Notes on the Application Form for a Declaration of Invalidity of a Registered Community Design

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (OHIM) Trade Marks and Designs Notes on the Application Form for a Declaration of Invalidity 1. General remarks 1.1 Use of the form This form is made available by the (OHIM) pursuant to Article 68 of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (CDIR). The form may be obtained free of charge from the OHIM and may be downloaded from the OHIM s website ( The form may also be copied freely. Applicants or their representatives may use forms of a similar structure or format, such as forms generated by computers on the basis of the information contained in the application form. Where such electronically generated forms are used, the use of attachments may be avoided by simply extending the electronic version where further space is required. The correct completion of the application form provided by the OHIM ensures that the application meets the formal requirements set forth in Article 28 CDIR. Therefore, the use of that form is recommended. However, applicants may use their own form. It is recommended that the form be completed as far as possible, including the evidence required, at the time of filing. This will facilitate and expedite the handling of the application. The applicant must submit an application form for each challenged Community design. For any information, the OHIM may be contacted on the following telephone number: (34) Sending forms Completed forms should be sent directly to the OHIM in Alicante. Forms, as well as any other communication related to the invalidity proceedings, sent by mail should be addressed as follows: Receiving Unit Communications sent by special delivery, such as courier services, should be sent to: Receiving Unit, E Alicante, Spain Tel. (+34) Fax: (+34)

2 Communications by fax should be sent to the following OHIM fax number: Applicants are reminded that transmission by fax is not appropriate for graphical representations of designs. Therefore, where an application includes a graphical representation in an attachment, it should be sent by mail. 1.3 Language The application must be filed in the language of the proceedings. The language of the proceedings is the filing language of the challenged Community design. If the filing language is not one of the languages of the OHIM, the language of the proceedings is the second language indicated in the challenged Community design. Where the application is not in the language of the proceedings, the OHIM will request a translation of the application into the language of the proceedings. 2. The form 2.1 Applicant/representative reference Applicants or representatives may indicate their own reference of no more than 20 characters in the space provided. e.g.: initials, string of letters, etc. The OHIM will use this reference to verify fee payment (i.e. to check that a payment corresponds to a given application). 2.2 Applicant If the applicant has been previously allocated an ID number by the OHIM, it is sufficient to indicate that ID number and the name. Otherwise, the applicant has to be identified by indicating its name together with its address and nationality and/or state of incorporation. Where the information provided by the applicant is not sufficient to prove unambiguously its identity, the application is inadmissible. The legal form field is mandatory for legal entities. However, if you wish the legal form to appear in official publications, you must also include it as part of the name in the field above. If it is not included, it will not appear in publications or certificates. 2.3 Representative Representation is mandatory for all applicants, either natural or legal persons, that have neither their domicile nor principal place of business nor a real and effective industrial or commercial establishment in the Community. All other persons may represent themselves or choose to appoint a representative in the application form. 2

