Puma v/ EUIPO: Posts on celebrity's social media accounts may constitute early disclosure of a registered design

The promotion of items on social media by celebrities and influencers is commonplace for companies. Celebrities are often invited to collaborate to the creation of specific products, or even find themselves at the helm of a brand's artistic direction. However, these collaborations or partnerships don't always work out as they should.

This time, photos published on the Instagram account of singer and businesswoman Rihanna to celebrate her appointment as artistic director of the Puma brand did not go unnoticed [More Rihanna here and here]. Such is the starting point of a recent decision issued by the EU General Court.

A famous Kat

Facts

Puma SE filed an application to register a Community design on 26 July 2016. The design represents different views of a trainer, falling within class 02-04 of the Locarno Agreement.

Handelsmaatschappij J. Van Hilst BV applied to the EUIPO for a declaration of invalidity of the Community design based on Article 25(1)(b) of Regulation No 6/2002. In particular, the company produced publications taken from Rihanna’s Instagram account dated 16 and 17 December 2014 showing her wearing a pair of white shoes with a thick black sole.

In a decision dated 19 March 2021, the Invalidity Division granted the application for a declaration of invalidity. On 21 April 2021, Puma SE appealed against the decision of the Invalidity Division.

Puma's design

Analysis

In reaching its decision, the General Court divided its analysis into two parts, corresponding to the two pleas on which Puma SE had based its appeal. First, the Court ruled on the inadmissibility of the application for a declaration of invalidity. Then the Court ruled on the breach of Article 7(1) of Regulation 6/2002.

Inadmissibility of the application for a declaration of invalidity

The EUIPO first ruled on whether the application for a declaration of invalidity was inadmissible on the grounds of alleged bad faith, breach of a contractual obligation on the part of the intervener or the abusive nature of the application. Rejecting this reasoning, the General Court pointed out that “those factors cannot usefully be relied on as a defence in invalidity proceedings, such as those at issue, given that, in such proceedings, it is a matter of ruling on the individual character of the contested design, the assessment of which is objective”.

As result, the conduct of the parties has no influence on this assessment. This position is in line with T-450/08, Coverpla v OHIM - Heinz-Glas, [48].

To better understand this point, we need to go back to the facts of the case. Following an infringement action brought before the Dutch courts, the two companies had reached a legal settlement aimed solely at putting an end to the dispute. However, the purpose of such a settlement was not to create a prohibition on bringing an action for a declaration of invalidity of the contested design, contrary to what Puma SE held.

From a procedural perspective, this decision is a reminder of the need for vigilance on the part of the holder of a design who has brought an action for design infringement. It should be borne in mind that a settlement putting an end to an action for infringement of a design does not necessarily prevent an action for invalidity of the same design from being brought.

Breach of Article 7(1) of Regulation No 6/2002

The General Court then assessed whether the evidence provided by the intervener was insufficient to demonstrate disclosure of an earlier design before the start of the grace period within the meaning of Article 7(1) of Regulation 6/2002 [IPKAT on earlier design here and here].

The Court first recalled that “the assessment as to whether a design has individual character must be conducted in relation to one or more earlier designs, taken individually from among all the designs which have been made available to the public previously, and not in relation to a combination of features taken in isolation and drawn from a number of earlier designs”. This is in line with preexisting case law, notably with C‑345/13, Karen Millen Fashions, [25] and [35]. The earlier design as displayed on Rihanna’s post corresponded to those mandatory characteristics.

Then, relying on Article 7(1), the Court carried out a two-step analysis to establish the existence of the disclosure of an earlier design:

(1) Whether the evidence submitted in the application for a declaration of invalidity shows facts constituting disclosure of a design and that that disclosure occurred earlier than the date of filing or priority of the design at issue;

(2) Whether those facts could reasonably become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.

As regards the first step, the Court noted that all the images posted on Rihanna’s Instagram account [and because of their quality] make it possible to identify with the naked eye or by enlarging the photos all the features of the earlier design from different angles, such as “an upper with a low collar, a large flat sole of uniform thickness with pronounced ribbing, which creates a ledge with the upper or seven pairs of circular eyelets and a thick shoe lace”. Those features perfectly matched Puma’s contested registered design.

The Court quickly dismissed Puma’s argument that at the time of the singer's posts no one was interested in her shoes nor had seen the earlier design. Indeed, factually speaking, in December 2014, Rihanna was a world-famous pop star. It means that both her fans and the fashion community had developed a particular interest in her outfits. This included interest in the shoes she was wearing on the day she signed the contract with Puma.

As regard the occurrence of disclosure of the earlier design, Rihanna’s photos are dated 16 and 17 December 2014. The design application is dated 26 July 2016. It means that more than twelve months passed between these dates. The Court was therefore able to validly conclude that the grace period as understood under Article 7(2)(b) of Regulation 6/2002 did not apply.

As to the second stage, the applicant failed to prove that the photos disseminated on Instagram could not have been known to specialist circles. In this respect, the General Court pointed out that it is sufficient for the specialised circles in the sector concerned operating in the EU to have been aware of only one of the disclosures for the exception provided for in Article 7(1) not to apply. This is in line with T-651/16, Crocs, [57].


From a practical point of view, this decision should draw the attention of design applicants. An application must be filed without delay from the date on which the design is first unveiled (e.g. at a trade show, on social networks, launch event). The aim is to prevent self-disclosure from invalidating the application for lack of individual character. The twelve-month grace period is indeed not extendable. It is also worth preventing situations such as the one in this case. This can be achieved by signing NDA or at the very least by monitoring what is posted on social networks by one’s influencers and celebrities.