On March 9, 2012, the General Court of the Office of Harmonization for the Internal Market (OHIM) rendered an important decision on how to prove disclosure of an identical earlier design.

The subject matter of the decision was a community design for a bottle which had been filed on May 6, 2003, and against which an application for invalidity was submitted on May 11, 2006, claiming the nullity of the design for lack of novelty due to a disclosure of an identical design in year 2002.

The application for invalidity was based mainly on three pieces of evidence:
– a technical design showing date of creation of the design, name and code number of same and name of the customer, a British company;
– a delivery order, devoid of header, referring to a shipment to the mentioned British company of more than 61,000 bottles identified with a product code comprising the code appearing in the technical design;
– a sworn declaration rendered by a former employee of the British company stating that the latter had purchased bottles corresponding to the technical design and had resold them to other subjects before May 6, 2003.

OHIM’s Invalidity Division with its decision dated July 4, 2007, declared the contested design invalid on the basis that the earlier design was to be regarded as disclosed pursuant to the Community Design Regulation (CDR) and that the two designs were identical. The decision was confirmed by the Boards of Appeal and the matter was then brought before the General Court.

The General Court focused solely on the disclosure issue, as the identity of the two designs had not been debated. In its appeal, the holder of the contested design maintained that the documents submitted by the other party did not identify beyond doubts the earlier design and did not prove, individually or considered together, that such design had been disclosed at a definite date. Moreover, the holder maintained that the other party was in bad faith, having been involved in infringing activities damaging the holder.

The General Court started by specifying that according to the CDR one of the means of disclosure is the use in trade. However, neither the CDR nor the Implementing Regulation specify the kind of evidence to be submitted for demonstrating disclosure. This, according to the Court, brings with it that the requester of the invalidity is free to choose the pieces of evidence he deems more appropriate and on the other hand that the OHIM is required to examine all the elements submitted to determine whether the earlier design was disclosed or not.

Referring by analogy to the case law for trademark matters, the Court stated that disclosure may not be demonstrated through probabilities or presumptions, but has to be grounded on sound and objective material. Furthermore, it maintained that the pieces of evidence submitted by the requester of the invalidity had to be evaluated in connection with each other. In fact, while some pieces could be per se not sufficient for proving disclosure, when examined or interpreted together with the other proofs they may contribute to build up the evidence of the disclosure.

Basing its judgment on these principles, the Court reached the conclusion that the bottles quoted on the delivery order were the same bottle appearing in the technical design as they were identified by the same code number, and that they were commercialized prior to the filing of the contested design in the light of the sworn declaration which identified the bottles by product name and code. In the opinion of the Court the three pieces of evidence considered together proved the disclosure of the earlier design.

With respect to the bad faith argument, the Court noted that its task was to assess the novelty of the registered design not the behavior of the parties involved and although good and bad faith are mentioned in several articles of the CDR, neither appears in the provisions setting the grounds of invalidity of a community design.

The lesson that may be drawn from this judgment is that when applying for invalidity of a design it is advisable to submit all documents available at the very start of the proceedings, in order to allow the OHIM from the beginning to evaluate them one with the others.

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