3 Representatives must indicate their names together with their ID number allocated by the OHIM. Where such an ID number is not available, the appropriate information relating to the existing/newly appointed representative must also be given in the application form. Representation before the OHIM may be exercised by professional representatives who fall into one of the two following categories: legal practitioners qualified in a Member State who are entitled to act in that Member State as representatives in trade mark or design matters, as the case may be, and who have their place of business in the European Community, or professional representatives entered on the list maintained by the OHIM. Professional representatives entered on the list for Community trade marks matters may act for design matters. On the other hand, a professional representative entered on the list for Community design matters may not act for trade mark matters. The applicant may also act through an employee. Where an employee is appointed, the name of the employee must be indicated in the representative box. Employees of legal entities with their domicile or principal place of business or a real and effective industrial or commercial establishment within the European Community may represent other legal entities if (and only if) economic connections exist between the two legal persons, such as common ownership or control. This also applies when the applicant is a legal entity from outside the European Community. In these cases, information relating to the legal entity whose employee acts on behalf of the applicant, and the basis of economic connections (parent company, subsidiary, branch etc.) must be provided in an attachment. The OHIM will thus communicate with the representative if appointed. Filing an authorisation for the representative is not required, except where an employee of the applicant has been appointed as representative. 2.4 Challenged Community Design The applicant must indicate the registration number of the challenged Community design together with the name and the address of the holder of that Community design. This information can be found in the Community Designs Bulletin available online at Where the information provided by the applicant does not suffice to identify unambiguously the challenged Community design, the application is inadmissible. 2.5 Grounds The applicant must state at least one ground of invalidity according to Article 25(1) CDR by ticking at least one of the three boxes. Ticking the box other(s) means that at least one of the grounds of Article 25(1)(c) to (g) CDR is stated. In the case of other(s), the applicant has to provide evidence with the application that he/she is entitled to invoke any of those other grounds. Grounds cannot be stated after the date of filing of the invalidity application. The invalidity proceedings initiated by the application are limited to the grounds stated in the application. 2.6 Substantiation The applicant must submit an attachment (see below) in duplicate indicating facts, evidence and arguments in support of the grounds as stated. Grounds which are not substantiated by the applicant will be rejected by the OHIM. The OHIM does not provide facts, evidence or arguments on its own motion. 3

4 2.7 Payment of fees Payment of fees must be made in euro. The fee for the invalidity application is 350. The fee must be paid together with the application. The applicant must choose one of the four payment options by ticking the corresponding box. The application is not deemed to have been filed until the payment of the fee of 350 has been received by the OHIM. Where the payment is made by current account or by attachment of a cheque, the application is deemed to have been filed once it has been received by the OHIM. Payment (all bank charges to be met by the payer who should instruct the bank accordingly) can be effected by: - Debiting a current account held with the OHIM, indicating the number of that account; - Making a transfer, in euro, to a bank account of the OHIM, indicating the name, address and reference number of the applicant or representative, and the type of fee to which the payment refers as well as the date on which the transfer was made; Current accounts may be opened by applying in writing to the OHIM at the following address: Finance Department Telephone: (34) Fax: (34) Transfers should be made to one of the following OHIM bank accounts: Banco Bilbao Vizcaya Argentaria Swift code (BIC): BBVAESMM IBAN ES La Caixa Swift code (BIC): CAIXESBB IBAN ES Signature The application form must be signed and the name of the signatory must be indicated. 3. Attachment For each ground invoked by the applicant, he/she must indicate the facts in support of the ground and provide evidence to prove those facts. Furthermore, the applicant must set out 4

5 arguments explaining the significance of the facts and evidence to the alleged invalidity of the challenged Community design. Where the applicant challenges the Community design on the ground that it is not a design within the meaning of Article 3(a) CDR, the facts, evidence and arguments given by the applicant must demonstrate that the subject matter of the challenged Community design is not an appearance of a product or a part of a product. Where the novelty or individual character of a Community design are contested (Article 25(1)(b) CDR), the applicant must supply a reproduction of prior design(s) anticipating the challenged Community design together with evidence that the prior design(s) became available to the public before the priority date of the challenged Community design. Where the applicant claims that the registered holder is not entitled to the Community design by virtue of a court decision (Article 25(1)(c) CDR), the applicant must submit a copy of that court decision entitling him to the Community design. that it is in conflict with a prior design right (Article 25(1)(d) CDR) which has been published after the priority date of the challenged Community design, he/she must supply a representation and the particulars of that right together with evidence that he/she is the holder of that right. that it constitutes an unauthorised use of a distinctive sign or a work protected by copyright (Article 25(1)(e) or (f) CDR), the applicant must supply a representation and particulars identifying the sign or the work together with evidence that he/she is the holder of that right. that it constitutes an improper use of any item listed in Article 6ter of the Paris Convention, or of badges, emblems and escutcheons other than those covered by the said Article 6ter and which are of particular public interest in a Member State (Article 25(1)(g) CDR), the applicant must supply a representation and particulars of the relevant item together with evidence that he/she is concerned by that improper use. 5