This article first appeared on WTR Daily, part of World Trademark Review, in November 2018. For further information, please go to www.worldtrademarkreview.com.


  • Mamas and Papas Ltd sought a declaration of invalidity of a registered Community design on the grounds that it was not new and lacked individual character
  • The Board of Appeal and General Court found that the applicant had not adduced solid and objective evidence of prior disclosure
  • The fact that evidence of disclosure was not challenged by the rights holder did not strengthen the evidential value of the documents provided or compensate for lack of evidence

The decision of the General Court of the Court of Justice of the European Union (CJEU) in Mamas and Papas Ltd v European Union Intellectual Property Office (EUIPO) (Case T‑672/17) highlights the care parties should take in ensuring that they have obtained and present best evidence in proceedings not only before the CJEU, but also before lesser tribunals, including those in the EUIPO.

In this case relating to invalidity proceedings brought by Mamas and Papas Ltd against a registered community design in respect of cot bumpers:

  • The Board of Appeal of the EUIPO found that Mamas and Papas Ltd had not adduced solid and objective evidence of the prior disclosure; the fact that the evidence of disclosure was not challenged by the rights holder did not discharge it of its obligation to adduce such evidence.
  • The General Court agreed and ruled that prior disclosure cannot be proved by means of probabilities or suppositions and must be proved by solid and objective evidence; the fact that the evidence of disclosure was not challenged by the rights owner did not strengthen the evidential value of the documents relied on by Mamas and Papas Ltd or compensate for the lack of solid, objective evidence.
  • Accordingly, the Board of Appeal was right to find that the evidence submitted by Mamas and Papas Ltd was not sufficient evidence of effective prior disclosure of an earlier design and, as a result, it was not necessary to consider the validity of the registered design on the grounds that it lacked novelty or individual character.

The decision of the court in this case indicates that, where a party fails to cite solid and objective evidence, the court will not adduce it for them and, in particular, not because the other party has not challenged the evidence which has been presented.

Background

This case is an appeal to the General Court from a decision by the Board of Appeal against Mamas and Papas Ltd, which had made an application for invalidity of a registered Community design (RCD) under Article 25(1)(b) of Regulation 6/2002 against Ms Wall-Budden, on the basis that the RCD was not new and lacked individual character as required by Articles 5(1) and 6(1) of Regulation 6/2002.

Under Article 5(1), a design will be considered to be new if no identical design has been made available to the public. A design will be deemed identical to another if their features differ only in immaterial details.

Under Article 6(1), a design will be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.

For the purposes of both, a design will be deemed to have been made available to the public under Article 7(1) if it has been published following registration, exhibited, used in trade or otherwise disclosed before the date of filing of the design (if an RCD).

The board made findings on several grounds but, crucially, in respect of both Articles 5(1) and 6(1), the board decided that:

  • regarding whether a prior design had been disclosed to the public, this disclosure cannot be proved by probabilities or suppositions, but must be demonstrated by solid and objective evidence;
  • the burden of proof lies with the invalidity applicant;
  • the evidence supplied did not reach the level required to prove disclosure; and
  • the fact that the evidence or disclosure generally was not contested could not discharge the applicant from the burden of proof and nor would it compensate for the lack of any evidence.

As disclosure of a prior design was not proved, it could not be shown that the design was neither new or not of individual character, and the board dismissed the appeal.

Appeal

Although Mamas and Papas Ltd appealed against the entirety of the board’s decision and made four separate pleas, only the first is relevant. Alleging infringement of Article 7(1) by the board, Mamas and Papas Ltd argued that the board:

  • had erred in its examination of the facts constituting disclosure; and
  • had made an incorrect assessment of the evidence produced for the purposes of establishing the facts constituting disclosure.
Decision

In relation to the first argument, Mamas and Papas Ltd alleged that the board was not entitled to find that the evidence submitted was insufficient to prove disclosure of the prior design, since that claim had not been called into question by Wall-Budden during the proceedings.

The court ruled that, in accordance with Regulation 6/2002, the examination of the EUIPO is restricted to the facts and evidence submitted by the parties; that did not mean that it was required to accept points put forward by one party merely because they are not challenged by the other. As such, the court dismissed the first argument.

In relation to the second argument, the court ruled that a prior design will be deemed to have been disclosed to the public once the party asserting this has proven the facts constituting disclosure. The means of doing so are not expressly set out; Mamas and Papas Ltd was free to choose the evidence it considered useful in support of its application and the EUIPO was required to examine whether the evidence actually submitted proved disclosure.

Mamas and Papas Ltd had only produced a letter, together with its annexes, in evidence of prior disclosure, the evidential value of which (for a variety of reasons including the lack of independent source) was uncertain. The court pointed out that, in the circumstances, Mamas and Papas Ltd had not adduced any solid, objective evidence of effective disclosure of the prior design.

Further, the mere fact that Wall-Budden had not challenged the disclosure did not strengthen the evidential value of the documents provided or compensate for the lack of evidence. As such, the court dismissed the second argument and therefore the first plea in its entirety.

The court did not find it necessary to consider the other pleas since, in order to do so (ie, to assess the validity of an RCD on the grounds that it lacked novelty and distinctive character), it was necessary to prove prior disclosure of an earlier design which is identical or similar to it, which Mamas and Papas Ltd had failed to do.

Accordingly, the court dismissed Mamas and Papas Ltd’s appeal and awarded costs against it.

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