The European Union Intellectual Property Office (“EUIPO”) has published two Converging Practices – the CP9 Common Practice ‘Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself and the CP10 Common Practice Criteria for assessing disclosure of designs on the Internet’, on the 1st of April 2020.
As our previous article focused on CP9 Common Practice, the following information is in consideration of CP 10 Common Practice (“CP10”).
Background
In December 2015, the European Parliament and the Council adopted the EU trademark reform package, which contained two legislative proposals[1], aiming to approximate the laws of the Member States relating to trademarks. Alongside with new provisions on substantive and procedural matters, the texts established a stronger legal basis for the cooperative work. Under the terms of Article 151 EUTMR, cooperation with the Intellectual Property Offices of the Member States (“MS IPOs”) to promote convergence of practices and tools in the fields of trade marks and designs became a core task for the EUIPO.
Based on this legislative framework, in June 2016, the Management Board of the EUIPO agreed the launch of the European Cooperation Projects. CP10: “Criteria for assessing disclosure of designs on the Internet” is the third convergence project launched by the Management Board, and the tenth overall.
Scope
Due to the growth of e-commerce and the rise in trade operations conducted over the Internet, the disclosure of designs is increasingly made via this channel of communication, giving rise to questions of how to prove online disclosures. This is particularly pertinent given the fact that content placed on the Internet is considered as generally available to the public.
The CP10 objective is to bring clarity, consistency and harmonization regarding the assessment of evidence for proving disclosure of designs on the Internet.
The Common Practice delivers the criteria for assessing disclosure of designs on the Internet and provides recommendations on the following aspects:
- possible sources of design disclosure on the Internet;
- types of evidence used for proving disclosure on the Internet;
- different means for establishing the date of disclosure;
- the exceptions to the availability of designs on the Internet.
Key concepts
A design shall be protected to the extent that it is new and has individual character[2]. It shall be considered to be new if no identical design has been previously disclosed to the public and to have an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any previously disclosed design[3]. Thus, disclosure might be relevant when assessing whether a design meets the requirements for protection.
When assessing disclosure of the design on the Internet, it shall be deemed to have been made available to the public:
(i) if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed;
(ii) except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the European Union.
Moreover, further exceptions contained in Article 6 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (further on “the Designs Directive”) may apply when a design will not be considered as having been made available to the public, namely when it is disclosed:
(i) under the condition of confidentiality;
(ii) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title during the 12-month period preceding its date of filing or priority;
(iii) as a consequence of an abuse against the designer.
When assessing the event of disclosure of a design on the Internet, the following criteria are considered:
- The source where a design has been disclosed on the Internet
Article 6(1) of the Designs Directive does not indicate any limitation as to where an event of disclosure must take place in order for a design to be considered as having been made available to the public. Therefore, in general, a design can be disclosed anywhere in the world, including the Internet.
The most common sources of design disclosure on the Internet are:
a) Websites
There is a large variety of websites where a design can be disclosed, e.g. E-commerce platforms, social media sites or online databases.
b) Applications (“Apps”)
Disclosure of designs can be established through apps, in particular, those associated with online sales, auctions, social networking, etc.
c) Electronic mails
The exchange of electronic mails is widely used in commerce and can be a source where designs are disclosed.
d) File sharing
Making a file that incorporates a design available through a file sharing system (e.g. peer to peer (P2P) or file hosting platforms) might constitute an event of disclosure.
- Establishing the relevant date of disclosure
When assessing disclosure of the design on the Internet, it is necessary to establish the date when it was made available to the public.
- Means for presenting the evidence obtained from the Internet
The Designs Directive does not provide any specific form in which the evidence on disclosure of designs must be submitted. In general, any means able to prove an event of disclosure of a design can be submitted.
Regarding the means for presenting evidence obtained from the Internet, the Common Practice recommends inter alia:
a) Printouts and screenshots;
b) Images and videos;
c) Metadata;
d) URL addresses and hyperlinks;
e) Statements in writing;
4. Exceptions to the availability of the design on the Internet
Once the event of disclosure of a design is proven, there is a presumption that such a design has been made available to the public. Taking into account the global nature of the Internet, in general, online content is available worldwide.
Only under certain circumstances events of disclosure would not be considered to reasonably become known to the circles specialized in the sector concerned, operating within the European Union. This can be due to some restrictions, in particular, as to the accessibility or search ability of the information on the Internet. In order to refute the presumption of disclosure, these exceptions to the availability of the design have to be proven by submitting the respective evidence.
Comments:
When it comes to the sources of a disclosure of a design on the Internet the recommendations of the EUIPO seem to respond to the challenges brought by the digital era, the fast spread of the information and the need to find trustworthy ways of proving disclosure. Some of the most useful directions identified by our Office are the following:
- The evidence taken from a website should be presented by creating a printout or a screenshot of the relevant information presented therein. The evidence submitted should display a clear image of the relevant design revealing its features, the date of disclosure and the URL address. Also, printouts and screenshots should ideally contain information on the source where the content was taken (e.g. URL address), the relevant date and disclosed design, and should not be manually modified.
- If the information is obtained through a printout, its printing date will be assumed to be the date of disclosure, unless another earlier relevant date can be established from the contents of the document or from any other evidence.
- When apps also have a website version, it is preferable that the relevant information is extracted from this version rather than from the app itself. If a website version is not available, a screenshot from a mobile device can be used as evidence.
- When proving disclosure through file sharing, any additional evidence when available, such as e-mails informing users of a new upload, etc., should be submitted.
- Website traffic could be taken into consideration when assessing whether the specialized circles could have accessed its contents. Various options exist to measure website traffic, such as a page view, a page hit and a session, which may also be quantified by the use of web analytics or similar tools.
- When assessing availability of the design on the internet, it is recommended to take into account tagging systems, hashtags and links between search terms and images of the design across different internet platforms.
- On social media platforms, the ‘popularity’ indicators can also be taken into account when assessing availability of the design, such as the number of people reached, views, clicks for the post, reactions, comments, shares, followers and likes
The common practice is intended to be applicable irrespective of the specific proceedings (e.g. ex officio examination of novelty, invalidity proceedings) or the status of the design (i.e. registered or unregistered). Therefore, recommendations are welcomed as they might also serve as guidance for designers or other right holders when disclosing their designs on the Internet or proving such disclosure.
Our Office finds the present recommendations useful as in our experience we have dealt in the past with different interpretations of IP Offices in assessing disclosure of designs, therefore an alignment of practices and clear criteria for the disclosure of the designs on the Internet is most welcomed.
Implementing date
The Common Practice will take effect within three months of the date of publication of the Common Communication.
In Romania, CP10 is being implemented starting with 01.04.2020 and it is applicable to proceedings initiated after the implementation date.
The complete list of the implementing dates for each Member State is available here.
The full version of CP10 Common Practice can be found here.
[1] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (hereinafter ‘Regulation’ or ‘EUTMR’) and the EU Trade Mark Directive No. 2015/2436 (hereinafter ‘Directive’ or ‘EUTMD’).
[2] Article 3(2) of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs
[3] Articles 4 and 5 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.
Author: Andreea Luiza Serghei – see LinkedIn profile.