EU Court ruling upholds invalidity action against PUMA shoe design

The EU General Court ruled on the invalidation of a community design by the EUIPO and an appeal against that decision (judgement of the General Court in Case T-647/22, Puma v EUIPO - Handelsmaatschappij J. Van Hilst), finding that PUMA's shoe design had lost its individual character due to its disclosure, which preceded the application for the disputed design by more than 12 months. The poor quality of the photos on Instagram or the lack of focus on the design of the shoes did not constitute a reasonable argument. The Court also held that the disclosure on a social media platform was sufficient for the design to become known to the relevant public. The ruling followed an action filed on 22 July 2019 in which Handelsmaatschappij J. Van Hilst BV applied for the invalidity of a community design registered for footwear. The grounds for invalidity raised by the applicant were that the design lacked individual character.

Key facts

Since 2016, Puma SE has held a registered community design for a shoe, as shown below:

Handelsmaatschappij J. Van Hilst BV filed an invalidity action in 2019 to invalidate Puma's registered design, arguing that the challenged design lacks individual character due to an earlier disclosure by Puma. Handelsmaatschappij also argued that the disclosure was made before the expiry of the 12-month grace period. The applicant invoked Articles 4(1), 6 and 7(2)(b) of Council Regulation No. 6/2002. Interestingly, the applicant submitted evidence regarding the disclosure, which included posts on Instagram containing photos taken from the account "badgalriri" (registered to the celebrity known as Rihanna), which showed Rihanna wearing a pair of shoes with a thick sole covered by Puma's registered design.

The Invalidity Division granted the cancellation application in 2021 and essentially concluded that the disputed design lacked individual character due to the prior disclosure. This viewpoint was subsequently adopted on appeal and, more recently, before the General Court.

Factors considered by the EU General Court

The General Court considered several factors to determine whether the prior design had been disclosed before the start of the grace period, and therefore whether the prior design had been disclosed within the meaning of Article 7(1) of the Council Regulation.

Instagram photos are solid evidence

The Court found the three Instagram posts with images from Rihanna’s ‘badgalriri’ account, which contained enough details of the shoe’s design or the features of the prior design to be apparent. The Regulation does not provide any guidance on the evidence of disclosure of the prior design that should be provided by the invalidity’s applicant. According to case-law, a design is considered to have been disclosed when the party claiming this has proven the events constituting the disclosure, and the Court found that the images below provide solid and objective evidence of the effective disclosure of the prior design in the market.

Disclosure test

In order to establish that an earlier design was disclosed, the Court conducted a two-step analysis consisting of (1) determining whether the evidence submitted included facts constituting a disclosure of the design at a date earlier than the filing date of the design application; and (2) determining whether the disclosure could have become known in the normal course of business to circles specialising in the sector concerned within the EU.

Proof of the disclosure events

The evidence presented included facts relating to the prior design disclosure. The court found that the images from the posts on Instagram and the article on the website <hauseofrihanna.com> contained enough detail for the features of the earlier design to be discernible. The photos show a front and side view of the shoes with multiple lines and holes along the upper shoe, a seven-hole fastener with thick laces and a flat thick sole with vertical stripes as well as all other features of the earlier design. This perception is also immediate. Interestingly, the Court used the argument that photos posted on Instagram can be subject to a screenshot, which in turn can be enlarged.

Disclosure known to the relevant circle

On the day of the disclosure in December 2014, Rihanna was a world-famous pop star so it is clear that both her fans and a specialised fashion audience were particularly interested in the shoes that she was wearing or showing on her social media profile. The relevant public looked at the photos carefully and in detail, thus recognising all the features of the earlier design. The General Court confirmed this view that the disclosure events may have become known to circles specialised in the relevant fashion sector operating in the EU.

Invalidity proceedings follow an objective assessment

In addition, the Court examined Puma's first plea that the invalidity application was inadmissible. Puma argued that the invalidity’s applicant had breached certain contractual obligations existing between the parties and acted in bad faith in making the invalidity application. The Court rejected Puma's arguments as unsubstantiated and ruled that invalidity proceedings are a matter of judgement on an objective assessment of the design and its individual nature, and factors such as bad faith, breach of contract or abusive character cannot be used as defence mechanisms in invalidity proceedings.

Implications of the case for designers and fashion houses

Following this decision of the EU General Court, it was confirmed that early disclosure of a design should be closely monitored and may lead to invalidation of the design. At a time when the public is constantly connected to various media and news sources, information about a new design can be tracked within seconds. Most importantly, in the fast-paced fashion and design industry, trial models are created long before they are launched or before the legal team is aware of the need for legal protection.

In this sense, what we can learn from this decision is to practice care when choosing the date of disclosure of the design and the next filing date of the community design application in order to comply with the 12-month grace period. Designers and fashion houses should also be diligent in any collaborations undertaken prior to the planned design disclosure and closely monitor social media photos that might reveal the new design.

The usual defence mechanisms appear to be insufficient to ensure timely disclosure of a design when in the possession of a celebrity, influencer, etc. The EU Court explained that invalidity proceedings are strictly objective. Therefore, contractual obligations and bad faith arguments are unlikely to be accepted as a valid counter argument. It appears that a simple non-disclosure agreement will not work either.

The best defence: keep your projects secret before you are ready to disclose them.

For more information on this ruling, contact your CMS client partner or these CMS experts: Alicja Zalewska-Orabona and Agata Stachowiak of the CMS IP Team.