EUIPO has recently published Common Practice CP10 “Criteria for assessing disclosure of designs on the internet” which is the result of collaboration in the context of Convergence Projects followed by the IP Offices of the European Union Trademarks and Designs Network (EUTMDN).
Internet disclosure evidence may be relevant in assessing whether a design meets the protection requirements. The aim of this Practice is to provide clear and exhaustive guidance to evaluate such evidence, serving as a reference for the European Union Intellectual Property Office, the Intellectual Property Offices of the EU Member States and Benelux, user associations, applicants, right holders and representatives. This practice will enter into force on July 1, 2020.
In general terms, community legislation establishes that a design is considered to have been made available to the public:
- if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, for example on the internet,
- except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. (Article 6 Directive 98/71 / EC of the European Parliament and of the Council of October 13, 1998 on the legal protection of designs).
Common practice establishes the following criteria and recommendations for assessing evidence of disclosure of designs on the internet:
Source of design disclosure on the internet:
Websites such as e-commerce platforms, online databases or social media websites, mobile applications (apps), emails sent for business purposes and file sharing systems are considered sources of design disclosure on the internet despite the fact that access to said systems is restricted with a password or subject to a payment of a fee.
- It is recommended to present the evidence taken from websites by creating a printout or a screenshot in a pdf format that displays a clear image of the relevant design, the date of disclosure and the URL address. In general, the printing date will be assumed to be the date of disclosure, unless another earlier date can be established from the contents of the document or from any other evidence.
- For evidence of disclosure on mobile applications, it is advisable to extract the relevant information from the related website. If a website version is not available, a screenshot from a mobile device can be used as evidence.
- Regarding evidence of disclosure by email, they must show a representation of the design when it was contained in the attachment sent, and clearly indicate the relevant date for assessing disclosure.
- Regarding the extraction of information from file sharing systems, it is advisable to submit additional evidence, such as emails informing users of a new upload. The disclosure date would be the date when the file was uploaded to the system or the date when it has been downloaded.
Establishing the relevant date of disclosure of the design on the internet:
The disclosure date can be established through various tools. Common practice recommends employing website archiving services such as the Wayback machine instead of search engine services, and additionally use, as a precautionary measure, timestamping services from qualified providers that provide a certificate verifying the content that has been stamped (refer for example to the digital SafeStamper service).
Timestamping protects the content contained in a screenshot or a printout from the possibility of a later modification or removal from its original source. Both static websites and browsing sessions can be timestamped. It is important to comment that this type of evidence is not subject to any territorial limitation. Thus, a qualified time stamp issued by a Member State will be recognized as such in all Member States. In addition, it shall enjoy the presumption of the accuracy of the date and time it indicates and the integrity of the data to which the date and time are bound.
Means for presenting the evidence obtained from the internet:
An event of disclosure can be established by submitting various types of evidence. In general, the integrity of the documents presented is assumed so that the mere possibility of manipulating the relevant information is not enough to raise doubts about their probative value.
Evidence of disclosure may be presented in the form of printouts and screenshots, images and videos, metadata, URLs addresses and hyperlinks, and statements in writing, although it should be noted that the latter are not sufficient on their own to prove an event of disclosure.
Regarding the images or videos showing the design, it is recommended to present evidence on when and where the video or image was made available to the public, for example, by providing printed copies of the moment in which the video or the image was announced on a website. In the case of e-commerce platforms, it may be useful to include comments made by users after purchasing the product to determine the date of disclosure of the design.
Exceptions to the availability of designs on Internet:
In general, in view of the global nature of the internet, online content is considered to be available worldwide. Only under certain circumstances events of disclosure would not be considered to reasonably become known to the circles specialised in the sector concerned, operating within the European Union. These circumstances may be due to some restrictions regarding the accessibility or searchability of the information on the Internet. Aspects such as passwords and payments, language and top-level domain names, search possibilities, geo-blocking and confidentiality may be relevant to refute the presumption of disclosure.
Article by Maria Mercè Vidal.
