The EU General Court very recently upheld an EUIPO decision that a Registered Community Design (RCD) for one of Puma’s shoes was invalid as Rihanna had disclosed the design to the public by wearing a similar shoe over two years before. (Puma SE v EUIPO Case T‑647/22).

Background

On 26 July 2016 Puma filed for a RCD with the EUIPO for the following design:

On 22 July 2019, an intervener, Handelsmaatschappij J. Van Hilst BV, filed a declaration of invalidity with the EUIPO citing that the design did not have individual character because it had been disclosed by the applicant itself.

This disclosure stemmed from several articles reporting Rihanna’s appointment as Puma’s new creative director which reproduced images from Rihanna’s own Instagram account posted on 16 December 2014. These articles included the following pictures:

An article was also submitted from ‘hausofrhianna.com’ dated 17 December 2014, which included the following image:

Although an applicant for a registered design is permitted to disclose its own design to the public without invalidating that design, the disclosure must have taken place during the 12-month period preceding the date of filing the application. In this case the disclosure took place 1 year and 7 months before.

Consequently, the EUIPO granted a declaration of invalidity. It stated that the design did not have individual character due to similarity between the overall impression of the design and the overall impression of the shoe Rihanna was wearing in the pictures above.

Puma’s appeals

Puma’s first appeal before the Board of Appeal (BoA) was dismissed in its entirety. The BoA confirmed that the pictures were sufficiently clear to show that the shoe in Rihanna’s pictures ‘destroyed’ the individual character of the design. It observed that Puma had not produced any evidence to show that:

1. The articles/Instagram post had been altered; or
2. The online publication of the articles/Instagram post was insufficient to enable specialist circles in the EU to become aware of the prior design.

Puma then appealed to the EU General Court stating that the Intervener had breached contractual provisions and acted in bad faith by applying for a declaration of invalidity and that the[HH1]  evidence adduced by the Intervener was insufficient.

The first ground of appeal was quickly dismissed as bad faith or the abusive character of the application were not relevant defences.  The key determination was whether the design possessed individual character.

The second ground was considered in more detail. Puma argued that the images in the articles and the Instagram post were blurry, required enlargement to see the shoes clearly, and focussed on Rhianna rather than the shoes.  They also questioned the authenticity of the image from ‘hausofrhianna.com’ as the website was from an unofficial fan page.

The General Court agreed with the BoA that the images were sufficiently clear to show that Puma’s design had been disclosed and would have been known to the circles specialised in the sector operating in the EU, and that the image from ‘hausofrhianna.com’ was therefore irrelevant. The appeal was therefore dismissed and the design declared invalid.

Key  takeaway

Applicants must be vigilant about prior disclosures and time their product releases to avoid invalidating their design applications. This is especially critical for those in the fashion industry, where clothes and shoes are often gifted to influencers or celebrities and will likely be disclosed online upon release.