Invalidation in a Designated Contracting Party

 

The term “invalidation” must be understood as encompassing any decision by a competent authority (whether administrative or judicial) of a designated Contracting Party revoking or canceling the effects, in the territory of that Contracting Party, of an international registration with regard to all or some of the industrial designs covered by the designation of that Contracting Party.

Rule 20

Proceedings concerning such invalidation take place directly between the holder of the international registration, the party who has brought the action for invalidation and the competent authority concerned (Office or tribunal).  It may be necessary for the holder to appoint a local representative.  The proceedings are governed entirely by the law and practice of the Contracting Party concerned.  However, the invalidation of an international registration may not be pronounced without the holder having, in good time, been afforded the opportunity to defend his rights.

The procedures governing such invalidation should be the same as for industrial designs registered directly with the Office of that Contracting Party.  For example, the protection of an industrial design may be revoked in proceedings brought by a third party, or in a counterclaim in infringement proceedings.

Where the effects of an international registration are invalidated (in whole or in part) in a Contracting Party, and the invalidation is no longer subject to any appeal, the Office of that Contracting Party, where it is aware of the invalidation, must notify the International Bureau of the relevant facts, namely:

  • the authority (for example, the Office or tribunal) which pronounced the invalidation;
  • the fact that the invalidation is no longer subject to appeal;
  • the number of the international registration;
  • if the invalidation does not concern all the industrial designs, those which are concerned (either by indicating those industrial designs which are no longer covered or those which are still covered);
  • the date on which the invalidation was pronounced and its effective date.

Rule 20(1)

The International Bureau records the invalidation in the International Register, together with the data contained in the notification.  It also publishes the invalidation in the Bulletin.

Rule 20(2)