EU design invalidity actions – EUIPO issues new guidance on phase 2 of EU design reform

Last week, the EUIPO released information on changes to its design guidelines coming into effect with phase 2 of its design reform package on 1 July 2026. We recently wrote about the changes that affect the way EU design applications can be filed, and in particular the admissible types of representations. In this article we now consider the changes relating to EUIPO practice in connection with invalidity actions. The details released by the EUIPO demonstrate a commitment to clarifying, simplifying, and consolidating invalidity procedures and bringing design practice closer to the current trade mark practice.

Electronic application and languages

As of 1 July 2026, invalidity applications will only be accepted by the EUIPO if submitted through the Office’s online services. Applications received by post or fax will no longer be admissible.

If any documents are submitted in a language that is not that of the proceedings, the Office has now shortened the period within which to file a translation from two months to one month.

Online substantiation

It is a requirement that all supporting grounds and evidence in support of invalidity proceedings are submitted along with the application. However, in order to simplify proceedings, the Office will now accept references to online sources, including links, as long as these refer to recognised official online sources, namely DesignView, TMview, WIPO, or official databases of a Member State. Other online references from non-official online sources will still need to be evidenced in the usual way, such as with screenshots and printouts, due to the very nature of links, which may be to content that change over time.

In a similar manner, where it is necessary to evidence national law to support an invalidity ground, the EUIPO will accept references to official online sources, such as the WIPO Lex database, provided these are publicly accessible, free of charge, and in the language of the proceedings.

Different grounds for invalidity

The EUIPO has provided a few clarifications based on case law related to terms of disclosure and grace period.

In particular, although a design must become known in the relevant sector within the EU, it has been clarified that disclosure does not need to occur in the EU to destroy the novelty of a challenged EU design. Neither does the fact that a disclosure targeted an audience outside of the EU prove that the relevant sector in the EU was unaware of the disclosure.

As to the grace period between first disclosure by the designer and the design application, this remains 12 months. In the context of invalidity actions, the Office has clarified that once the right holder submits evidence that a disclosure cited in an invalidity action was its own disclosure, such that it could benefit from the grace period, the burden is placed on the invalidity applicant to challenge such evidence.

Product indications

As per current practice, a product indication according to the Locarno Classification must be included in a design application to allow for the correct identification of the object of the design. In case of invalidity based on lack of individual character, design corpus for the type of product protected will be taken into account and the product indication will be used in determining the relevant field. However, the EUIPO has now clarified that in case of discrepancies between the indication of product and the representation of the design as it appears on the register, the latter will prevail.

Joint suspension request

Parties to invalidity proceedings already have the opportunity to suspend proceedings in case of ongoing negotiations, and the EUIPO is bringing in a change that allows parties to extend this beyond the initial six-month suspension period. In contrast with trade mark practice, in which suspension periods are requested in six-month instalments, the new design practice provides for a first six-month suspension and in case of further extension, the latter will automatically be granted for 18 months. The parties may opt out at any time. According to the EUIPO, this should simplify proceedings and take away some administrative burden from both the parties and the Office. It will be interesting to see if and when the same approach will be applied to trade mark proceedings as well.

Proof of use defence

It is possible to invalidate a design on the basis that it uses a trade mark in force in the EU, but the right holder has the right to request that the invalidation applicant submits proof of genuine use of the earlier mark if the latter is outside of its five-year grace period for non-use. In a small change of practice, but in line with current trade mark regulations, the EUIPO will now require that the request for proof of use is submitted in a separate document as part of the invalidity defence.

Another change of practice is that evidence not only needs to relate to the five years preceding the date of the invalidity application, but it will also need to cover the five years counting back from the date of filing or the date of priority of the contested application, if these two time-periods do not coincide. Also in this case, this brings design procedure in line with trade mark invalidity proceedings.

Conclusion

We will provide further updates as Phase 2 of the reforms come into effect, so follow us on LinkedIn for more news. If you would like to discuss EU designs or have questions about design protection more generally, please contact your usual GJE attorney, or email gje@gje.com.