Rihanna and Puma grabbed attention amid invalidity proceedings in a recent decision issued by the EU General Court concerning a specific Registered Community (EU) Design for ‘shoes’ (Registered Community Design (RCD) no. 003320555-0002).

The case, revolves around Rihanna’s Instagram post on December 16, 2014, featuring images of her wearing shoes resembling the aforementioned design. Puma later submitted the RCD on July 26, 2016. A third party then filed for a declaration of invalidity against Puma’s RCD, arguing it lacked individual character under Article 25(1)(b) of the Community Design Regulation (CDR) due to the prior disclosure by Rihanna.

Requirements of a registered design

In order for an RCD to be valid it must be “novel” and have “individual character”. To meet the novelty requirement, the design must be new, such that no identical design has been disclosed anywhere in the world prior to the application. Importantly, there is also a 12-month grace period provides a 12-month period of time in which disclosures made as a result of the designer will not invalidate an RCD.  The 12-month grace period is often used by a designer to test the success of a design before filing any applications.

The individual character requirement necessitates that the design gives a distinct overall impression from existing designs.

As such, prior disclosure can invalidate a subsequently registered design.

The decision

In brief, the General Court concurred with the European Union Intellectual Property Office’s (EUIPO) Invalidity Division and the EUIPO Board of Appeal (BoA), and deemed that Rihanna’s images constituted disclosure, with her shoes producing the same overall impression as Puma’s RCD.

On the main argument of lack of individual character, Puma argued that the photos were of insufficient quality and do not focus on the shoes but instead focus on Rihanna. Moreover, Puma argued that the images do not contain enough detail to make the features of the prior design visible. For example, they argued that Instagram images are almost exclusively viewed on mobile phones and that in 2014 Instagram did not allow users to zoom in to the images to view the features of the shoes in more detail.

In response to the arguments, the Court carried out a two-step test, and determined that:

• the images make it possible to identify with the naked eye or by enlarging the photos all the features of the earlier design from various angles; and
• as Rhianna was a world-famous pop star, and thus her fans and the fashion community would have an interest in her clothing, then the disclosure could have reasonably become known in the normal course of business to the circles specialised in the sector concerned operating within the EU.

The Court also ruled that the 12 month grace period, did not apply as the design application was filed outside the 12-month period.

As such, the Appeal was dismissed, and the design was deemed invalid.

Key takeaways

This case underscores the need to try and file registered design applications as soon as possible after first disclosure – and ideally before first disclosure, if possible.

Design owners must carefully balance the benefits of celebrity endorsements or collaborations and testing the success of a design with the protection of intellectual property rights.

However, if this is not possible, this case spells out the importance of carefully monitoring social media posts by any person who might inadvertently advertise the design before a design application is filed and/or proves the importance of having non-disclosure agreements in place to prevent unintended disclosures.

If you have a question about this case or need advice on registering design applications please contact one of our attorneys who will be happy to help.