EUIPO Board of Appeal decision R 0005/2024-3 addresses a significant issue in Community design law, clarifying the evidentiary requirements for proving that a design has been disclosed.
The Case
On October 26, 2018, a company filed a Community design application, which was later transferred to another company.
On September 22, 2022, the latter filed a nullity action against the acquired design, alleging a lack of novelty and individual character under Articles 5 and 6 of the Community Designs Regulation (CDR), arguing that a similar design had been disclosed online prior to the filing date. In support of this claim, screenshots of web pages accompanied by direct hyperlinks to the pre-existing content were provided.
The Cancellation Division declared the contested design null and void on November 2, 2023, but the unsuccessful party appealed on January 2, 2024.
Issues Addressed by the Board of Appeal
Under Articles 4-6 CDR, a design is protected if it is new and has individual character.
To assess these requirements, it is necessary to determine whether the design was disclosed to the public before the filing or priority date, in accordance with Article 7 CDR.
The Board of Appeal’s decision focuses on two main issues.
Firstly, the Board examined whether the provided hyperlinks were sufficient to prove that the design had been made accessible to the public. It was highlighted that a hyperlink alone does not constitute proof of disclosure unless corroborated by other elements, such as a certain publication date of the content associated with the link, evidence that the content was actually accessible to the public at the time of publication, and the absence of access restrictions, such as passwords or visibility limitations.
In this case, the provided links were not accompanied by sufficient technical evidence, and it was not possible to verify whether the web pages were accessible without restrictions. Secondly, Article 7 CDR requires that the disclosure be such as to enable the public to ascertain the design through the normal channels of trade.
The Board emphasized that the burden of proof lies with the party seeking nullity and that it must demonstrate not only that the design was available online but also that industry operators could reasonably have accessed it.
Evidentiary Standards
A central point of the decision concerns the level of proof required to demonstrate disclosure.
The Board clarified that the dissemination of a design on the Internet can constitute publication. However, for such publication to be considered invalidating, concrete evidence of the public accessibility of that design must be presented. The mere indication of a hyperlink is insufficient, even if the link is active. The reason for this rigidity is that information accessible via hyperlinks or URLs can be modified, removed, or made difficult to identify over time. Therefore, hyperlinks must be corroborated by additional evidence, such as screenshots, certified copies of web pages, or other documents that guarantee the permanence and integrity of the information at the time of disclosure.
The Board’s decision highlights the inherent difficulties in using digital evidence in a legal context.
The Internet is a dynamic medium where content can be modified or deleted without notice. This factor poses significant challenges for applicants seeking nullity, who must demonstrate that a prior design was accessible to the public at a specific time and in a precise form. Furthermore, the decision raises questions about the balance between practicality and legal certainty.
On the one hand, requiring concrete and verifiable evidence ensures greater protection of the validity of registered designs, safeguarding holders from unfounded challenges. On the other hand, such a burden of proof could discourage applicants from initiating nullity proceedings, especially in cases where evidence of disclosure is only accessible in digital form.
Conclusion
The Board of Appeal’s decision provides essential operational guidance. It is crucial to collect and preserve authentic copies of digital evidence, including screenshots of web pages and time stamps. Sources of online evidence must be carefully selected, prioritizing authoritative and documented sites.
Hyperlinks can be used as support but must be accompanied by additional evidence that guarantees their reliability and permanence.
In an increasingly digital era, this represents a key element in ensuring the protection of intellectual property rights and the correct application of European design law.
Carlo Callea