As we all know, design is a very important part of intellectual property rights. Design patents can provide legal protection for innovative designs of product appearance, shape, pattern or color. This protection ensures that the designer's creativity is not copied or imitated by others, thereby encouraging more design innovations. At the same time, unique designs help products stand out in the market, attract consumers' attention and increase the added value of products. Through design patents, companies can obtain exclusive rights and gain an advantage in competition. After obtaining a design patent, the patent owner can take legal action against unauthorized use of the same or similar design to prevent competitors from infringing.
Therefore, to some extent, the design has become the focus of disputes between competitors. The UK design has become the first choice for many business owners to expand overseas markets because of its convenient and simple procedures. Today, we will introduce the design invalidation procedure of the UK Intellectual Property Office (UKIPO).
The steps to file a request for invalidation of a design at the UK Intellectual Property Office (UKIPO) are as follows:
- The invalidation applicant files an invalidation request with the UKIPO and attaches a statement of opinion as the reason for the invalidation. In this stage of the procedure, the invalidation applicant does not need to submit relevant evidence at this stage. It is recommended to wait until the invalidated party provides a reply and submits evidence before submitting relevant opinions in a targeted manner;
- If invalidation requests for different designs are filed under the same and sufficiently related circumstances, i.e. the same parties, the same grounds, the same evidence, etc., then UKIPO will merge the invalidation requests for different designs into one case;
- After receiving the invalidation request from the invalidation applicant, the UKIPO will forward it to the owner and set a deadline for filing a reply, which is usually 6 weeks from the date of issuance;
- At this stage, if the invalidation petitioner needs to rely on witness testimony or evidence, the invalidation petitioner must submit a request for permission to rely on witness evidence;
- UKIPO will convey the evidence of the invalidation applicant and related materials to the invalidated party, and provide the invalidated party with 6 weeks to submit relevant evidence;
- Once the invalidated party has submitted its evidence, the invalidation petitioner will have 6 weeks to decide whether to submit further evidence;
- Once the invalidation evidence round is completed, UKIPO will set a 4-week period for the invalidation applicant and the invalidated party to choose whether to have a written hearing or a hearing;
- If the parties choose a written hearing, they will have one more opportunity to make further written submissions at this stage;
- If a court hearing is chosen, it is usually held in London or Newport, and video conferencing is currently more commonly used;
- If a hearing is chosen, the parties will jointly agree on a mutually agreeable date, but this date is more usually determined by the hearing examiner;
- Once the hearing date is confirmed, the UKIPO will notify the invalidation applicant to decide on a representative to appear in court within 14 days;
- Both parties shall submit their arguments before 2:00 p.m. on the 2 working days before the hearing.
- UKIPO will clearly list the documents that will be used as evidence in the proceedings, so the parties no longer need to prepare any document packages. UKIPO will send a document index to both parties.
The basic procedure can be shown as follows:
Since the UK adopts a legal procedure framework similar to that of the EU, the above procedure is also fully applicable to the invalidation request procedure for EU industrial designs.
Whether conducting design invalidation proceedings in the UK or the EU, it requires careful preparation and strategic planning. By properly controlling the level of involvement, applicants can manage their budgets effectively and strive for the best possible outcome.
I hope the above introduction can help you better understand and deal with the challenges of invalidity of design claims.
