Case T‑823/19
JMS Sports sp. z o.o.
v
European Union Intellectual Property Office
Judgment of the General Court (Tenth Chamber), 20 October 2021
(Community design – Invalidity proceedings – Registered Community design representing a spiral hair elastic – Disclosure of prior designs – Disclosure via the Internet – Article 7(1) of Regulation (EC) No 6/2002 – Equality of arms – Evidence produced for the first time before the General Court)
1. Community designs – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Re-evaluation of the facts in the light of evidence produced for the first time before it – Not included
(Council Regulation No 6/2002, Art. 61)
(see para. 11)
2. Community designs – Grounds for invalidity – Lack of novelty – Previous disclosure of identical design – Proof of the disclosure – Content of a website – Burden of proof
(Council Regulation No 6/2002, Arts 5, 7(1), and 25(1)(b))
(see paras 22-26, 32, 41, 49, 70, 71, 73, 75)
3. Community designs – Grounds for invalidity – Lack of novelty – Previous disclosure of identical design – Representation of a spiral hair elastic
(Council Regulation No 6/2002, Arts 5, 7(1), and 25(1)(b))
(see paras 33, 34, 37, 64)
Résumé
JMS Sports sp. z o.o. is the proprietor of the Community design representing a spiral hair elastic, filed on 24 June 2010 with the European Union Intellectual Property Office (EUIPO).
Inter-Vion S.A. filed an application for a declaration of invalidity of that design, on the ground, inter alia, that it lacked novelty. In order to prove disclosure of the prior designs, it produced website screen captures, dated 2009.
The Board of Appeal of EUIPO considered that disclosure of the prior designs, identical to the contested design, had been proved. Accordingly, it concluded that the contested design lacked novelty.
The General Court dismisses the action brought by JMS Sports and specifies the probative value of the evidence taken from websites, relied on to demonstrate the date of disclosure of a design. (1)
Findings of the Court
First of all, the Court declares inadmissible the evidence, produced for the first time before it, obtained through the use of free access tools such as the Google search engine and the Wayback Machine. After all, they do not fall within the factual context of the dispute as it existed before the Board of Appeal and cannot therefore be taken into account for the purposes of the review of the legality of the contested decision.
Next, after having recalled that the applicant for a declaration of invalidity is free to choose the evidence, the Court notes that the appearance of the image of a design on the Internet constitutes an event which may be classified as ‘publication’ and which is therefore tantamount to ‘disclosure to the public’. It indicates that the probative value of the screen captures is not limited.
In the case at hand, it finds that the screen captures from websites clearly showed designs identical to the contested design, the complete URL (2) addresses of those websites as well as the dates of disclosure to the public, prior to the date on which the application for registration of the contested design was filed. In addition, a screen capture showed other timestamp information, consisting of comments from Internet users and demonstrating disclosure to the public on 1 November 2009.
Furthermore, the Court emphasises that the mere abstract possibility of the content or date of a website being manipulated is not a sufficient ground for calling into question the credibility of the evidence consisting of the screen capture of that website. That credibility can be called into question only by the adducing of facts that concretely suggest a manipulation. Furthermore, even though the screen capture produced by the Wayback Machine does not contain an image of the product, it is a relevant source of information corroborating the reliability of the screen capture of one of the websites in question. Accordingly, the Court holds that disclosure has been proved.
Last, as regards the allocation of the burden of proof, the Court states that, given that Inter-Vion submitted evidence taken from the Internet demonstrating disclosure of prior designs, it was for JMS Sports to demonstrate the lack of credibility of that evidence. In that regard, it was not required to demonstrate the manipulation of a website but to indicate specific circumstances that would be credible evidence of manipulation, such as obvious signs of falsification, indisputable contradictions in the information submitted or clear inconsistencies justifying the existence of doubts as to the authenticity of the screen captures.