Guidance

Design: invalidation or cancellation

Published 8 October 2018

1. What is invalidation or cancellation?

Invalidation or cancellation is the legal process to cancel a registered design.

If the design was registered before 9 December 2001 you may apply to cancel it. The grounds for cancellations can be found in Section 11 of the Copyright Designs and Patents Act 1988 (as amended).

You can cancel a design because:

• it was not new or lacked material differences when compared with an earlier design at the time it was applied for
• there are other reasons for which it could have been refused registration

If the design was registered on or after 9 December 2001 you may apply to invalidate it.

A design may be invalidated because:

• it was not new or lacked individual character when compared with an earlier design at the time it was applied for
• there are other reasons for which it could have been refused registration under the amended law

The grounds for invalidation can be found in Section 11ZA of the Registered Designs Act 1949 as amended.

2. What is the cost of an invalidation or cancellation?

How can I apply?

If you want to make an application for invalidity or cancellation, then you must file a Form DF19A. Request to invalidate a design registration accompanied by a £48 fee, which must contain details of the grounds on which the application is based.

The form can be used to either invalidate or cancel a registered design.

What should I do first?

If you are considering making an application, you should approach the registered proprietor to see if you can resolve the matter without the need to resort to legal proceedings. If you file an application without first having contacted the registered proprietor, and the registered proprietor then surrenders the design registration without defending it, you will not be awarded any costs and you will not recover the costs of filing the application.

What should I do if I am notified that my registration may be the subject of an application for invalidity or cancellation?

You may wish to consider obtaining professional legal advice from a registered trade mark, or patent attorney, or a solicitor before you decide how to proceed.

Will the Tribunal be able to advise me on how to prosecute my case?

No, the Tribunal must remain impartial at all times although we can help you with procedural matters.

However, the Intellectual Property Office (IPO) actively encourages parties to mediate as a swifter and less costly alternative to litigation.

Can the IPO mediate my case?

Yes, the IPO employs accredited mediators qualified to mediate all matters relating to the full range of intellectual property.

If you wish to discuss the option of using the IPO mediation service please email mediation@ipo.gov.uk.

Can you recommend a trade mark or patent attorney, or a solicitor?

We cannot provide any recommendation but you can contact the Chartered Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys, or the Law Society.

To whom should I send the DF19A?

You must send the DF19A by email to forms@ipo.gov.uk or by post to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

All other non-fee bearing forms for the Tribunal can be sent via email to Tribunalsection@ipo.gov.uk.

Do I have to send a copy of the DF19A to the proprietor?

No, the Tribunal will send a copy of the DF19A to the proprietor and the Tribunal will copy to the applicant any defence (DF19B) filed in response. However, the Tribunal will not, as a matter of course, copy any other document. To ensure fairness and transparency of proceedings, it is imperative that any correspondence sent to the Tribunal is copied to the other side and contain confirmation that it has been copied.

If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behavior and there may be cost implications at the conclusion of the proceedings.

What happens once the DF19A has been received?

The Tribunal will check the DF19A to make sure that the correct fee has been paid and that sufficient information has been provided for the application to proceed. If further clarification is required, the Tribunal will write to the applicant and allow a short period of time to clarify the grounds of invalidity or cancellation.

When will the registered proprietor know that I have submitted a DF19A?

Once the formalities check has been concluded, the Tribunal will serve the DF19A on the registered proprietor.

What must the registered proprietor do?

The proprietor will have six weeks from the date the DF19A is served to file a DF19B Notice of defence and counter-statement. If the proprietor agrees with anything that the applicant has said in the statement of reasons, he should say so. If the proprietor does not accept something that the applicant has said, he should say why he does not accept the applicant’s grounds.

What if I choose to cancel my registration?

You can cancel your registration by submitting a DF19C Notice by proprietor to cancel a registration.

How much does it cost to file a DF19C?

There is no fee payable with this form.

What happens after I have cancelled my registration?

The design will be removed from the register. However, any ongoing proceedings may still continue.

Will I have to pay any costs if I cancel my registration?

If you cancel your registration before the application is filed, you will not be liable for costs. However, if you surrender your registration after the application is filed, and the applicant has, prior to filing the application, given you a reasonable chance to cancel your registration, then you may be liable for some limited costs.

How much does it cost to file a DF19B?

There is no fee payable with this form.

Can the time period for submitting a DF19B be extended?

No, the period for filing the defence and counter statement cannot be extended.

