The Grace-Period Trap -- or "don't say it's a copy and you'll be all right"

The current issue of OHIM's Alicante News, having run out of countries on which it can report, has issued a friendly warning to the Office's "esteemed users" [this term is sadly undefined; Class 99 is not sure whom it excludes] that they should not despair of the Office if it rejects an application for a declaration of invalidity against a registered Community design due to lack of novelty even when there's "solid proof that the RCD is an identical copy of a prior design".  The Office explains:

"Out there, in the numerous articles of the Community Design Regulation (CDR) lies a trap you’d better be prepared for.

Its latest prey is an application which included evidence for the exhibition of a prior design identical to the contested RCD at an International trade fair in Germany around six months before the filing date of the RCD. The applicant claimed that the holder of the RCD has copied the prior design as a result of having seen it at the fair.

The Invalidity Division rejected the application (decision ICD 6682; in Spanish) because of Article 7(2) CDR which stipulates that a disclosure of a prior design is not taken into account if it happened less than 12 months before the filing date of the RCD and if it is a result of information provided by the designer of the RCD. Since the applicant insisted that the RCD is a copy of the prior design the Invalidity Division took it that the designer of the RCD must be the same person as the designer of the prior design and that the exhibition at the fair must be ignored because it was a result of information provided by the designer of the RCD [if you've read this sentence several times and still don't get the logic don't worry -- you're not alone].

In a similar case (decision ICD 5627, in German) two brothers were arguing about who copied whom. One was trying to invalidate the RCD of the other based on lack of novelty in view of his identical prior design. The evidence submitted by the applicant to prove the disclosure of the prior design was perfect but nevertheless the application was rejected due to Article 7(2) CDR.

The provision of Article 7(2) CDR, in particular the 12-months term, is called the grace period. It was intended as a remedy allowing designers to test the success of new creations on the market first and decide later – within 12 months – whether to seek protection by registering with OHIM. The grace-period clause secures that designers do not endanger the validity of their protection rights by making their designs available to the public prior to registration.

However, Article 7(2) CDR is of no help where another person, having learnt of the new design during this 12-months period, registers it with OHIM earlier than the designer. The only venue for the designer to be heard with a claim of ownership is an action before a national court under Article 15 CDR.[sounds like a design fault in the CDR]

An action under Article 15 CDR requires solid proof for the ownership. Without such proof it is better to file an application for a declaration of invalidity which includes all the evidence for the disclosure of the prior design but does not comprise any arguments as to a possible connection between the prior design and the contested RCD.

In the example above (ICD 6682) the Invalidity Division would have accepted the application and cancelled the RCD for lack of novelty if the applicant had not felt the need to give an explanation why the RCD is identical to the prior design, namely the first being a copy of the latter allegedly. Likewise in the case of the two brothers (ICD 5627) the fight over the ownership of the design was not helpful for the cause.

The grace period of Article 7(2) CDR can be a trap for an application easily triggered with unnecessary arguments of ownership in invalidity proceedings where those arguments do not belong".

This blogger hopes that the Alicante News will produce a feature soon on traps which the system can set for the villains of the peace to fall into, rather than traps to ensnare the innocent and the deserving.