Designs: first disclosure in the EU not a requirement after all?

There has much debate about whether a design must be first disclosed in the EU for unregistered Community design (UCD) protection to arise. A recent EUIPO consultation document could provide reassurance to brand owners that first disclosure in the EU is not a necessary requirement.

The Common Practice for assessing disclosure of designs on the internet was published on 20 March 2019 and was open for consultation until 8 May 2019. It aims to provide a common approach at EU and national level for assessing whether a design has been disclosed online.

It is clear from the document that, in general, a design can be disclosed in any source possible and anywhere in the world. Whilst this document would presumably not bind the CTEU, it is the strongest indication yet that first disclosure in the EU is not a necessary requirement.

This will be welcomed by brand owners in light of the considerable problems a requirement for first disclosure in the EU would generate if the UK leaves the EU.

Why the confusion?

Article 11 of Regulation 6/2002 provides that, for UCD to exist, the design in question must have been made available to the public (ie could reasonably have become known to the circles specialised in the sector concerned) in the EU. This has generally been understood to mean that UCD protection can arise even if a design is disclosed/published outside of the EU.

The wording of Articles 5, 6 and 7 (novelty, individual character and disclosure) of Regulation 6/2002 is essentially the same. If this interpretation is correct, it would mean that a brand owner could not destroy the novelty of its own design. Either a design could reasonably have become known to relevant circles in the EU (and so is protected as a UCD) or it could not (and so is not so protected but novelty is not lost).

However, two German cases (Gebackpresse - Case 5 U 96/05 and Thane International Group's Application - Case 3/12 O 5/04) have interpreted the Regulation differently. They held that first disclosure in the EU is necessary for UCD protection to arise but that a disclosure outside of the EU can be novelty destroying (provided it could reasonably have become known to the relevant circles in the EU).

If these cases were followed at EU level, it would mean that a design disclosed in, say, China, would not benefit from UCD protection. Moreover, it would not then be possible to obtain UCD (or indeed, registered Community design) protection as the China disclosure would (unless very inaccessible) almost certainly have destroyed the design's novelty.

Some commentators point to Article 110a(5) of Regulation 6/2002 as imposing a requirement for first disclosure in the EU. However, this Article simply says that "Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection…".

The meaning of the words "made public" is unclear. This could simply be a short-hand reference to "made available to the public" – the initial wording of Articles 5, 6, 7 and 11. In any event, this Article relates to expansion of the EU and so is arguably not relevant. Other commentators point to statements on the EUIPO's website about disclosure but none is a clear (and obviously intentional) statement that first disclosure in the EU is a requirement for UCD protection.

Why is this important?

This issue has come into sharp focus with the possibility of the UK leaving the EU. If first disclosure in the EU is required, post-BREXIT disclosures in the UK (for example, at UK product events and launches) would not give rise to UCD protection. If design protection in the EU were required, the only options would be to:

• register key designs before disclosure
• move product launches to the EU
• try to engineer some sort of simultaneous disclosure in the UK and EU (which might not work).

If the UK leaves the EU, it intends to introduce a new form of UK unregistered design that will mirror the UCD and will be known as the supplementary unregistered design (SUD). The legislation governing the SUD mirrors that for the UCD. We do not yet know how the UK courts will interpret the legislation.

Some commentators have suggested that, if there is a ruling that first disclosure in the EU is required for UCD to arise, then the UK might interpret UK legislation as requiring first disclosure in the UK (even though neither pieces of legislation seem to require it).

This would make it difficult for a single design to benefit from both UCD and SUD protection. Again, it would be necessary to register key designs before disclosure or try to engineer simultaneous disclosure in the UK and EU.

What does the consultation say?

The Common Practice document strongly suggests that first disclosure of a design in the EU is not a requirement for UCD protection. It says the following:

• In general, a design can be disclosed in any source possible, including the internet, and anywhere in the world.
• Taking into account the global nature of the internet, in general any content online is available worldwide and can be known to the specialised circles operating in the EU.
• Only under certain circumstances is the content online not reasonably known to the circles specialised in the sector concerned in the normal course of business, which can be due to some restrictions to the accessibility or searchability of this content. These restrictions could be considered as an exception and, in order to refute the presumption of disclosure, it must be proven.
• Designs are always represented in a visual manner, and therefore, language is not in general an impediment to the perception of the design.
• Furthermore, image search technology has also reached an impressive level of technical sophistication, meaning that a design can still be found even if it is published on a website that is not in the language commonly spoken in the EU.
• A top-level domain could serve as an indication as to which public is more likely to have access to a given webpage. However, a foreign top-level domain might not in general affect the accessibility of the specialised circles.

What does this mean?

The Common Practice document provides useful reassurance that a design should be protected by UCD as long as it could reasonably have become known to the specialised circles in the EU, irrespective of where in the world it is actually disclosed/published. However, only a decision of the CJEU will ultimately clarify this point.