[Guest post] A correct reading of the ‘Puma-Rihanna’ case (T-647/22) – Five steps to happiness

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the ‘Puma-Rihanna’ decision issued by the General Court of the European Union on 6 March 2024 (Case T-647/22) [reported and commented by The IPKat here and here]. Here’s what Henning writes:

A correct reading of the ‘Puma-Rihanna’ case (T-647/22) – Five steps to happiness

by Henning Hartwig

Rihanna's IG post

Attention had been clearly different if it was not Puma but a safety boot, and if the prior art was not from
Rihanna’s Instagram account but an agonizingly boring middle-class DIY trade show. Indeed, not many design matters have received the publicity if not passionate outcry that we have seen in case of the ‘Puma-Rihanna’ decision issued by the General Court of the EU (6 March 2024, Case T-647/22). In fact, this is not Puma versus Rihanna but, eventually, Rihanna’s Instagram activities, unintentionally, happened to become the death knell to Puma’s registered Community Design (‘RCD’) no. 3320555-0002 (‘contested RCD’).

But how could it be that a famous fashion icon failed to establish valid design protection for a shoe, in the EU, that used to become a bestseller (here and here)? Well, if well-established principles of EU design law were applied correctly, and in the correct order, this inevitably would lead (and eventually lead) to the only rightful outcome in the case at hand – lack of validity of the contested RCD.

Accordingly, there are a total of five steps to be taken when assessing the validity (more specifically: individual character) of a design, namely (i) determining the subject matter of the contested RCD, preferably by identifying its characteristic features of appearance (feature analysis), (ii) determining the subject matter of the relevant prior art (prior design), again, preferably by identifying its characteristic features of appearance (feature analysis), (iii) determining the abstract freedom of the designer of the contested RCD (variety/multiplicity of forms-test), (iv) assessing the degree of departure of the contested RCD from the prior design, and, finally, (v) comparing the overall impression produced by the prior design on an informed user and the overall impression produced by the contested RCD. Let’s start the journey:

I.

Under a correct reading of the Community Designs Regulation (‘CDR’), testing validity of a design starts with determining the subject matter of the contested RCD, preferably by identifying its characteristic features of appearance. This is what the Board of Appeal also did in the contested decision (11 August 2022, Case R 726/2021-3 para 54). The feature analysis proceeds from what is shown in the various views, if any, submitted with the application for a registration of the contested RCD. In the case at hand, the Board of Appeal identified overall six features (or sub-groups of features), considering all seven views representing the contested RCD, including the front and the rear view. From the General Court’s decision, it does not appear that Puma challenged the language chosen by the Board of Appeal.

II.

As a next step, the same exercise must be done when determining the subject matter of the prior design as the Board of Appeal also did (Case R 726/2021-3 para 55), overall identifying seven features (or sub-groups of features) of the prior design. In doing so, the Board of Appeal proceeded from the understanding that what Rihanna had disclosed in the various Instagram posts amounted to one single prior design only (Case R 726/2021-3 para 37 et seq.). It seems that Puma did not challenge the Board of Appeal’s language in determining the subject matter of the prior design. Also, Puma did not challenge the finding that Rihanna, overall, disclosed only one prior design.

III.

As a third step on the way to finding presence or absence of individual character, one need to establish, under Article 6 (2) CDR, the degree of abstract freedom of the designer of the contested RCD in view of the existing variety of prior art (variety of forms-test). In that respect, the Board of Appeal found, not much to our surprise (and not challenged by Puma before the General Court), that the designer’s freedom in developing shoes was ‘wide’, with the ‘plethora of examples of shoes furnished by the parties’ showing a ‘great variety of designs in terms of, inter alia, shape, outer surface decoration, material and colour combination’ (Case R 726/2021-3 para 50). Consequently, following established law and practice, the greater the designer’s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user (Case R 726/2021-3 para 49).

IV.

Proceeding from these findings, which, in essence, remained unchallenged, the Board of Appeal had to assess the degree of departure of the contested RCD from the prior design under Article 6 (1) CDR, i.e., to find whether the prior design and the contested RCD had ‘significant differences’ (see above at IV). Accordingly, the Board of Appeal compared the seven features (or sub-groups of features) of the prior design with the overall six features (or sub-groups of features) of the contested RCD (Case R 726/2021-3 para 51 et seq.).

Pumas are bigger Kats

In doing so, the Board of Appeal correctly held that the point of reference for the assessment of the individual character is the contested RCD under examination given it is its validity which is at issue. Accordingly, the colour or additional elements of the prior design were not taken into consideration as the contested RCD is represented in a technical drawing that does not disclose any colour (Case R 726/2021-3 para 52). As a result, the Board of Appeal concluded that there was ‘only one difference, in the additional topstitching (composed of three wavy lines that curve around the back of the shoe) and the verbal element ‘PUMA BASKET’ next to a figurative depiction of a leaping cat present in the prior design, which are absent in the contested RCD’ (Case R 726/2021-3 para 58; in this respect, the decision of General Court in T-647/22 seems indeed challengeable as submitted elsewhere). However, as there was no counterpart to these features (taken from the prior design) in the contested RCD, they had to be ignored (thus, the test is not whether the ‘entire earlier design must have been disclosed’ as argued elsewhere).

In other words: While the owner of the claimed design cannot avoid invalidity simply by omitting matter from the prior design (colour, for example) things might be different where the holder adds to the prior design (colour, for instance) as explained elsewhere. Here, however, the designer of the contested RCD merely added a rear and bottom view, which evidently did not suffice to find presence of ‘significant differences’ between the prior design and the contested RCD. Thus, overall, the Board of Appeal was correct in finding that the fact that the contested RCD discloses views from the rear and bottom of the shoe which are not shown in the images of the prior design did not justify a different outcome (Case R 726/2021-3 para 59).

V.

On that basis, the Board of Appeal correctly found that when comparing the overall impression produced by the prior design, on an informed user, and the overall impression produced by the contested RCD, the outcome was that the designs at issue did not have significant differences and, thus, produced the same overall impression on an informed user.

As a final remark, while the Board of Appeal’s decision might serve as the perfect textbook example, the ‘Puma-Rihanna’ case also perfectly demonstrates that the requirement for novelty rarely will be tested in daily practice (this Katfriend has seen half a dozen cases, at best, where lack of novelty was tested and/or found in the past 20 years). Consequently, the legislator should have abandoned the novelty test when reviewing, reshaping, and recasting EU design law.