On 6 March 2024 Puma suffered a blow in the European Court of Justice when it failed to overturn an earlier decision of the European Intellectual Property Office (EUIPO).
The case concerned Puma’s attempt to register as a EU design (RCD) its “Puma Creeper Shoe” and the effect which the prior disclosure of the new trainer model via Rihanna’s Instagram account had on Puma’s application for registration.
Background to the case
The dispute dates back to 2019 when a Dutch footwear wholesaler applied for a declaration of invalidity against Puma’s registered shoe design.
In support of the wholesaler’s application, they provided a series of photographs that Rihanna had shared via her Instagram account in December 2014, in which she wore a pair of white Puma trainers with a thick black sole. The posts were shared to mark her signing as Puma’s creative director.
The Dutch company argued that the sharing of these photos meant that, by the time Puma had made its application to register the design in July 2016, the shoes lacked the required novelty and individual character to qualify for registration as an RCD.
What are the requirements for a registered design?
“Novelty” and “individual character” are two important requirements of both the UK registered design regime, and EU Community design regime.
To satisfy the novelty requirement, the design (that is, the appearance of the whole or part or a product resulting for example from its lines, contours, colours, shape, texture, materials or ornamentation) must be new.
In short, an identical design must not have been disclosed anywhere in the world, so that it could have reasonably have become known in the normal course of business to the relevant sector in the UK or the EU before the registered design application has been made (or its “priority date”).
This includes instances where the applicant themselves is responsible for the disclosure. To satisfy the individual character requirement, the design must give a different overall impression from existing designs. Prior disclosure can therefore invalidate both requirements.
The holder of a registered design whether in the UK or the EU enjoys up to a 25-year monopoly right in the design (provided it is renewed every five years) and can sue for infringement. Protection of registered design rights lasts much longer than unregistered designs which, in the UK, typically last 15 years from the date of creation, or 10 years from the date a product is sold if this is sooner, or three years in the EU.
Why was the sharing of the photos an issue?
The Instagram posts were significant because their reach and timing demonstrated prior disclosure and served to invalidate the novelty and individual character requirements of Puma’s RCD.
The European Court of Justice decided that the very first Instagram post, which received over 300,000 likes, met the test for prior disclosure as it “could have become known to circles specialised in the sector concerned, operating in the European Union”. It rejected Puma’s assertion that the disclosure was obscure and “nobody took an interest in Rihanna’s shoes in December 2014”.
Puma was also unsuccessful in arguing that the photos were of insufficient quality to invalidate the RCD and that it was only thanks to enlargement that some of the features of the prior design could be identified.
Disclosures made by a designer during the 12 months prior to filing will not invalidate an RCD. This “grace period” can be a useful mechanism by which designers can “test the waters” in respect of the likely success of new designs on the marketplace before they register them. However, in this case, the Instagram disclosure predated the filing of Puma’s registered design application by more than 12 months, and proved fatal to the validity of Puma’s RCD.
The terms of Rihanna’s contract with Puma (which she was pictured signing while wearing the trainers) remain unknown. Nor is it known why Puma delayed in applying to register the design or if they consented to the posts being made public.
What if events had unfolded in the UK rather than the EU?
Unfortunately for Puma, the result would have been the same.
The UK registered design regime was harmonised with the EU regime prior to Brexit. All RCDs existing at the end of the Brexit transition period (31 December 2020) automatically became UK registered designs. However, following Brexit, separate applications to the UKIPO and EUIPO are now required to register a design in the UK and EU.
The UK allows for publications to be deferred for up to 12 months; the EU allows for deferrals of up to 30 months.
“Take Care”
The Puma and Rihanna case shows that great care must be taken at every stage of the design disclosure and registration process (particularly given the dominance of social media in society).
Care should also be taken in the arguments submitted to, in this case, the European Court of Justice. This is because if it was the case that “nobody took an interest in Rihanna’s shoes in December 2014”, it almost begs the question as to why Puma had linked up with Rihanna in the first place?
This judgment also serves as a useful reminder that UK and EU registered designs are not examined by the relevant intellectual property office before they are registered. Just because a registered design exists does not mean it is valid.
The moral of the story?
Design owners must strike a careful balance between reaping the benefits of celebrity endorsement or collaboration versus the protection of their intellectual property rights, which may entail exercising greater control over social media posts, even if this is unpalatable to the celebrity in question.
If a design is disclosed to the public or shared widely over social media before it is registered, the clock will start ticking on the 12-month grace period.
Early protection is therefore vital for important designs, even if it means depriving influencers or ambassadors of a “sneaker” preview.
