Did Rihanna reveal enough?

Rihanna and Puma recently made headlines in invalidity proceedings concerning the following design for ‘shoes’ (Registered Community Design (‘RCD’) no. 003320555-0002):

Kevin Bercimuelle-Chamot reported the case here. The short version is that, on 16 December 2014, Rihanna published pictures on her Instagram account wearing shoes that appear to reproduce the design depicted above, such as the following picture:

Puma submitted the abovementioned RCD on 26 July 2016. A third party filed an application for a declaration of invalidity against Puma’s RCD alleging that it lacked individual character (Art. 25(1)(b) Community Design Regulation, ‘CDR’) because it had been disclosed by Rihanna more than twelve months prior to Puma’s RCD application (Art. 7(2)(b) CDR).

The Invalidity Division of the European Union Intellectual Property Office (‘EUIPO’), the Board of Appeal of EUIPO (‘BoA’) and the General Court confirmed that Rihanna’s pictures constituted disclosure and that the shoes she was wearing on the pictures produced the same overall impression as Puma’s RCD.

Although the case seems straightforward, the following statement in the General Court’s judgment (T-647/22 at para 49) merits a closer look:
Fourthly, the argument that not all views of the prior design are visible must be rejected. It is true that the applicant [meaning Puma] does not specify which part of the shoes appearing in the images in question is not visible. In the light of the images in question, it must be concluded that the applicant is referring to the rear part of the shoes. However, if the applicant’s argument is to be understood in such a way, that argument is not convincing. In the first photo set out in the first indent of paragraph 4 above and in the second image set out in the second indent of paragraph 4 above, a significant portion of the rear part of the left shoe worn by Rihanna can be distinguished. In view of the other photos and given that the shoes are manufactured in such a way as to constitute a pair of uniform shoes, it must be concluded that the left rear part of the left shoe – which is, admittedly, not perceptible – shares the features of the visible portion of the left shoe, in particular as regards the thickness of the sole and the vertical ribbing. Lastly, in view of the images in question, there is no reason to infer that the right shoe would be different from the left shoe, in particular as regards the thickness of the sole and the vertical ribbing.
The questions this paragraph raises are:

1. How much of an earlier design must be disclosed in order to invalidate an RCD?

2. Was the General Court entitled to assume what the non-visible part of the earlier design looked like?

3. Was the General Court entitled to engage in fact-finding?

1. How much disclosure is necessary?

The General Court seems to have assumed implicitly that the entire earlier design must have been made available (i.e. disclosed) to the circles specialised in the sector concerned (Art. 7(1) CDR).

This is in line with the case law requiring the comparison of the overall impression produced by the RCD and earlier designs under Art. 6(1) CDR to be made in the light of the overall appearance of each of those designs. It is not permissible to take individual features of several designs, combine them and compare that combination with the contested RCD (Court of Justice of the EU (‘CJEU’), Ferrari, case C‑123/20, para. 46). Therefore, it is for the invalidity applicant to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered (CJEU, Easy Sanitary Solutions v Group Nivelles and EUIPO, cases C-361/15 P and C-405/15 P, para. 65).

This seems to be a reasonable result because a design applicant makes a deliberate choice between the following options when filing an RCD application:

1. The applicant can file for protection of the entire product design. In this case, one design with several views from all angles is submitted, as Puma did here.

2. The applicant can also file for protection of individual parts of the product design, e.g. the sole or a side view. As the CJEU held in Ferrari (case C‑123/20), essentially all (visible) parts of a product can be protected individually as Community designs.

3. The applicant may also choose both options 1 and 2.

As to enforcement, option 1 has the disadvantage that the overall impression of an allegedly infringing design may be different (and therefore not infringing) because of an alteration or addition of a single element to the contested design, which is only visible from a particular angle but not from all others. E.g. a different sole design can produce a different overall impression.

The beneficial flipside of option 1 is that it is more difficult for a third party to invalidate the RCD for the same reason. An earlier design that differs in one aspect, which is visible only from one angle, may already produce a different overall impression.

The situation is reversed for option 2. Enforcement of an RCD showing, for instance, a sole is easier because it does not matter what the upper shoe looks like. Only the soles may be compared. Conversely, if an invalidity applicant produces pictures of a sole with the same overall impression as the RCD, the design of the upper shoe (and its disclosure) are irrelevant.

As a consequence, an RCD applicant who chooses option 1 should benefit from the fact that an invalidity applicant cannot produce the entire earlier design.

For these reasons, it appears justified to require the invalidity applicant to show the disclosure of the entire earlier design. Likewise, in infringement proceedings, the RCD owner has to submit the infringing product design in its entirety.

2. Assumptions on the appearance of non-visible parts?

If it is necessary that the entire earlier design must have been disclosed, the next question is whether the General Court was justified to make assumptions on what the non-visible parts of the earlier design looked like.

In the same decision, the General Court held that
the disclosure of an earlier design cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence that proves effective disclosure of the earlier design on the market.
This statement applies to the disclosure of the earlier design as such. There is no apparent reason not to apply it to the disclosure of parts of the earlier design. The ‘solid and objective evidence’ requirement can be considered as a general principle of EU design and trade mark law (e.g. T‑74/23 at para. 28).

The General Court merely assumed that the non-visible part of the left shoe shares the same features as the visible parts and that shoes are manufactured to constitute a pair of uniform shoes. This is, of course, a reasonable assumption but it is still not more than that. Shoe designs are so diverse and varied that it is difficult to infer from the design of one part to another. One cannot even infer from the design of the right shoe to that of the left shoe since there are ‘mismatched’ shoes (e.g. PUMA x Rick and Morty MB.02, adidas x Sean Wotherspoon Gazelle Indoor "Corduroy" and Nike Air Max Plus Color).

Furthermore, assuming what a part of an earlier design looks like essentially reverses the burden of proof. As mentioned above, it is for the invalidity applicant to identify and reproduce precisely and entirely the earlier design (cf. CJEU, Easy Sanitary Solutions v Group Nivelles and EUIPO, cases C-361/15 P and C-405/15 P, para. 65). The General Court’s reasoning has the consequence that it would have been on Puma to establish that the rear part of the disclosed left shoe has a different design and may, therefore, produce a different overall impression on the informed user. Such a reversal may be justified in the present case because Rihanna wore Puma’s shoes and Puma, of course, knows its own shoe design. However, it would be difficult to justify a reversal in situations where an earlier third party design is claimed to produce the same overall impression.

3. Fact-finding by the General Court?

Further, was the General Court entitled to engage in fact-finding by assuming what the rear part of the left shoe looked like without referring to findings of the BoA in this respect?

The purpose of an action before the General Court is a review of the legality of the decisions of the BoA. That review must be carried out based on the factual and legal context of the dispute as it was brought before the BoA (consistent case law, e.g. T-724/17 at para. 21). Neither the parties (cf. Art. 188 of the Rules of Procedure of the General Court) nor the General Court may go beyond this factual and legal context (T-36/17 at para. 18). Thus, if the BoA did not establish what the rear part of the left shoe looked like (even by making an assumption), it seems to be contrary to the aforementioned principle for the General Court to make such a finding for the first time.

It would be interesting to know what the CJEU would respond to these questions.

Did Rihanna reveal enough? Did Rihanna reveal enough? Reviewed by Marcel Pemsel on Monday, April 08, 2024 Rating: 5

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