The publication of designs prior to filing for EU-wide protection can lead to invalidity. A sneaker design by Puma was declared invalid due to its prior publication by Puma creative director Rihanna on Instagram.
When global star Rihanna became creative director of sports label Puma in mid-December 2014, she posted photos of herself signing the contract on her Instagram account "badgalriri", wearing a pair of white sneakers with a thick black sole.
In August 2016, Puma registered the shoe model worn by Rihanna in the photos for EU-wide protection as a Community Design with the European Union Intellectual Property Office (EUIPO). This design has now been the subject of invalidity proceedings before the European General Court (GC; T-647/22).
Design protection in the EU
Registered Community Designs protect the appearance of products and their packaging. The prerequisites for enforceable protection are, among others, the "individual character" and "novelty" of the design. In that regard, a grace period applies. To be legally valid and enforceable, a design must be registered as a Community Design no later than 12 months after its initial publication that could have become known to the specialised circles in the sector concerned. Otherwise the right to protection expires.
Prior design disclosure led to invalidity
The GC found that the photos of the sneakers posted by Rihanna on Instagram in December 2014 were sufficient to prove the disclosure of the design at issue, as all the essential features of the earlier design were visible to the naked eye or by enlarging the photos.
Moreover, the shoes worn by Rihanna were found to be of interest to fashion professionals because Rihanna was already a world-famous pop star at the time. This implies that her fans and fashion professionals (namely the specialised circles in the sector concerned) had developed a particular interest in the shoes she was wearing on the day she signed the contract that made her the creative director of Puma.
In the decision (not yet final), the GC thus concluded that the design had been disclosed in December 2014, resulting in the Registered Community Design, applied for over a year later, being declared invalid.
Practical tip
To avoid prior publications that are detrimental to design protection, new product and packaging designs should be registered for design protection at an early stage. If you prefer to wait and see how a design performs on the market before deciding on design protection, you should at least document the date of the first publication (e.g. presentation on the internet, at a trade fair, in a press release) and apply for design protection within the following year at the latest. As both your own and third-party publications can destroy protectability as a design, confidentiality is advisable in the development phase, as is a quick application for protection after the launch. And for those who want both: publication of Community Design Applications can be deferred by up to 30 months from the earlier filing or priority date, so the design is filed but not published for a certain period of time.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
