European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

Article 11 of Directive No 98/71 provides an exhaustive list of grounds for refusal or invalidity of the registration of a design.

The non-compliance with the definition of design in Article 1(a) of the directive or of the requirements of protection (lack of novelty, of individual character, disclosure to the public) are absolute grounds for refusing registration (Article 11(1)(a) and (b)). The first ground may be relied upon by any trader whereas the second ground may be relied upon only by some traders specifically designated by the directive. The applicant for or the holder of the registration who is refused the right for non-fulfillment of the substantial conditions of protection may propose an amended form of the design insofar as the criteria of awarding of the protection and the identity of the design are retained. Registration or maintenance in an amended form may include, according to the directive, registration accompanied by a partial disclaimer by the holder of the design right or entry in the design Register of a court decision declaring the partial invalidity of the design (Article 11(7)).

The ground derived of the fact that the applicant for or holder of the design right is not entitled to it under the law of the Member State concerned (Article 11(1)(c)) may be invoked only by the holder of that right (Article 11(4)), while the ground derived of a conflicting situation with a national or Community design previously filed but made available to the public after by reason of the time-period for publication of the filing, can be invoked only by the applicant for or holder of the right at issue (Article 11(1)(d)). In the latter case, the Member States may confer on the appropriate authorities a right to bring an action for invalidity on their own initiative (Article 11(6)) .

In order to settle any conflicts between right of design and any other intellectual property right, the directive leaves it to the Member States to include in their national law three other grounds for refusal or invalidity of the registration (Article 11(2)) :

- use of a distinctive sign in a subsequent design which confers on the right holder the right to prohibit such use,

- unauthorized use of a work protected under the copyright law,

- improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property, or of badges, emblems and escutcheons other than those covered by Article 6ter of such Convention which are of particular public interest in the Member State concerned.

The first two grounds may be invoked solely by the applicant for or the holder of the conflicting right (Article 11(4)). The last ground, which also appears in Directive No 2008/95 on trademarks , may be invoked solely by the person or entity concerned by the use (Article 11(3)).

The directive states that the registration of a design may be declared invalid even after the right has lapsed or has been surrendered (Article 11(9)). It may further be partial in the case of a registration maintained in an amended form.

The same applies for abusive use of one of the elements listed in Article 6ter of the Paris Convention.

Directive No 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks, OJ L 299-25 of 8 November 2008, 25, Article 3(1)(h). See No 22.02.

282. Grounds for refusal or invalidity of the registration