That is one of the key messages from the latest edition of a review of design decisions, carried out by the MARQUES designs team. The report reviews the first 549 invalidity decisions, as well as Board of Appeal and EU General Court cases.
The chair of the team, David Stone of Simmons & Simmons, told Managing IP that the report shows that the proportion of successful challenges to registered designs has fallen from 66% to 62%.
"This is not what we expected," said Stone. "Part of the aim of the report when we started was to help people invalidate invalid designs."
He said that the evidence seems to suggest that businesses are reluctant to challenge invalid designs by monitoring the register, and would rather wait until the rights are enforced.
But Stone warned that this meant that invalid designs remain on the register, may be recorded with Customs and can be used to obtain ex parte injunctions in some countries, such as Germany.
As the fee for filing an invalidity action is relatively low, and it is now pretty clear what standards apply, he encouraged companies and practitioners to consider them: "In areas where businesses are quite close in products, if you think you might infringe a design then you should look to invalidate it."
Even though invalidity cases can take time, Stone added that a court might take account of the fact that an action has been filed.
He told Managing IP the review showed that decisions from the invalidity division at OHIM are "remarkably consistent" though he added that there is less consistency between the division and the Third Board of Appeal, which hears appeals in design cases.
In particular, the two bodies tend to take a different approach to assessing who is the informed user, and whether that is a legal fiction or should have a legal personality.
For example, in a case about colanders the Board of Appeal said: "The informed user ... is therefore whoever habitually purchases [colanders]."
This is not helpful, said Stone: "It shows that it is a mistake to try to give personality to a legal fiction."
By extension, he asked, is the informed user of toys a child? And is the informed user of dog biscuits a dog?
The General Court has addressed the informed user in a number of cases, but the Court of Justice has yet to do so.
Stone said he hoped its ruling in Grupo Promer Mon Graphic SA v OHIM, concerning discs in crisp packets, would clarify the question. The judgment is expected before the end of this year.
Another designs case, regarding Stabilo highlighter pens, is also pending before the Court and is likely to address another controversial issue - the interaction between trade marks and designs.
In 2007 a Board of Appeal decision, which has not been further appealed, upheld the invalidation of a logo design for Midas based on a trade mark for the word Midas registered for household appliances.
Stone said he thinks that decision is wrong as the owner of the Midas mark (which does not have a reputation) should not be able to prevent any use of the word in an RCD.
This logic would mean that a trade mark for a single letter or small group of letters could be used to invalidate a large number of RCDs. "Can the word Apple, registered for computers, invalidate all RCDs that include the word Apple?" asked Stone.
MARQUES members can read the full report on the organisation's website.
