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Invalidity proceedings

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Invalidity proceedings before the DPMA

During the registration procedure before the German Patent and Trade Mark Office (DPMA), only the formal requirements and a few substantive requirements for design protection are examined, namely the eligibility of the design, any contravention of public policy or public morals, and the misuse of a state emblem or other symbol of public interest. The remaining grounds for invalidity – in particular, lack of novelty and individual character of the design, and conflicting earlier rights – are only examined by the DPMA in invalidity proceedings that may follow registration.

These invalidity proceedings before the DPMA are conducted only upon application by a third party. If the application is withdrawn, the proceedings are not continued ex officio.

Before the ordinary courts, the invalidity of a registered design may be asserted by way of a counterclaim for invalidity in the context of design infringement proceedings brought on the basis of the design, or as a defence in proceedings for interim relief concerning design infringement.

If, in invalidity proceedings before the DPMA or as a result of a counterclaim in design infringement proceedings before the ordinary courts, it is established that the design is invalid, it is removed from the design register. The protective effects of the design are then deemed never to have taken effect from the outset. By contrast, a successful plea of invalidity in proceedings for interim relief before the ordinary courts does not lead to the cancellation of the design, but only has effect between the parties to the dispute.

Before filing an application for invalidity, it is generally advisable to request the design proprietor to voluntarily cancel the design. This is because the invalidity proceedings – which are subject to fees and involve a risk of costs – become unnecessary if the design owner complies with the request for cancellation (for further details on the risk of costs, see Who bears the costs of the proceedings?).

Against which designs can an application for a declaration of invalidity be filed with the DPMA?

An application for a declaration of invalidity may be filed with the DPMA

  • against an international design registration, i.e. against a design registered under the Hague Agreement Concerning the International Registration of Industrial Designs, the protection of which extends to the territory of the Federal Republic of Germany. In the case of applications against an international registration, the application for a declaration of invalidity is replaced by an application for a declaration of invalidity for the territory of the Federal Republic of Germany.

The provisions set out above and below also apply to applications for a declaration of invalidity against an international design registration; in such cases, the terms "invalidity proceedings", "application for a declaration of invalidity" and "grounds for invalidity" are to be replaced by the terms "proceedings for a declaration of invalidity", "application for a declaration of invalidity" and "grounds for invalidity".

Registered European Union design rights cannot be examined by the DPMA to determine their eligibility for protection. The externer Link European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for handling applications for a declaration of invalidity against a registered European Union design right.

What are the grounds for annulment? Who can invoke them?

Absolute and relative grounds for invalidity may be raised in the application for invalidity. Multiple grounds for invalidity may be cited. The grounds for invalidity must be clearly stated.

For each ground for invalidity raised, the facts supporting the claim must be set out and, where necessary, evidence must be cited. As a general rule, the German Patent and Trade Mark Office does not, on its own initiative, carry out any investigations to clarify the facts of the case.

The application for revocation defines the subject-matter of the proceedings. The DPMA therefore examines only the grounds for revocation set out in the application. Whether further grounds for revocation can be raised during the course of the proceedings depends on the stage the proceedings have reached.

Absolute grounds for invalidity are:

  • misuse of a state emblem or other symbol of public interest

This ground for invalidity may only be invoked by institutions affected by the unauthorised use of the symbol. These are generally the State and the public authorities that use the symbol.

However, anyone may invoke the following absolute grounds for invalidity. No legal or economic interest in the cancellation of the design is required:

  • lack of designability
  • lack of novelty or individual character
  • being purely technical in nature
  • connecting elements that are necessary to ensure the precise fit required for the functioning of two products
  • contravention of public policy or public morality

Regarding the ground for invalidity based on lack of novelty and individual character: A design is novel and has individual character if its overall impression differs from the overall impression of any other design that had already been disclosed at the time of filing the application for that design. Whether and when a design has been disclosed depends on whether and when the relevant circles of experts had the opportunity to become aware of the design. For the requirements regarding disclosures on the internet, see the Common Communication from the European Offices on " pdf-Datei Criteria for assessing disclosure of designs on the internet (3,95 MB)"

Relative grounds for invalidity are:

  • copyright
  • earlier registered designs
  • earlier trade marks and other earlier signs with distinctive character

Relative grounds for invalidity may only be invoked by the respective proprietors of the above-mentioned rights.

