The General Court has maintained Registered Community Design No. 000107834-0025. The decision demonstrates the importance of including all the prior art which will be relied upon in the initial application for invalidation of a Registered Community Design.

Previously, Group Nivelles filed an application for invalidity of the Community Registered Design. Group Nivelles argued that the Community Registered Design was invalid over two different prior publications:

1. an earlier international Registered Design DM/059828; and
2. a product found in earlier published Blücher product catalogues.

The Invalidity Division of the EUIPO didn’t consider the Community Registered Design to be invalid in light of the International Registered Design, but it did consider it to be invalid in light of the Blücher product catalogues. Accordingly, the Community Registered Design was found to be invalid. After appeals to the Boards of Appeal, General Court and then CJEU, this position was maintained.

However, in 2018 the Rapporteur for the Boards of Appeal noted that the Blücher product catalogues were not indicated in the original application for invalidity filed by Group Nivelles, having only been first raised later during the initial invalidity proceedings. Since prior art must be cited in the application as filed and additional prior art cannot be introduced after the application has been filed, the Boards of Appeal issued a further decision. It was held that the Blücher product catalogues should not be accepted as prior art. As such, the only relevant prior art was the International Registered Design. Since the Boards of Appeal considered the Community Registered Design to be new and have individual character over the International Registered Design, the Community Registered Design was held to be valid.

Group Nivelles appealed this decision to the General Court, arguing that a final decision had already been made for the proceedings, which meant all the facts and evidence had been considered. The General Court disagreed, stating that the decision of the Boards of Appeal had been annulled on appeal to the General Court with ex tunc effect, meaning the decision had never been made at all. Further to this, in the original proceedings the matter of admissibility of the Blücher product catalogues was not raised, and so had not been ruled upon. Accordingly, the General Court upheld the decision of the Boards of Appeal.

Group Nivelles have appealed the decision of the General Court to the CJEU.

Despite the decision the Registered Community Design appears to be relatively weak, given the previous finding that it was invalid in light of the Blücher product catalogues and only remains valid because these catalogues could not form part of the proceedings. As such, the Registered Community Design is open to further challenges based on the catalogues, which could well invalidate it. Nevertheless, for the time being it remains valid and in force.

This decision demonstrates that it is important to the success of any application for invalidity to include all the prior art which will be relied upon in the initial application, since there will not be a chance to include further prior art later on. If you have any questions about this decision please contact one of our attorneys.