NEWS

How posts on Instagram did disclose the design of Puma’s shoes prior to the 12-month “grace period”

Judgment of the General Court of 06.03.2024 - T 647/22 – “PUMA”

 Contents

Background to the dispute

In 2019 Handelsmaatschappij J. Van Hilst BV (HJVH) filed with the EUIPO an application for a declaration of invalidity of the Community Design (registered in 2016 in Class 02-04) with the following seven views:

Puma Schuhe Schonfrist designrecht

According to HJVH the design lacked individual character because it had been disclosed prior to the 12-month “grace period”. HJHV referred to 3 posts with images (posted on the Instagram account “badgalriri”) from 2014 reporting that Rihanna had been appointed as the new creative director of Puma, showing her with these white shoes. EUIPO’s invalidity division declared Puma’s Community Design invalid. Puma appealed this decision to the Board of Appeal (BOA) in 2021, arguing that HJVH’s application for a declaration of invalidity of the design was inadmissible due to a breach of contract and that Puma had not disclosed the design prior to the 12-month “grace period” (calculated from the date of filing or priority date). BOA, however, has upheld the decision and Puma went to the General Court.

HJHVs application was admissible

The court confirmed that HJHV’s application for a declaration of nullity was admissible. Any allegation of a breach of contract, abusive character, etc., is irrelevant during the objective assessment of invalidity.

The General Court confirmed that the design had been disclosed

According to the General Court, the posts showing Rihanna with white these shoes made it possible to identify all the features of the prior design from various angles. In particular, the images were of sufficient quality. In December 2014, Rihanna was a world-famous pop star, her fans and fashion industry professionals were interested in the shoes Rihanna was wearing the day she became creative director at Puma.

Puma had to establish that the design had not become known within the EU in the normal course of business to the circles specialised in the sector, Article 7(1) of Regulation No 6/2002. It failed to do so. The General Court therefore dismissed the action. The Court’s judgement is not yet final.

To the point

Design applicants must strictly adhere to the 12-month novelty grace period from the first day of publication. This case shows how important it is to monitor also posts on social media.

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Karin Simon
Lawyer
Certified IP Lawyer

Susanne Graeser
Lawyer
Certified IP Lawyer

Uhlandstr. 2
80336 Munich
Germany

Phone +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9

Karin Simon
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Susanne Graeser
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Uhlandstr. 2
D-80336 München

Tel. +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9