Social media post fatal for tuk-tuk design registration

You proudly showcase your new product online.

Everyone can see what a beautiful creation it is. Then it hits you: I need to register it as a design to prevent someone else from copying it. But what if it’s already too late?

A design registration in the European Union requires two things: the design must have individual character and be new. When it comes to the novelty requirement, unfortunately, you can be your own worst enemy: if you've already made the design public before filing for registration, even by sharing it online, it might no longer be considered new. And without novelty, your design could be ineligible for protection.

Recently, the Polish company Elektrobud registered a design for the body of a kind of tuk-tuk (specifically, the loading structure of the vehicle).

A German party filed a request for invalidity, arguing that the design lacked novelty. Under design law, you have 12 months after the first public disclosure of your design to file your application without affecting the novelty requirement.

What happened? Unfortunately for the Polish party, they had already shared—and thus publicly disclosed—the design more than two years before filing, via Facebook, YouTube, and their website.

The EUIPO compared the contested design with the earlier disclosures to determine whether they concern identical products.

The EUIPO noted that the only differences lie in the drawer handles on the two storage compartments present in both vehicles. Aside from that, the designs are identical in shape, visible materials, and color. The doors and windows opened and folded in the same way. The conclusion is inevitable: the designs do not produce a different overall impression. The EUIPO declared the registration invalid.

A well-thought-out registration strategy and careful attention to timing are crucial. The best course of action is to refrain from disclosing your design to the public before it has been officially filed with the relevant authority. If you do, be sure to watch that strict 12-month deadline closely!

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.