The EUIPO Board of Appeal has overturned an EUIPO decision that a Registered Community Design for an oval-shaped wooden sauna was invalid. In doing so, the Board has provided helpful pointers on the use of internet and social media evidence as proof of disclosure of a prior design (Case R 5/2024-3, Ekomill OÜ v Ecosauna Project OÜ, 11 September 2024).

Facts

The case concerned a Registered Community Design (RCD) filed in October 2018, ownership of which was later transferred to Ekomill OÜ (Ekomill), for the following design:

In September 2022, Ecosauna Project OÜ (Ecosauna) applied for invalidity of the RCD, claiming that it lacked novelty and individual character. It submitted that oval-shaped wooden saunas of this kind existed at least since 2013, and that the earlier design was identical (save for minor differences in the windows/doors) to the RCD. 

In support, Ecosauna relied on printed screenshots of Facebook posts, which purported to show images of two prior designs of an oval-shaped wooden building, from 2013 and 2014 (for the first) and November 2017 (for the second).

EUIPO’s decision

The EUIPO’s Invalidity Division declared the RCD invalid, as the Facebook post from 2013 showed that one of the prior designs preceded the RCD’s filing date. Moreover, the RCD and the prior designs only differed in the positioning and shape of the windows and doors, but coincided in practically all the other features, including most notably their shape and the roof.

Ekomill appealed, arguing that the authenticity of the social media evidence was in doubt. The screenshots and URLs did not sufficiently prove the source and date of disclosure, as the date of a Facebook post’s could be changed to alter the timeline to an earlier date. The screenshots also failed to show the relevant URLs within them. 

Board’s decision

The Board of Appeal upheld the appeal, overturning the original decision and invalidity application in their entirety. It found that for both of the alleged prior designs, the screenshot and URL evidence for the Facebook posts were insufficient to provide “solid and objective evidence” of prior disclosure. 

In doing so, the Board made the following remarks on the use of internet and social media evidence:

1. Although the appearance of a picture of a design on the internet constitutes a ‘publication’ for the purposes of disclosure, an invalidity applicant must provide solid evidence of this event of disclosure.
    
2. A printout or a screenshot should show the full URL address of a website, demonstrating the source of design disclosure on the internet. Merely indicating a hyperlink in the invalidity applicant’s evidence was insufficient – hyperlinks or URLs per se were not sufficient evidence for proving the disclosure of a prior design. 
    
3. Even if URL hyperlinks are active, they should be supplemented with additional evidence, such as a printout or screenshot of the relevant information, including the full URL address. This was because information accessible through a hyperlink or URL address could later be altered, removed or otherwise difficult to identify. Even if the URL link matched the screenshot, without additional evidence, it is impossible to determine if the content has changed or been removed over time.
    
4. This assessment aligned with the EU Intellectual Property Network’s ‘CP 10 Common Practice – Criteria for assessing disclosure of designs on the internet’ published in April 2020. Consequently, when a screenshot did not contain all the relevant information, namely the source, date and depiction of the prior design, additional evidence should be submitted. 

Takeaways

The decision sets out some helpful pointers and reminders for those seeking to rely on evidence from the internet or social media when challenging the validity of a registered design. 

Given the dynamic nature of internet and social media content, providing screenshots and URLs on their own is insufficient to provide “solid and objective” evidence of disclosure. To avoid these issues and enhance the reliability of such evidence, it is best practice to:

• Show the relevant URL in full in the screenshot.
   
• Provide separate evidence showing that inputting that URL into the web browser results in the content displayed in the screenshot. 
   
• Provide time stamps in each screenshot, which show the date and time at which the URL was accessed, and the screenshot was taken. Much of this evidence can be achieved by using freely accessible screenshot-taking software, which includes this as metadata within the screenshot itself. 
   
• Provide clear and sufficiently high-quality screenshots, so that the features of the relevant design are clearly visible.
   
• For evidence with alterable dates (like Facebook posts), find additional evidence to verify the original publication date. Without further evidence, the weight of a screenshot may be affected.
   

If the URL no longer displays the evidence, it may be possible to use a website archiving service to see if there are previous snapshots of the URL which did at the time show the content relied upon. 

Following the above steps will help to preserve your evidence so that, should the content of any internet or social media pages change later down the line, you can clearly show what existed at the time. Further helpful guidance can be found in the EU Intellectual Property Network’s ‘CP 10 Common Practice – Criteria for assessing disclosure of designs on the internet’, referenced by the Board in this decision.