http://ipkitten.blogspot.com/2024/09/euipo-clarifies-value-of-printed-social.html
By decision
of 11 September 2024 (R 5/2024), the Board of Appeal of the European Union
Intellectual Property Office (EUIPO) overturned the first instance decision by
the Invalidity Division and denied the evidential value as prior disclosure of
printed screenshots of social media posts (together with their hyperlinks) in
an action for invalidation of an EU registered design.
Background of the case
On 26 October 2018, the Estonian company Eco
Oil OÜ filed the following EU Registered Design No.
5809746-0001 (the contested RCD). The contested RCD was subsequently transferred
to the company Ekomill OÜ (the appellant):
On 22 September 2022, the company Ecosauna
Project OÜ (the invalidity applicant) filed an application for the declaration
of invalidity of the contested CDR based on Article
25(1)(b) CDR and Article
4 CDR, claiming that the contested CDR lacked novelty and individual
character. In particular, the invalidity applicant assumed that wooden saunas
with the shape claimed in the contested CDR, such as the one produced and sold
by the Lithuanian company Kelmolis UAB, existed at least since 2013.
In support
of its claims, the invalidity applicant provided the following evidence:
printed screenshot of a Facebook post on 22 August 2013, with the related
hyperlink, showing an oval wooden building:
printed screenshot of a Facebook post in July 2014, with the related hyperlink,
showing the same oval wooden building:
printed screenshots of Facebook posts, with the related hyperlinks, dated
November 2017:
By decision of 2 November 2023 (the
contested decision), the Invalidity Division of the EUIPO declared the
contested design invalid due to lack of individual character pursuant to Article 6 CDR with
specific regard to the first printed screenshot, considering that the image of
the prior design was published on the internet on 22 August 2013.
January 2024, the contested decision was appealed on the following grounds:
- as
regards to the evidence of prior disclosure, to establish the disclosure event,
the source of the disclosure, the design invoked and the date on which the
design was disclosed must be considered; - the
screenshots provided by the invalidity applicant as evidence do not offer clear
and sufficient proof. For example, on Facebook, users can change the date of a
post, including any photos and videos, to an earlier date; - providing
a link to online content (e.g. a URL) is not sufficient, as the content may
have been altered or deleted. When a printout or screenshot lacks relevant
elements, additional evidence can be filed, but this was not the case here.
The
decision
The BoA focused its attention on the (unproven)
disclosure of prior designs under Article
7 CDR by means of printed screenshots of web pages. Article
28(1)(b)(v) CDIR only provides that “documents proving the
existence of such prior designs” must be filed. It follows that, on
the one hand, the applicant for a declaration of invalidity is free to choose
the evidence that they consider useful to submit in support of their application
for a declaration of invalidity; on the other hand, the Office is required to assess
all the evidence to determine whether they are sufficient to prove prior
disclosure (T-450/08).
To assess the evidential value of a document,
it is necessary to examine the plausibility and accuracy of the information
contained therein, considering the origin of the document, the circumstances in
which it was drawn up, its addressee and whether its content appears reasonable
and reliable (T-450/08).
According to settled case law, the disclosure of an earlier design cannot be
proved by probabilities or presumptions, but must be rather based on concrete
and objective facts ( T-89/22,
T-760/16,
T-166/15,
T-450/08).
Although the appearance of an image of a design
on the internet constitutes a publication within the meaning of Article
7(1) CDR (T-823/19),
the applicant for a declaration of invalidity must provide concrete evidence of
this disclosure event. The indication of a hyperlink is not sufficient in this
respect. Hyperlinks or URLs alone cannot be considered sufficient evidence of
disclosure of an earlier design. Even if they are active, they must be
accompanied by further evidence, such as a printout or screenshot of the
relevant information contained therein (see T
317/05), including the full URL.
The BoA noted that such an approach is
consistent with “CP
10 Common Practice – Criteria for assessing disclosures on the Internet”
(Section 2.4.4, p. 29), which was established to provide guidance on the
sources, reliability and assessment of online evidence. Consequently, if a
screenshot does not contain all the relevant information, i.e. source, date and
representation of the cited prior design, additional evidence must be provided.
This was not the case here: as a result, the BoA dismissed the invalidity
action.
Comment
The question of the relevance of evidence
consisting of screenshots and URLs is becoming increasingly important. Screenshots
and links to web pages can be used as evidence in legal proceedings, but their
admissibility depends on several factors. The legal evaluation is often based
on establishing their authenticity and reliability. Courts and authorities
typically require the party offering such evidence to prove that the
screenshots are an accurate representation of the web page or online content at
the relevant time. This may involve checking timestamps or metadata or using a
witness who can testify to the authenticity of the content.
The EUIPO has recognised the admissibility of
screenshots, including those from YouTube or other websites, even if the
underlying content can be easily altered. That said, their weight will depend
on factors such as credibility, relevance and whether the date of publication
can be confirmed.
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