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Social media posts can prevent design protection

Social media posts can prevent design protection

Social media is a powerful tool for promoting products. However, a common mistake that many designers and inventors make can significantly jeopardise the chances of protecting their intellectual property.

The General Court of the European Union (EGC) demonstrated the increasing importance of social media screenshots in the gathering of evidence with its judgement of 6 March 2024 (T-647/22), in which it invalidated a shoe design registered by the German fashion company Puma SE. Puma had underestimated the weight of social media posts. The EGC ultimately ruled that Puma's design right failed because of the prior disclosure on Instagram posts and was therefore no longer “new” at the time the application was filed. The decision was significantly influenced by the social media presence of the singer Rihanna and showed once again that screenshots from social media such as Instagram, Facebook, X, TikTok, YouTube and online platforms in general are a serious source of evidence in legal disputes that should not be underestimated.

The latest decision of the Third Board of Appeal of the EUIPO (European Union Intellectual Property Office) on this topic from 11 September 2024 (R 5/2024-3) is in line with that previous case law of the EGC. The EUIPO confirmed that social media posts can prevent design protection. However, the screenshots submitted as evidence must fulfil certain requirements for their admissibility. In this decision, the EUIPO clarified the requirements for creating screenshots that meet sufficient evidential standards.

The case law of the EGC:

In its judgement of 6 March 2024, the EGC already emphasised the significant impact of social media posts on intellectual property proceedings, particularly in relation to design protection.

Source: EGC judgement of 6 March 2024 (T-647/22)

The case involved an EUIPO decision dated 11 August 2022, in which a Dutch footwear wholesaler succeeded in obtaining a declaration of invalidity against a Community design registered for a shoe by Puma SE in August 2016. According to the EUIPO, the design was no longer considered “new”, as it had already been disclosed in social media posts on singer Rihanna's Instagram account in December 2014, 18 months before the design application was submitted. The posts show photos of the singer wearing white Puma shoes with thick black soles, very similar to the features covered by the design registration. Each post has received over 300.000 likes. For Community design protection in the European Union, "novelty" and "individual character" are fundamental requirements. Novelty means that the design has not been disclosed to the public before the application date. Any prior public disclosure, such as social media posts or public exhibitions, can compromise novelty. Additionally, if the design was publicly available more than 12 months before the application date or before its first commercial use, it loses novelty and becomes ineligible for protection., Art. 7 para. 2 CDR. Individual character requires that the design create a different visual impression on an informed user compared to earlier disclosed designs.

In the appeal before the EGC, Puma argued that no one was interested in the singer's shoes, let alone their design, at the time of the posts. However, the EGC considered that by 2014, Rihanna had reached a level of fame where both the music and fashion industries were significantly interested in her style choices, including the shoes featured in her Instagram posts, which had millions of followers. The photos posted in December 2014 clearly displayed characteristic features similar to those in the design later registered by Puma in 2016. Since there was a period of more than twelve months between the Instagram posts and the design application, the grace period did not apply. Consequently, the design lacked the necessary "novelty" and "individual character" required for Community design protection. Puma was unable to provide sufficient evidence that the relevant industry within the EU had not been exposed to the earlier design.

"Common Practice" of the EUIPO

The 3rd Board of Appeal of the EUIPO now had to rule on a similar legal dispute:

In October 2018, a Community design for transportable buildings was registered, against which the company Ecosauna Project OÜ filed an invalidity application with the EUIPO on 22 September 2022. To support its claim that the design registered in 2018 was already publicly visible in 2013 through Facebook posts featuring similar oval-shaped wooden saunas, Ecosauna submitted screenshots of these posts, along with hyperlinks, to the EUIPO's Cancellation Division. The applicant for the design, Eco Oil OÜ, argued that a single "like" on the Facebook posts was insufficient to establish that the images had been disclosed in a manner that would make them known to the relevant professional circles, as required under Article 7(1) CDR. However, the EUIPO, in its decision dated 22 November 2023, invalidated the design. It found that the printed screenshots sufficiently demonstrated that the registered design lacked novelty, as the overall impression of the registered design was similar to that shown in the Facebook posts from 2013. Additionally, the design applicant had not provided evidence of specific circumstances that would have prevented the design from becoming known to the relevant public through its publication on Facebook.

