When Online Listings Help Win a Design Invalidation Case
Every now and then, a case comes along that highlights how online evidence plays a crucial role in design invalidation proceedings. One of our recent cases at the EUIPO did just that, and I thought it would be interesting to share.
The case involved the Registered Community Design (RCD) 015065493, which we challenged on behalf of our client for lack of individual character under Article 6 CDR. The key piece of evidence? A simple Amazon listing.
The Power of Online Disclosure
Our client submitted a printout from Amazon Spain showing that a product with ASIN B09ZV1QXL1 had been available for sale since 17/06/2022. This was significant because the contested design was filed much later, on 04/07/2024.
Now, you might wonder—does an Amazon listing really hold up as valid evidence? According to case law (T-166/15), the General Court has ruled that product listings from online retail stores have sufficient probative value. The EUIPO agreed, confirming that the earlier design had indeed been disclosed before the filing date of the contested design.
How Similar is Too Similar?
Another crucial aspect of the case was the designer’s freedom. When assessing individual character, the EUIPO considers how much creative freedom a designer has in a given industry.
In this case, the contested design related to medical patches. The EUIPO found that while such products must meet certain safety and standard requirements, there was still room for variation in terms of shape, size, colors, and decorations. This meant that even small differences between the contested design and the earlier design were not enough to create a distinct overall impression.
The Final Decision
When comparing the two designs, the EUIPO found that both featured a thin, flat, star-shaped patch with rounded edges—and those key similarities overshadowed any minor differences. Since the contested design failed to create a different overall impression, it was invalidated under Article 6(1)(b) CDR.
Takeaway: Digital Evidence Matters
This case is a great example of how online marketplaces like Amazon can provide crucial evidence in IP disputes. The fact that a product was publicly available before the filing date made all the difference.
For IP professionals, this reinforces the importance of digital footprints when challenging (or defending) registered designs. Sometimes, the best evidence is just a few clicks away.
Until next time!
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