The team of IP Consulting provided arguments that successfully stood ground before the Invalidity Division of EUIPO.
The applicant filed an application for declaration of invalidity against a RCD. It suggested that the contested RCD lacked novelty and individual character in relation to its six earlier EUTMs and to its own RCD. The holder of the contested RCD provided his own arguments. They were rejected by the Invalidity Division.
A design is considered new if no identical design has been made available to the public before the application date for registration of the design or the date of priority. A RCD has individual character if the overall impression it produces on the informed users differs from the overall impression produced by any design that has been made available to the public before the date of filing of the application for registration or the date of priority. For the purpose of applying Articles 5 and 6 CDR, the tests of novelty and individual character, a design will be deemed to have been made available to the public if it has been published following registration or otherwise disclosed. The onus to prove the latter is on the invalidity applicant. It was accomplished by submitting extracts from the Office database showing the sign and its date of publication.
The Invalidity Division found out that the two designs produce very similar overall impression. The differences between the designs couldn’t be deemed sufficient for the contested RCD to produce a different overall impression on informed users from that produced by the earlier design. Because of that, the application is upheld and contested RCD is declared invalid.