What happens if I do not file a DF19B?

If no notice of defence is submitted within the period allowed, the Tribunal may treat the proprietor as not opposing the application.

Will I have to pay any costs if I do not file a DF19B?

If you do not file a DF19B and the applicant did not give you a reasonable chance to surrender the registration before filing the application, you will not be liable for costs. However, if you did get a reasonable opportunity to surrender and you put the applicant to the cost of filing the application, then you may be liable for some limited costs.

What happens after the DF19B has been received?

Once the formalities check has been completed and the Tribunal has accepted the DF19B it will be served on the applicant. At the same time the parties will be provided with a timetable to file evidence and/or written submissions.

3. Evidence in design invalidation or cancellation proceedings

What is evidence?

Once the pleadings have been filed, the parties are each given an opportunity, in turn, to file evidence and/or submissions in support of their cases. It is important to note that evidence and submissions are not the same thing. Submissions are written arguments by a party to support its case or comment on the other side’s evidence.

Submissions are not facts and if a party wishes to rely on facts they must be presented as evidence. Evidence is information provided in a Witness Statement to prove the facts of a case.

What is a witness statement?

A witness statement is a legal document setting out the facts of the case as you believe them to be. The information provided must be based on the witness’ own personal knowledge; it should stick to facts that relate to the grounds for invalidation or cancellation and should not be used to present legal arguments or opinions.

The witness statement must clearly identify the proceedings; the witness must give their full name and address’ it must be signed, dated and include a statement of truth.

Do I attach any exhibits to the witness statement?

Any exhibits filed with the witness statement must be clearly identified and referenced with the initials of the witness and numbered sequentially. For example, a witness statement submitted by John Smith with three exhibits would be referred to as JS1, JS2 and JS3.

Each exhibit must have a header sheet which clearly identifies the case reference number and the exhibit. For example, ‘This is the exhibit JS1 referred to in the witness statement made by John Smith dated this …day of…2018.’

Do I have to number all the exhibits?

All individual exhibits of more than 4 pages must be numbered and any evidence submitted with unnumbered pages will be returned. The page number should be applied to the bottom right hand corner of each page.

Does a witness statement have to be sworn under oath?

No, but it must be signed by the person making it and it must be dated and include a statement of truth.

What is a statement of truth?

A statement of truth is a statement signed by the witness to verify that the contents of the witness statement are true. It is worded ‘I believe that the contents of this statement are true’. Failure to provide a statement of truth will result in the witness statement being returned.

What happens if a party does not wish to submit any evidence of facts?

If a party does not wish to file evidence of facts but merely wishes to comment on the other side’s evidence or challenge its validity, then this can be presented as a written submission in the form of a letter.

You must send a copy of your evidence, or written submissions, to the other side in the proceedings.

Can I send my evidence attached to an email?

Yes, but any evidence must be filed in a standard accessible format for example Windows® Media compatible.

Can the time period for submitting evidence be extended?

The period allowed is considered as sufficient in most cases, however the Tribunal may in exceptional circumstances extend the time periods for filing evidence and/or submissions.

How can I apply for an extension of time?

A request for additional time to submit evidence or submissions beyond that which you have been allowed should be made before the expiry of the relevant time in writing.

Any request must be fully supported with reasons as to why the additional time is needed. The request must explain what has already been done to date; what is left to do; what has prevented you from filing the evidence in time; and how much additional time is required. In the event that the request has been made after the set time period has expired, full and detailed reasons for the delay in making the request must also be provided.

When will I know the outcome?

Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions or request a hearing. The Tribunal will indicate whether it believes that a hearing is necessary. It remains open to either party to request a hearing.

Following either a full review of the papers on file, or a hearing, the Hearing Officer will issue a decision in writing. The decision will explain the background to the case and why the Hearing Officer has reached his decision. It will also refer to the relevant law and legal authorities. It may also include an order that one side should pay a contribution to the costs to the other.

What is a hearing?

A party has a right to be heard before any adverse decision is taken against them. The person who decides the case is called a ‘Hearing Officer’.

There are three types of hearings which may occur during the course of proceedings. These are Procedural Hearings, Case Management Conferences and Substantive Hearings.

What is a Procedural Hearing?

Where procedural disagreements arise and a party will not accept the Tribunal’s preliminary view on the matter, a Procedural Hearing may be requested to resolve the issue. Examples of matters which are resolved at such a hearing are the admissibility of the application or the defence and the striking out of particular grounds.

