A Registered Community Design (“RCD”) consists of the appearance of a product protected at European Union level. According to Regulation No 6/2002 of 12 December 2001 on Community Designs, there are two basic requirements to obtain said protection: the design must be new – so called “novelty” – and have “individual character” at the time of the filing before the EUIPO (European Union Intellectual Property Office).  Novelty exists when there is no identical design made already available to the European public prior to the filing of the new design – where “identical” means something which differs only in immaterial details –, whilst the “individual character” refers to the different impression that the new design may cause on the EU user, in respect to previous designs already published in the European Union. Thus, in order to check if anything has been already made available to the EU consumers (the “informed users”) prior to the new design application which could affect its validity, (its “novelty” and “individual character”), it is important to clarify the concept of “disclosure” of the design. In this respect,  according to the Community Design Regulation:

Article 7 RCD 6/2002:

1. For the purpose of applying Articles 5 and 6, a design shall be deemed 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, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, 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 Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

2. A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 and if a design for which protection is claimed under a registered Community design has been made available to the public:
(a) 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; and
(b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority. 3. Paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title.

It is clear from the above that disclosure of a specific product design in the EU market may occur in different circumstances (…the Regulation says: ”..or otherwise disclosed”). For example, a very common type of disclosure is the first sale of a product to the public. However, disclosure may also occur as a consequence of the simple publication of pictures of that specific product on a webpage.

As a consequence, it is of interest to talk about the possible role of the  “Wayback Machine” platform in order to gather evidence of disclosure of a specific design.

The “Wayback Machine” is a digital archive of the World Wide Web and other information on the Internet enabling users to see archived versions of web pages across time. In other words, this archive allows discovering old content of webpages all around the world, just typing the desired date. Thus, one could extract evidence of “disclosure” on the Web of a specific design, e.g., few months before the design application, and use this evidence in a invalidity action against the registration of the design filed after the proven disclosure.

According to the EU Trademark Guidelines, in principle, The EUIPO may accept this Internet archiving service as a reliable source of evidence in order to ascertain the date of disclosure of a design on the Internet. However, Wayback Machine’s piece of evidence often time may not suffice to prove all aspects related to disclosure, and overall assessment with additional evidence may be necessary.

Furthermore, it is important to stress that this useful tool has its own limitations. First of all, the Wayback Machine cannot archive all type of content: e.g.  web pages protected with passwords, websites using specific software and those websites removed due to a request of their creators, etc. Furthermore, there is a limit when collecting dynamic pages, which are not created with HTML programming language, such as JavaScript content.

It is also important to consider the limits referred to time:  a period between 6 and 12 months can pass since data is gathered until it appears in the Wayback Machine. This fact implies that other evidences may be needed to prove disclosure in a timely manner, apart from those available in the Wayback Machine.

In conclusion, despite the above limitations, the Wayback Machine appears to be a useful tool, which can provide a great amount of information through which invalidity applicants can obtain evidence in support of arguments of disclosure, in the context of EUIPO design invalidity proceedings.  Having said that, it would be interesting to know how EU national IP courts consider this tool in judicial proceedings. In any case, invalidity applicants should not forget to gather supporting evidence in order to reinforce the Wayback Machine’s results, that often  may not be sufficient to justify a design cancellation.

For further info/comments on this topic feel free to email info@ipwisely.com.

Riccardo Ciullo
Miriam Santin

Leave a Reply