February 2023
Industrial Design Registration: the Basic Requirements and what Rihanna taught us
Ioannis Psarakis, Lecturer, LL.M (III), PhD Cand.
Recently, decisions numbered 121528, 121568, 121527, 121567, 121525, and 121526 of the Invalidity Division of the European Union Intellectual Property Office (EUIPO) in Alicante were issued, rejecting in their entirety as substantively unfounded the invalidity requests filed by a foreign company based in Dubai against the registered Community designs of our client. It is noteworthy that our client’s |Registered Community Designs (RCDs) are incorporated into food storage bags, which enjoy widespread popularity in both the Greek and European markets.
Specifically, the opposing party based its invalidity requests on the legal grounds of lack of the substantive conditions of novelty and individual character. However, the Invalidity Division of the EUIPO rejected the contested invalidity requests because the opposing party, with the evidence submitted, failed to adequately and clearly demonstrate that prior to the filing of the registration application for our client’s Community designs, other earlier designs, which are either identical to our client’s designs or create the same overall impression on the informed user, had been made available to the public. This was because the evidence submitted to support the requests did not meet the requirements established by the case law of both the Union courts and the EUIPO itself regarding the proof of disclosure of earlier designs on the internet.
Specifically, the opposing party submitted mere website excerpts purportedly depicting the earlier identical designs according to its assessment, from which the indication of the source, namely the full electronic address of the respective website, was missing, while in some cases the date indication was also missing. These excerpts were the product of the opposing party’s intervention on the screenshot or printout of the respective website, essentially attempting to isolate only the part depicting the purportedly earlier identical design. To cover these deficiencies in its evidence, the opposing party provided alongside the excerpts, and in each case outside their body, the electronic addresses (hyperlinks) that purportedly led to the respective websites. Additionally, the opposing party submitted excerpts from e-commerce platform websites, next to which consumer comments with specific date indications appeared next to the purportedly earlier identical designs. However, these comments did not refer to the depicted product but to other products offered by the particular merchant through the specific platform. Since the opposing party did not sufficiently and conclusively prove the fact of prior disclosure of the purportedly earlier identical designs, the Invalidity Division of the EUIPO rejected its cancellation requests, as proof of prior disclosure is a prerequisite for the assessment of the substantive conditions of novelty and individual character.
Particularly enlightening among other things for understanding these issues are the following considerations from the aforementioned decisions of the Invalidity Division, on which the rejection was based: '[...] However, the applicant did not provide the Invalidity Division with actual full printouts or screenshots from websites containing a clear indication of the source where the content was taken (e.g. website identifiers and/or URLs), all the relevant information related to the products and the designs invoked, and their date of disclosure. The URLs added to most of the documents (except those related to earlier designs D5 and D6) comprising pictures of the invoked designs and some comments with dates cannot replace the required documents proving the existence and disclosure of the invoked prior designs. Hyperlinks, per se, regardless of whether they are active or inactive, cannot be considered sufficient evidence of the design’s disclosure (as explained in the Common Communication of April 2020 “Criteria for Assessing Disclosure of Designs on the Internet”, CP10, https://www.tmdn.org/#/practices). This is because the information accessible through a hyperlink might later be altered or removed and it might be difficult to identify the relevant information (the design, date of disclosure, etc.). Therefore, to be considered valid evidence of disclosure, the hyperlinks and the applicant’s compiled documents should have been supported by additional evidence such as actual website printouts or screenshots showing the real website contents. Moreover, to constitute valid evidence of disclosure, printouts or screenshots, or information contained therein, should not be manually modified or otherwise altered. However, no such evidence was submitted by the applicant[...]However, it cannot be established from where and when screenshot (a) of Annex 9 was taken, since it does not contain any date or clear website identifier. Therefore, it does not have any probative value in relation to the disclosure of earlier design D2[...]This evidence indicates that the product has been offered for sale on the Etsy commercial website. However, there is no indication as to the date from which this particular product has been offered for sale on this website. There are three shop reviews in screenshot (b), dated 17/01/2018, 19/12/2017 and 28/11/2017. However, as can be seen from the screenshot, they all relate to different products[...]Although screenshot (c) contains the title “25 Pretty Things That Will Make You Smile” and an indication that the article was posted on 17/11/2016, it does not contain earlier design D9. Screenshot (d), although containing the design in question, does not contain any date. In the absence of a full printout or any other indications, it cannot be established that both these screenshots were taken from the same article published on the BuzzFeed website. Therefore, the evidence is unable to prove the effective disclosure of prior design D9 before the filing date of the contested design [...]'
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