28/10/2022
An Instagram post by Rihanna in 2014 of her sporting a pair of shoes and liked over 300,000 times has resulted in a Community Design Registration of Puma SE, the well-known sportswear company, being invalidated by the EUIPO Board of Appeal.
The Community Design in question was for the following design:
The design was filed in 2016 but an invalidation action was subsequently filed against the registration by Handelsmaatschappij J.H. van Hilst, a Dutch shoe retailer, on the basis that the design lacked novelty and individual character compared to pre-existing designs, the two requirements for the registrability of a design. Whilst there is a 12 month grace period during which a design will not be deemed to have been disclosed to the public and therefore will not affect the assessment of the novelty and individual character of a design application or registration, disclosures outside this period of time are relevant.
In the present case, Rihanna posted the following images on her Instagram account in 2014 and they were used as evidence in the invalidation action:
The EUIPO Board of Appeal ruled that the contested design lacked individual character as the design evidenced in Rihanna’s post creates a similar overall impression to that of the contested registration, in view of the shape of the shoe, the placement of holes on the shoe and its distinctive thick sole. Given that the Instagram post was liked over 300,000 times, the post constituted a public disclosure made outside the 12 month grace period prior to the filing of the contested design and would have become known to the circles specialised in the footwear sector. The design was therefore ruled to be invalid in view of the prior disclosure.
This case demonstrates how important it is for a company to control the public disclosure of its products if they wish to gain a design registration to protect the look of their product. Whilst the retail of a product will inevitably involve marketing of it to the public (and in the case of Rihanna and Puma, a contractual promotional relationship), it is important to marry up the timing of this with considerations on securing intellectual property rights in the product. This is particularly the case where a company appoints a brand ambassador who has a significant public profile with a very accessible and instantaneous means of communication to the public which could doom a future design application in a click of a mouse.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
