A slippery design can't slide away from invalidation at EUIPO

Not quite a glass slipper

Designs are often denied the IP limelight. This is for many reasons. One cause is perhaps a little circular: because designs are less well known less people file them than TMs and patents and therefore they receive less attention. The media's tendency to report design disputes as copyright decisions does not help things.

Whatever the reason, the cycle of limited design knowledge continues and this can mean that occasional gems such as the following invalidity decision from EUIPO can be overlooked.

It is no secret that this GuestKat has a particular interest in the fashion industry, so a recent decision involving Puma, Rihanna and Steven Madden (not to be confused with Madden NFL) piqued her interest.

This case is particularly interesting as it concerns (i) the design lacuna caused by the one year grace period and (ii) an ex parte injunction from a German court (in this instance the High Court of Dusseldorf). These are two classic design problems.

Steven Madden v Puma re Slippers ICD 11 196 (2019) concerns some slippers.

The lacuna

Steve Madden argued that the RCD was invalid based on a number of earlier designs (including one of their own designs). Puma pointed out that this was a bit of a cheek [Kat summary of their submissions] as these designs postdated the launch of the Puma slippers on which the so-called prior art was likely based. However, crucially, these designs predated the filing of the registered design. This is the classic lacuna of design protection.

The grace period only applies to self disclosures so in theory a copy which is filed within the maximum one year period from disclosure to the date the RCD is filed could invalidate the RCD. Puma argued that the prior art was included in bad faith but the invalidity division side stepped this question altogether by considering one bit of prior art which was dated several years before the start of the grace period in 2014.

The German injunction

Puma had been able to obtain an injunction and damages award from the Dusseldorf court on the basis of the design in a decision dated 28 August 2017. The invalidity division decision which invalidates the design came 18 months later. The apparent ease with which it is possible to obtain an ex parte injunction in Germany is a popular source of debate. This is particularly concerning where RCDs are concerned as the examination process is minimal.

The Puma RCD was ultimately invalidated by the invalidity division - presumably the German injunction no longer applies as a result (or at least once any appeals have been exhausted).

Are Amazon ASINs good evidence?

The means by which the Puma design was invalidated is perhaps a little troubling. It depended on the evidence of two ASIN numbers. As we learned in  Jadebray  & Noa and Nani v Clarke-Coles [2017] EWHC 1400 [on IPKat here], to encourage consistency across the site and make the sales process as easy as possible for consumers, Amazon encourages sellers to use pre-existing generic ASINs (or Amazon Standard Identification Numbers) where possible. Therefore whilst there may have been two ASINs assigned to the Rihanna slippers when the evidence was filed in 2017, the ASINs could have been assigned to different goods in 2014. It may not be relevant to this case, but it's a helpful reminder that not everything on the internet is permanent and digital recycling, particularly on sites like Amazon can pose a problem.