or a decision by the Office declaring the partial invalidity of the RCD.
Furthermore, in order to claim the invalidity of the amended design based on lack of individual character, for example, a further application for declaration of invalidity would have to be submitted to the Invalidity Division of the EUIPO, which is competent to decide on its merits.
A provision providing for the possibility to amend an invalid RCD in order to maintain the registration could lead to unjustified amendments of non-protectable RCDs, which is why it can only be applied in exceptional cases. However, provided the amended form of an invalid design fulfils all the required criteria, a corresponding application during pending invalidity proceedings might be the way to save the registration of a design.
By Birgit Hirsch, Attorney at Law, Schoenherr