A recent European Court of Justice decision on the disclosure threshold for registered designs has sparked much interest in Italy, given that trade dress in Italy is protected via registered designs

This article first appeared in World Trademark Review magazine issue 67, published by The IP Media Group. To view the issue in full, please go to http://www.worldtrademarkreview.com

As in the rest of the European Union, trade dress (ie, the shape and external appearance of products) in Italy is protected through registered designs.
Design registration is an efficient and effective means of protection due to the short timeframe from application to registration and the ease of enforceability.
Moreover, the presumption of validity enjoyed by registered designs makes enforceability even more effective (if a defendant wishes to discharge an action based on a registered design, the burden of proof lies with it).
In this regard, EU law and standards fully align with Italian practice, particularly with respect to disclosure – taking into account the one-year grace period – which makes the registration invalid in accordance with both EU regulations and the Italian Code of Industrial Property.
Both ‘informed user’ and ‘disclosure’ have particular meanings in Italian and EU law. Not all types of disclosure
are considered to destroy novelty or to challenge the validity of the design registration, and the fact that a design protected product is disclosed in such a way that its informed user “could not [have] reasonably… known in the normal course of business” is not sufficient to undermine the design’s validity. Attention
should focus not on all informed users, but rather on those belonging “to the circles specialised” in the sector at issue operating within the European Union. If a member of such a circle could reasonably have had knowledge of such disclosure, then the design will no longer be considered valid.
Because there are no administrative proceedings at the Italian Patent and Trademark Office which enable potential invalidity actions and the few Italian courts entrusted with design cases function as courts for Community designs, there is limited case law on this matter in Italy.
Therefore, in order to arrive at a full understanding of the rule of law in Italy, one must understand the EU decisions (judicial and administrative) which align with Italy’s design standards on disclosure.

When does disclosure take place?
Last year the Board of Appeal of the EU Intellectual Property Office (n R 277/2016- 3, July 13 2016) held that even if a product registered as a Community design is disclosed online, this will not affect the registration’s validity because it could not be reasonably known from within specialised circles.
With regard to design disclosure (as novelty destroying), according to Article 34 of the Italian Code of Industrial Property, a design is deemed to have been made available to the public if it has been exhibited, used in trade or otherwise disclosed before the filing date or, as the case may be, the priority date of the contested registered design – except where these events could not reasonably have become known in the normal course of business to specialised circles in that sector.
However, in Coverpla v Office for Harmonisation in the Internal Market (T-450/08), the European Court of Justice (ECJ) found that disclosure cannot be proven by means of probability or mere supposition, but must be demonstrated by solid and objective evidence. Such evidence must be considered in its entirety.
In fact, while some elements of the evidence considered on their own may be insufficient to demonstrate the disclosure of a prior design, when combined or in conjunction with other documents or information, they can contribute to proof of disclosure.
The court found that, taking these principles into account, the publication of photographs on the design holder’s Facebook page could not be considered an event which could have reasonably become
known in the normal course of business to the relevant circles of designers.
The ECJ’s conclusions were based on a previous ruling in H Gautzsch Großhandel GmbH v Münchener Boulevard Möbel Joseph Duna GmbH (C‑479/12), where the court ruled on the uncertainty of whether the distribution of images of a design to traders was sufficient grounds for considering that, in the normal course of
business, the design could reasonably have become known to specialised circles in the sector concerned:

In that regard, the referring court states that it is assumed by some that those specialised circles include only
such persons as are involved in creating designs and developing or manufacturing products based on those designs within the sector concerned. Thus, on that view, it is not traders as a body that are regarded as forming part of the circles specialised, but only those which have a creative influence on the design of the
product they are marketing (C‑479/12 para 25).

The main issue is how to identify so-called ‘specialised circles’, since this is a matter of actual jurisprudence only. The general statutory laws provide a broad overview of ‘novelty destroying’ and ‘disclosure’. However, the matter should be analysed and decided on a case-bycase basis.
Joined Cases T-22/13 and T-23/13 provide some helpful clarification in this regard:
Regulation lays down no restrictions relating to the nature of the activity of natural or legal persons who may be
considered to form part of the circles specialised in the sector concerned.
Moreover, it can be inferred from the wording of that provision, especially from the fact that it considers use in trade to be one means of making unregistered designs available to the public and the fact that it requires ‘the normal course of business’ to be taken into account when assessing whether events constituting disclosure could reasonably have become known to the circles specialised, that traders which have not been involved
in the design of the product in question cannot, in principle, be excluded from the group of persons who may be considered to form part of those circles.

Therefore, in order to carry out the ECJ’s assessment, one must examine whether, on the basis of the facts – which must be adduced by the party challenging the disclosure – it is appropriate to consider the probability and possibility of those circles becoming aware of the events defined as ‘proper disclosure’. At the same time,
one should analyse what can reasonably be required for those circles in terms of awareness of prior art. Those facts may be represented by:

[T]he composition of the specialized circles, their qualifications, customs and behaviour, the scope of their activities, their presence at events where designs are presented, the characteristics of the design at issue, such as their interdependency with other products or sectors, and the characteristics of the products into which the design at issue has been integrated, including the degree of technicality of the product concerned.
In any event, a design cannot be deemed to be known in the normal course of business if the circles specialized in the sector concerned can become aware of it only by chance.

Does Facebook count?
These principles apply to the ruling on whether disclosure by Facebook could affect the decision on the invalidity of the disclosed design. The board stated that, in order to identify the specialized circles in this case, a preliminary analysis was needed. Thus, the starting point was to understand the well-known facts and purposes of Facebook – a social networking website which allows users to connect with family and friends.
Businesses, companies and organisations use Facebook for similar purposes:
namely, to connect with staff and potential clients.
However, a number of screenshots are not intended to provide commercial information about products, but to show the professional and social activities of the company’s staff. To determine whether Facebook reaches a specialized circle, it is important to analyse Facebook users’ responses to relevant publications by counting user likes and reactions, as well as the type of user reacting. In particular:

[T]he mere publication of photos on a Facebook page that is accessible to the general public cannot prove disclosure… since there is no indication that Facebook pages are consulted by the relevant circles in the normal
course of business. The photos shown on the screenshots do not provide any information as to the specificities of the product. There are no technical specifications, product descriptions or any indications as to article number and price. The Board considers it highly unlikely that a member of the relevant circles would consult Facebook pages in the normal course of business in order to obtain information with regard to the product range, in particular when the information can be easily accessed by the company’s website. There is also
no reason to assume that a designer, manufacturer or trader of smoke alarms doing an internet search would give preference to the Facebook page of ‘253 likes’ and ‘67 were here’ over the website of the company’s official distributor when faced with the choice. Hence it would only have been by chance that the relevant circles had become aware of the design which is not sufficient for establishing disclosure (21/05/2015,
T-22/13, Umbrellas, EU:T:2015:310, §29).

Comment
This decision shines a spotlight on the disclosure threshold as applied to social media. However, as a result of thespecialised circle standard, even though potential applicants may have already ‘disclosed’ their products in a way which makes the publication unknowable in relevant specialised circles, they are still entitled to seek and maintain design registration.