Community DesignThe ACTION is brought against the decision of the Third Board of Appeal of EUIPO of 19 July 2018 (Case R 1197/2017-3), relating to invalidity proceedings between Aroma Essence and Refan Bulgaria. Refan Bulgaria OOD is represented by the team of IP Consulitng, they are holder of the Community design filed with the European Union Intellectual Property Office (EUIPO). 

On 13 September 2016, the applicant, Aroma Essence Ltd, filed an application for a declaration of invalidity relating to the contested design, claiming that it lacked novelty and individual character, pursuant to Articles 5 and 6 of Regulation No 6/2002. By decision of 10 April 2017, the Invalidity Division declared the contested design invalid for lack of individual character on the basis of prior design. On 5 June 2017, the holder of the contested design filed an appeal against the decision of the Invalidity Division. By decision of 19 July 2018 (‘the contested decision’), the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision and rejected the application for a declaration of invalidity of the contested design. 

The European Court confirms the decision of the Third Board of Appeal of EUIPO and dismisses the appeal filed by Aroma Essence.

The conclusion of the court is that when the application for a declaration of invalidity is based on the lack of novelty and individual character of the RCD, it must contain, inter alia, the indication and reproduction of the prior designs that could form an obstacle to the novelty or individual character of the RCD and documents proving their existence (para. 24). Making reference to the previous decisions, without elaborating further, does not satisfy the requirement to demonstrate the existence of a prior design identical to the contested design (para. 29). It is for the applicant to make sure that all prior designs relied on are clearly identified and reproduced, given that invalidity proceedings are inter partes proceedings (para. 30). Moreover, the Office must invite the invalidity applicant to rectify the irregularities only where the application is inadmissible (para. 33).
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