10/04/2025
In a recent decision (Invalidity no. ICD 127 015), the EUIPO’s Invalidity Division declared registered Community design no. 008670491-0002 to be invalid due to a lack of novelty over earlier disclosures on social media.
Registered Community design no. 008670491-0002
The contested design relates to “vehicle bodywork” in Class 12-08, specifically to the loading body of a commercial vehicle.
Views of Registered Community Design no. 008670491-0002
The registered design was filed on 2 September 2021 and was published on 6 March 2024 following a deferment period. Certain features of the design, such as the vehicle’s chassis and cab, were excluded from protection (disclaimed) through use of broken red lines. The registered design was therefore directed only to the storage area.
The proprietor was Elektrobud S.A., based in Poland.
The invalidity action
The invalidity applicant was Gastro-Ape Pawel Laba e. K., a German company. It was alleged that the registered design lacked both novelty and individual character over the applicant’s own social media posts from 2018, before the filing date of the registered design.
As evidence, the invalidity applicant submitted multiple online disclosures predating the filing date, including:
- Facebook posts showing a vehicle design
- Archived webpages captured via the Wayback Machine
- Screenshots from YouTube showing a vehicle design
The Facebook posts clearly displayed the relevant vehicle bodywork along with date when the posts were made (5 February 2018) and the corresponding URL.
The proprietor failed to submit any counterarguments or evidence in response.
Prior Design cited against Registered Community Design no. 008670491-0002
Internet evidence admissibility
Before the EUIPO, disclosures on the internet form part of the prior art unless circumstances cast such disclosure in doubt.
Evidence of a disclosure on the internet must show the design itself, the date of publication, and the source – all within a single piece of evidence and without the need for any searching.
In this case, at least the Facebook posts satisfied these conditions, and as such, these were accepted as having been disclosed to the public before the contested design’s filing date.
Features disclaimed from protection
The EUIPO, along with many jurisdictions, allows for certain features in a registered design representation to be disclaimed from protection in order to alter the scope of protection to obtain design protection for only a part of a product, rather than the whole product.
Typical methods of visually disclaiming protection include use of dotted lines, blurring, colour shading/washing or boundaries.
In this case, the contested design sought protection for a “vehicle bodywork” and the views show a storage area of a vehicle with the remainder of the vehicle surrounded by a red dashed line.
The Invalidity Division interpreted that protection is sought for the area outside the red dashed lines.
Visual Disclaimer used in Registered Community Design no. 008670491-0002
In our view, the Invalidity Division was correct, but this is an unusual disclaimer because normally the area inside a red line indicates the features which are claimed rather than disclaimed. In this case, the proprietor used broken lines to clarify which area is disclaimed – without these broken lines, the Invalidity Division may have had a different view on what was disclaimed.
We suspect red broken lines have been used to provide additional clarity, as broken black lines may have been less visible in this case, in particular, around the black wheel portion.
Comparing the Designs
The comparison between the contested design and the prior design revealed striking similarities:
- Identical overall shape and dimensions
- Same surface material and colour
- Functional elements such as doors and windows which open and fold in the same manner
Comparison of the contested design with the prior design
Contested Design
Prior Design
The only difference identified by the Invalidity Division was the design of the drawer handles on the two internal storage compartments. However, this difference was deemed to be immaterial.
Outcome
The Invalidity Division concluded that the contested design lacked novelty over the prior design.
Consequently, registered Community design no. 008670491-0002 was declared invalid.
Key Takeaways
For invalidity applicants, this decision highlights how helpful internet disclosures can be when invalidating registered Community designs. Evidence of a disclosure on the internet must, in a single piece of evidence:
- show the design itself;
- provide the date of publication; and
- provide the source
The decision perhaps also underlines the importance of disclaiming the right features from protection. If the registered design was limited to only the internal storage compartments, which were deemed to be different, then it may have stood a better chance of surviving the invalidity action.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
