Application for cancellation of registered designs
Registered designs in the Federal Republic of Germany and within the European Community in front of EUIPO are so-called unexamined intellectual property rights. The designs will be registered by the aforesaid offices without a substantial examination of the requirements of design protection. However, the respective Officer will only check the formal requirements for a design registration, e. g. the reproduction of the design itself, the right class of the Locarno Classification/or the name of the product itself and the payment of the necessary official fees. Neither the German Patent and Trademark Office nor the EUIPO carry out an examination of the substantial requirements for protection of a registered design, e. g. novelty or specific character of the newly applied design.
Regularly, there will be a first assessment of the material requirements of the protectability of a design within the legal proceedings in case of an infringement of a registered design. In case of an infringement of a registered design the infringer will carry out a proper assessment of the requirements for a valid design registration and will challenge the protectability of the registered design by filing a petition to cancel the registered design due to lack of novelty or specific character. In any case of filing an application for canceling a registered design the proprietor of the registered design has to present proper proof that the challenged registered design was new and achieved the necessary specific character in comparison with elder registered designs. Novelty of a registered design is lacking in case that the identical design has been presented prior to the public by any third party or has already been registered as a design with the same office or with a different office.
In case the application to cancel the registered design is based on the lack of specific character, then the identical design has not been published prior to the public or registered as a design with one of the respective offices. However, a prior design comprises the essential features in comparison with the challenged design and the informed user got the impression that there is no substantial difference between the two designs by comparing them at the same time.
Regularly, the greatest burden in any case of an application for cancellation of a registered design is to present the proper proof of the data of a prior publication of the design which is novelty destroying or the specific character of a registered design.