How do you file an application for annulment?

An application for the determination or declaration of invalidity of a national design may be submitted in paper form pdf-Datei Antrag auf Feststellung oder Erklärung der Nichtigkeit eines eingetragenen Designs (1,34 MB) ((in German, application for the determination or declaration of invalidity of a registered design), with an electronic signature using the DPMAdirektPro software, or without an electronic signature using the DPMAdirektWeb software.

An application for a declaration of invalidity of an international design registration may be filed in paper form pdf-Datei Antrag auf Feststellung der Unwirksamkeit einer internationalen Designeintragung für das Gebiet der Bundesrepublik Deutschland (1,27 MB) (in German, application for the determination of invalidity of the effects of an international design registration) or electronically, with a digital signature, using the DPMAdirektPro software.

There is no requirement to be represented by a solicitor. The application does not therefore have to be submitted by a solicitor acting on your behalf, nor is it necessary to appoint a solicitor for the subsequent proceedings.

A fee is payable for an application for a declaration of invalidity (fees for applications for a declaration of invalidity). The fee must be paid within three months of receipt of the application. The application will only be served on the design proprietor once the fee has been paid. If the fee is not paid within the prescribed period, the application shall be deemed to have been withdrawn.

How does the process work?

Once the application for a declaration of invalidity and the application fee have been received, the application is served on the design proprietor, who is given the opportunity to file a statement of opposition.

If the design proprietor does not file an opposition to the application for a declaration of invalidity within one month of service of the application, the design will be declared invalid without a substantive examination.

However, if the design proprietor files an opposition to the application for a declaration of invalidity within the time limit (the grounds for the opposition may be submitted at a later date), the proceedings will continue on a contentious basis. A decision on the application is then made on the basis of the facts and evidence presented by both parties. Where appropriate, a hearing is held beforehand.

A three-member panel consisting of legal experts from the German Patent and Trade Mark Office (Design Department) is responsible for deciding on the application for a declaration of invalidity. If necessary, a patent examiner may be called upon to serve as the fourth member of the panel.

An appeal may be lodged with the Federal Patent Court against the Design Division’s decision, which takes the form of a ruling. The time limit for lodging an appeal is one month from the date of service of the ruling.

Who bears the costs of the proceedings?

Before lodging an application, the financial risk involved in nullity proceedings should be taken into account. The costs of the proceedings include the costs incurred by all parties involved, including the costs of any legal representatives. The rules on costs set out in the Code of Civil Procedure apply. Under these rules, the losing party generally bears the costs of the proceedings.

There is one important exception to this:
The design proprietor is also deemed likely to lose the case if they have not opposed the application for a declaration of invalidity and have expressly consented to the cancellation of the design vis-à-vis the DPMA within the one-month opposition period. However, in the event of such consent to cancellation, the applicant must bear the costs of the proceedings if the design proprietor has given no cause for the application for a declaration of invalidity and invokes this fact (no ex officio investigation). As a general rule, a design proprietor does not give cause for an application for a declaration of invalidity if they could not have been expected to anticipate such an application. Anyone who considers a design to be invalid should therefore, as a general rule, before filing the application for a declaration of invalidity, request the design proprietor – setting out the grounds for invalidity and allowing a reasonable period, i.e. usually four weeks – to consent to the cancellation of the design in order to avoid invalidity proceedings.

Is it necessary to submit a claim for costs? What are the deadlines for submitting a claim for costs?

If the design proprietor opposes the application for a declaration of invalidity, the proceedings will continue as contentious proceedings. In this case, a decision on the costs of the proceedings will be made ex officio. It is therefore not necessary to file an application for costs.

By contrast, a decision on the allocation of costs is made only on application if the design proprietor does not oppose the application for a declaration of invalidity. In this case, the application for costs must be filed within one month of the decision on invalidity becoming final, i.e. as soon as the time limit for appeal has expired.

A decision on the allocation of costs is also made only upon application if the applicant and the design proprietor mutually agree to declare the proceedings settled, or if the applicant withdraws the application for a declaration of invalidity. In these cases, the invalidity proceedings are discontinued by order. The application for costs must then be filed within one month of service of the order discontinuing the proceedings.

Picture: iStock.com/Lorerock81

Last updated: 20 July 2026