Impact of social media activities in Design Registrations

This article first appeared in Bugnion Journal – To view the Journal in full click here

Disclosure is of great importance to EU law on designs and not all types of disclosure are considered to destroy novelty or to challenge the validity of the design registration. In fact, attention should focus not on all informed users, but rather on those belonging “to the circles specialized” in the sector at issue operating within the European Union. When a member of such a circle could reasonably have had knowledge of such disclosure, then the design will no longer be considered valid. Thus, the Board of Appeal of EUIPO (No. R 277/2016-3) held that even if a product registered as a Community design is disclosed online, this will not affect the registration’s validity because it could not be reasonably known from within specialized circles.

However, in T-450/08 the European Court of Justice found that disclosure cannot be proven by means of probability or mere supposition, but must be demonstrated by solid and objective evidence. Such evidence must be considered in its entirety. In fact, while some elements of the evidence considered on their own may be insufficient to demonstrate the disclosure of a prior design, when combined or in conjunction with other documents or information they can contribute to proof of disclosure.

The court found that taking these principles into account, the publication of photographs on the design holder’s Facebook page could not be considered an event which could have reasonably become known in the normal course of business to the relevant circles of designers. The ECJ’s conclusions were based on a previous ruling in C-479/12, where the court ruled on the uncertainty of whether the distribution of images of a design to traders was sufficient grounds for considering that, in the normal course of business, the design could reasonably have become known to specialized circles in the sector concerned. “In that regard, the referring court states that it is assumed by some that those specialised circles include only such persons as are involved in creating designs and developing or manufacturing products based on those designs within the sector concerned.
The main issue is how to identify so-called “specialized circles”, since this is an exclusively jurisprudential matter. The general statutory laws provide a broad overview of “destruction of novelty” and “disclosure”. However, the matter should be analyzed and decided on a case-by-case basis.

Joined Cases T-22.23/13 provide some helpful clarification in this regard. In fact, in order to carry out the ECJ’s assessment, one must examine whether, on the basis of the facts – which must be adduced by the party challenging the disclosure ‒ it is appropriate to consider the probability and possibility of those circles becoming aware of the events defined as “proper disclosure”. At the same time, one should analyze what can reasonably be required for those circles in terms of awareness of prior art.

These principles apply to the ruling on whether disclosure by Facebook could affect the decision on the invalidity of the disclosed design. The board stated that a preliminary analysis was needed in order to identify the specialized circles in this case. The starting point was therefore to understand the well-known facts and purposes of Facebook ‒ a social networking website which allows users to connect with family and friends. Businesses, companies and organizations use Facebook for similar purposes; namely, to connect with staff and potential clients. However, a number of screenshots are not intended to provide commercial information about products but to show the professional and social activities of the company’s staff. To determine whether Facebook reaches a specialized circle it is important to analyze Facebook users’ responses to relevant publications; namely, by counting user likes and reactions, as well as the type of user reacting.