http://ipkitten.blogspot.com/2023/04/how-to-prove-disclosure-of-earlier.html
A Registered Community Design (‘RCD’) enjoys protection only if it is new and has individual character vis-à-vis designs disclosed prior to its filing or priority date (Art. 4(1), 7 of Regulation 6/2002, ‘Design Regulation’). A prior design is disclosed where it has been published following registration or otherwise, or exhibited, used in trade, or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU (Art. 7(1) Design Regulation).
The most common way to establish disclosure is online evidence. The European Union Intellectual Property Network (‘EUIPN’) has since April 2020 provided guidance in the CP10 Common Practice ‘Criteria for assessing disclosure of designs on the internet’. Sometimes it seems easy to show that a design has been disclosed, e.g. if the product incorporating the design appears in a picture of it in an online shop.
However, in some situations, it can be challenging to establish when the disclosure took place. Internet archives, such as the Wayback Machine, can be useful to determine the content of a specific website on a specific date. However, such archives do not capture all websites. In this regard, Amazon is ‘disclosure-friendly’, since it indicates the date on which the product was first listed on its platform (see Board of Appeal, R 1213/2019-3 at para 27), e.g. as follows:
However, there is conflicting case law in the EU as to whether this ‘Date First Available’ is reliable and can constitute sufficient proof of the date of disclosure.
The German Patent Court’s approach
The German Patent Court does not consider the ‘Date First Available’ on Amazon to be reliable. In a decision of 9 June 2022 (30 W (pat) 808/18), it found that the pictures and text of the listing can be changed by the seller at any time without requiring a change of the ‘Date First Available’. EUIPN’s CP10 Common Practise also cautions about this possibility (see page 25). In an earlier decision of 18 February 2021 (30 W (pat) 806/18), the Court mentioned that this date can not only be changed at any time, but even be backdated (see also Board of Appeal, R 1213/2019-3 at para 32). The judges concluded that the ‘Date First Available’ is generally not acceptable proof of disclosure in design disputes.
The General Court’s approach
By contrast, the General Court confirmed previous case law in its recent judgment Homy Casa v EUIPO – Albatros International (Chaises) (case T-89/22), holding that the ‘Date First Available’ on Amazon is sound evidence of the date of disclosure (see also T-166/15). The possibility of changing a website at any time and the difficulty of determining whether it was changed are not sufficient to cast doubt on the probative value of the ‘Date First Available’. To support its conclusion, the Court referred to Amazon’s Help-website, where it is explained that each product on Amazon is listed only once under the same unique Amazon Standard Identification Number (ASIN). All sellers offering that product must offer it under the same ASIN. Crucially, it is forbidden to issue a new ASIN for a product already listed on Amazon.
The credibility of the ‘Date First Available’ may be undermined only by adducing facts that point to a concrete manipulation of the listing, such as a clear indication of tampering, undeniable contradictions, or obvious inconsistencies that may reasonably justify doubt about its reliability.
The fact that a listing on Amazon only had one customer review in six years was not deemed sufficient to cast doubt on the credibility of the ‘Date First Available’. Likewise, EUIPO’s Invalidity Division and the Board of Appeal deemed the information on Amazon to be generally reliable (see e.g. ICD 119 622, R 1496/2013-3)
Comment
It appears to be more convincing to accept the ‘Date First Available’ as sufficient evidence of the date of disclosure, unless there are specific circumstances that cast doubt on its reliability.
While the date is not a statement by Amazon, it is an indication by the seller who created the listing as to when the product in question was initially offered on Amazon. Thus, it is a statement made by a third party who usually does not have any connection to the parties of the design dispute. Such seller does not have any apparent interest in indicating an incorrect ‘Date First Available’.
Further, an incorrect date could constitute misleading advertising under Art. 6 of Directive 2005/29/EC. Assuming an incorrect or at least questionable date from the outset would violate the presumption of lawful conduct of market players, which is a presumption that has been accepted by some courts (e.g. Higher Regional Court of Nuremberg, judgment of 29 November 2022, 3 U 493/22).
These aspects speak in favour of the general reliability of the ‘Date First Available’. If in doubt, it might be useful to check whether the (dated) reviews on Amazon or any other e-commerce platform are consistent with the product as displayed (e.g., with respect to colour, size or material). Sometimes, reviewers even post pictures of the delivered product.
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