What is a Case Management Conference?

A Case Management Conference (CMC), is a hearing appointed by the Tribunal to decide what needs to be done on a case and by whom. If procedural disagreements arise after a defence has been filed, the matter will usually be resolved by holding a CMC. Examples of matters resolved at such a hearing would be extension of time requests, whether cases should be consolidated (joined together), confidentiality orders, suspension of proceedings, and the cross-examination of witnesses.

At the CMC, the Hearing Officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case. Such directions may include the setting of a timetable and structured framework to ensure that the proceedings are concluded within a timely manner whilst keeping costs to a minimum.

What is a Main Hearing?

The Main Hearing will deal with the substantive issue of the dispute.

Do I have to attend the hearing in person?

No, though you may want someone to attend on your behalf for example an Attorney. If no one attends you may instead rely on written submissions which are submitted before the hearing and copied to the other side.

Hearings are generally held via a video conference link between our London and Newport offices, or on the telephone. In certain circumstances, when for example cross-examination of a witness has been requested, we can arrange for a hearing to be held in person in either London or Newport. Hearings are taken by Hearing Officers who have delegated powers to act on behalf of the Registrar.

What happens at a hearing?

Each party attending will have the opportunity to put their case to the Hearing Officer. The Hearing Officer will ask any questions he or she has.

What does it cost?

There is no charge for a hearing.

However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Tribunal will not cover all the costs of the proceedings and are only intended to provide a contribution towards the costs of the successful party.

4. How to appeal the Hearing Officer’s decision

Can I challenge the Hearing Officer’s decision?

If either party feels that in reaching the decision, the Hearing Officer has made an error on a point of law, or that s/he made an unreasonable decision on the facts, then an appeal can be filed within 28 days from the issue of the decision.

To whom do I appeal?

The appeal can be either to the Appointed Person or to the High Court in England, Wales and Northern Ireland and the Court of Session in Scotland.

What is an Appointed Person?

An Appointed Person is a senior intellectual property lawyer appointed by the Ministry of Justice; s/he is totally independent of the Tribunal.

The Appointed Person offers a low-cost alternative to appealing to the High Court.

How do I appeal to the Appointed Person?

If you wish to appeal the Hearing Officer’s decision you must submit a form DRF55 ‘Notice of appeal to the Appointed Person’. The notice of appeal must include the grounds of the appeal together with the relevant design law and legal authorities relied upon in support of each grounds of appeal.

The Appointed Person will normally make a decision following an oral hearing but a decision may sometimes be taken off the papers. Parties may be represented at the appeal hearing by a wide range of representatives, including solicitors, trade mark attorneys and barristers, or they may be unrepresented.

The appeal is a review of the Hearing Officer’s decision and is not a full re-hearing of the case. An appeal will only be upheld if the Appointed Person is satisfied that there has been a distinct and material error of principle in the Hearing Officer’s decision, or that the Hearing Officer was clearly wrong. At the completion of the parties’ submissions at the hearing, the Appointed Person will normally reserve judgement and issue a written decision at a later date.

The decision of the Appointed Person is final and it cannot be appealed to any higher body.

What does it cost to appeal to the Appointed Person?

There is no charge for an appeal to the Appointed Person.

However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Appointed Person will not usually cover all the costs of the appeal and are only intended to provide a contribution towards the costs of the successful party.

How do I appeal to the High Court?

The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.

If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the Tribunal does not play any part in those proceedings.

What does it cost to appeal to the High Court?

You will need to ask the court for information on court fees and any award of costs should your appeal be unsuccessful.

Can I challenge the outcome of the appeal?

The Appointed Person is an appellate Tribunal whose decision is final. Decisions by the High Court can be appealed, if the party is given leave to appeal, to the Court of Appeal.

5. Costs in invalidation proceedings

Will I be able to recover all my costs before the Tribunal or the Appointed Person?

At the conclusion of any proceedings before the Tribunal the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the Tribunal awards costs from an official scale. The scale reflects a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed. A party without legal representation will be fully reimbursed the cost of any official fees, but will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the proceedings.

What is the scale?

The current scale may be viewed at Tribunal Practice Notice 2/2016.

Will you enforce the costs award if the other side doesn’t pay?

No. The enforcement of any award is a matter for the successful party. An order for costs may be enforced in the same way as any order of the High Court. Failure to pay an award may result in the details of the failure to comply with the costs award being published on the IPO website.