Source: Decision of the Third Board of Appeal of 11 September 2024 in case R 5/2024-3

The subsequent appeal was successful. The EUIPO’s Board of Appeal concluded that the evidence submitted—screenshots with hyperlinks referencing prior designs—was insufficient to prove disclosure. The Board found that because the URL was not visible on the screenshots, they did not meet the evidentiary standard required. A screenshot must display the full URL to verify the source of the design disclosure online (20/10/2021, T-823/19, Bobby Pins, EU:T:2021:718, §§ 33-34). Merely providing a hyperlink or URL alone is not enough, as the information within a hyperlink could potentially be altered or deleted later.

This aligns with the EUIPO’s "CP 10 Common Practice", which sets guidelines for evaluating online evidence of design disclosure. CP 10 emphasizes reliability, clear source identification, and presentation standards, particularly that full URLs must be visible on screenshots for them to constitute valid evidence of prior disclosure. These are practical guidelines on sources, reliability, presentation and assessment of online evidence.

Key aspects of the decisions

These decisions illustrate the importance of exercising utmost diligence to secure that a design has not been previously disclosed before applying for intellectual property (IP) rights. This includes checking for potential prior disclosures by third parties or even through one’s own social media posts. To safeguard the novelty of a design, it is recommended to register it immediately following any public presentation. This urgency is due to the 12-month grace period, during which the design may still be eligible for protection even if publicly disclosed. However, beyond this period, the design can lose its novelty status, making it ineligible for protection under EU Community design law.

The EUIPO has also outlined specific requirements for the use of screenshots as valid evidence proceedings. For a document to hold probative value, it must present concrete and objective facts. The EUIPO evaluates plausibility and accuracy by examining the document’s origin, the context in which it was created, its intended audience, and whether its content appears credible and reliable. For screenshots, the probative value is significantly enhanced when they display all relevant information, such as the source, date, and a clear representation of the disputed prior design. This means that the screenshot should not only capture the visual representation but also include verifiable details, like the URL and timestamp, to confirm the context of the disclosure. Additionally, supporting evidence may be required to corroborate the visual information in the screenshot, ensuring it provides a robust and credible account of the prior design's public disclosure.

At the same time, the decision also shows that if disclosure is proven, the applicant of the design must again demonstrate that the publications were not known to the specialised circles before the application was filed.

What can designers, inventors and companies do?

A common mistake that many inventors or designers make when promoting their products on social media is that they publicise their designs or innovations before they have applied for design protection or a patent. This early disclosure can have serious consequences for intellectual property protection. To avoid this, designers should ensure that they (also) protect their intellectual property from disclosure in the context of social media. At the same time, however, social media can be used to your advantage, for example by using posts to prove that there is no third-party IP right to a design due to a lack of novelty.

Here are some important points that designers should bear in mind:

Social media: Prevent unintentional premature publication of the design etc. by considering all platforms (social media, trade fairs, fashion shows, launch events); use teasers or general references instead; keep an eye on posts by influencers and well-known people;

Screenshots: They are important evidence if they are taken correctly
- Precise presentation of the relevant content (e.g. designs), i.e. sharp and comprehensive
- Mapping of the entire URL address (hyperlinks are not sufficient)
- Date (time stamp)
- Source and circumstances of origin;

IP rights: Registration of the property right before public presentation or advertising of the product;

Non-disclosure agreements (NDAs): If ideas are presented to potential investors, partners, collaboration partners or on platforms such as social media, NDAs should be concluded and social media aspects should also be considered in them;

Grace period: In many countries, there are grace periods that allow you to apply for protection up to 12 months after the public announcement. However, this rule should be applied with caution and regional particularities should be taken into account;

Monitoring: Knowledge of the social media posts of your own industry helps you to take protective measures or possibly use posts to your advantage (e.g. to prove violations);