EUIPO clarifies the value of printed social media’s screenshots in a design invalidity action

 

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:

- a printed screenshot of a Facebook post on 22 August 2013, with the related hyperlink, showing an oval wooden building:

 

 - a printed screenshot of a Facebook post in July 2014, with the related hyperlink, showing the same oval wooden building:

 

 - two 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.

 On 2 January 2024, the contested decision was appealed on the following grounds:

1. 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;
2.  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;
3.  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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