The criteria for novelty and recognizability in industrial designs
When it is possible to defend against pre-disclosure.
In the world of industrial property, the requirement of novelty is fundamental to obtain a valid title of protection. However, for industrial designs, this requirement is more flexible than, for example, patents.
This article delves into the invalidating effect of pre-disclosure and explains what defences the design owner can use to oppose a request for nullity.
Index:
- When does pre-disclosure in industrial designs invalidate the title?
- When can we defend ourselves?
- The Court of Venice reaffirms the principles of protection
- Conclusions: attention to pre-disclosure
When does pre-disclosure in industrial designs invalidate the title?
In order to obtain a valid registration of a design or model, it must meet the novelty requirement: it must not have been made public before the date of filing of the application. However, the novelty is not affected by the disclosures made, by the owner or his successors, during the 12 months preceding the filing of the application for registration: the oldest disclosures (even from the same design holder) cause the invalidity of the title.
When can we defend ourselves?
In this respect, it is necessary to clarify that – only with regard to designs – according to the Court of Justice of the EU, “a design is considered disclosed once the party claiming disclosure has proved its constituent facts”. Even in the case of disclosures made before the previous 12 months the deposit is therefore allowed to defend against the possible cancellation of the design by proving (or at least providing very plausible proof) the fact that the alleged facts constituting the pre-disclosure were not known in the course of normal commercial activity in the specialized circles of the sector concerned of the European Union (art. 7 of the EU Design Regulation and art. 34 of the Italian law – cpi). The discipline also excludes from the destructive effect of novelty those disclosures not objectively knowable by specialized circles in the European Union of the sector in which the product being designed is located.
By “specialized environments” we mean those that deal commercially, or by profession or collecting, that typology of products.
The Court of Venice reaffirms the principles of protection
The above-mentioned rules have been confirmed, finally, also by a recent judgment of the Section Enterprises of the Court of Venice (case 10799/2022). In the specific case, the Court then opted for a declaration of nullity of the model which was the subject of the litigation, but it is true that the same judges confirmed the principles summarised above, which therefore offer the holder of a design registration many possibilities to defend himself against an application for the invalidity of his title, even when he has disclosed it himself before the 12 months preceding the filing of the application, contrary to what was foreseen, for example, for invention patents or utility models.
Conclusions: attention to pre-disclosure
To conclude, it is good that the interested parties take due account when they intend in any event to try to protect what they themselves have already disclosed.
It is important to pay attention to the disclosure prior to a filing since in cases of utility models or (worse) patents there is no possibility of salvation from nullification. On the other hand, by opting for a design, there is, yes, more flexibility and flexibility and therefore there may be some chance of obtaining a valid title with regard to the novelty requirement.