Puma’s design dilemmas

Puma have recently been involved in a number of cases involving their registered designs for shoes. These decisions provide insight into how the EUIPO assess novelty and individual character.

T-647/22 – Shut Up and Drive Design

This dispute involved Puma’s Registered Community Design no. 003320555-0002 to a shoe. On 22 July 2019, an application for invalidation of the design was filed by Handelsmaatschappij J Van Hilst BV.

Background

Puma’s registered design includes the following views:

RCD no. 003320555-0002

Invalidation was sought on the grounds that Puma had disclosed the design to the public more than 12-months before the date on which the protection was sought and that therefore the design lacked individual character. In particular, at the end of 2014 the popstar Rihanna, who has been working with Puma at that time as creative director, had posted photographs on her Instagram social media account in which she wore shoes that allegedly incorporated the design in question.

One of Rihanna’s posts on Instagram

In first instance proceedings, the European Union Intellectual Property Office (EUIPO) decided that the design was invalid, and this decision was upheld by the Board of Appeal. Puma appealed to the EU General Court.

Legal arguments and the General Court’s verdict

An interesting aspect of the appeal was whether the Instagram disclosure of the design by Rhianna met the requirements for public disclosure under the conditions of the Community Design Regulation (Council Regulation No. 6/2002). Article 7 of the Regulation states that, for the purposes of assessing novelty and individual character, a prior design “shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed… except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”. Additionally, Puma argued that Rihanna’s social media photographs did not show the design clearly and that Rhianna, rather than the shoes, were the focus of the photographs.

The three posts on Rhianna’s Instagram account ‘badgalriri’, dated 16 December 2014 and each receiving over 300 000 likes, reported that Rihanna (Robyn Rihanna Fenty) had been appointed as Puma’s new creative director. The posts contained photographs showing Rihanna wearing a pair of white shoes with a thick black sole.

Puma argued that nobody was interested in Rihanna’s shoes in December 2014 and that therefore nobody would have perceived the prior design. The General Court was not persuaded by this argument, noting that in December 2014 Rihanna was a world-famous popstar, and that both her fans and the circles specialised in the fashion sector had a particular interest in the shoes that she wore on the day on which the contract under which the star became the applicant’s creative director was signed. It was therefore reasonable to assume that a “not insignificant proportion” of the people who were interested in music or in Rihanna herself, including her clothing, in December 2014 viewed the photos in question closely in order to discern from those photos the appearance of the shoes that the star wore, thus recognising the features of the prior design. Furthermore, there were several articles reporting on Rihanna’s appointment as the applicant’s new creative director, as announced on 16 December 2014, including: ‘www.forbes.com’, ‘www.dazeddigital.com’, ‘www.trendalert.nl’, ‘www.nssmag.com’ and ‘mail.online’. Those articles, all published on 16 or 17 December 2014, reproduced, inter alia, images from Rihanna’s Instagram account of 16 December 2014, including images with Rihanna wearing the shoes of the design in question.

The Court also held that the relevant features of the registered design could in fact be discerned from the earlier photographs. In particular, the front and side views of the shoes appearing in the photographs show a sports shoe with a number of lines and holes along the upper portion of the shoe, a closure of seven holes with thick laces, and a flat and thick vertically striped sole, as well as all the other features of the prior design.

In view of the foregoing, the General Court decided that Puma’s registered design produced the same overall impression as the shoes shown in the earlier photographs and that therefore the design lacked individual character and was thus invalid. This case echoes the earlier decision of T651/16 (reported here), in which Croc’s Registered Community Design (also to footwear) was held to be invalid by their own earlier disclosures.

The Puma decision highlights the pitfalls of social media for rights holders, and the importance of filing for registered design protection at an early stage. In the present case, Rhianna let the (big)cat out of the bag by posting on Instagram before the registered design had been filed (and earlier than the 12-month grace period that precedes the filing of the design), and the courts recognised that such social media posts can invalidate a later filed registered design.

T-757/22, T-758/22 – Broken Hearts over Broken Lines

In these two cases the shoe was on the other foot, with Puma seeking to invalidate two registered Community Designs, owned by Fujian Daocheng Electronic Commerce Co. Ltd (no. 008367742-0013) and by Road Star Group (no. 004160273-0015). Puma argued that these registered designs lacked individual character over five of Puma’s earlier designs (D1 to D5 below) and therefore were invalid.

Following a rejection of the invalidity actions by the Invalidity Division of the EUIPO, upheld by the EUIPO’s Board of Appeal, Puma have emerged unsuccessful on appeal to the EU General Court. These decisions provide insight into how the EUIPO interprets features shown in broken lines and how, although such features are disclaimed from the extent of protection of the designs, the features shown in broken lines do still form part of the designs for the purposes of their disclosure as prior art.

The disputed registered designs are as follows:

RCD no. 004160273-0015                            RCD no. 008367742-0013

Puma argued that the contested designs produced the same overall impression on an informed user as their own earlier designs due to the alleged similarity of the soles, and that therefore the contested designs lacked individual character. The earlier Puma designs are as follows:

(RCD no. 1286116-0005 (‘D1’))

(RCD no. 1286116-0006 (‘D2’))

(RCD no. 1286116-0003 (‘D3’))

(RCD no. 1286116-0002 (‘D4’))

(RCD no. 1286116-0001 (‘D5’))

The first instance invalidity application was rejected, and this decision was upheld by the EUIPO Board of Appeal upon appeal. The Board held that when reviewing the previous designs, a consideration of the elements shown in broken lines should be taken into account. Comparing the elements of the upper parts of the shoes in the contested designs and the previous designs, the Board maintained that the overall impression of the contested designs were sufficiently different from the earlier designs invoked by Puma.

Broken lines 

Broken lines are commonly used in design applications to identify features of the design for which protection is not sought, otherwise known as a visual disclaimer [1]. Broken lines can be helpful in providing context by showing what the remainder of a design might look like without narrowing the scope of protection to features that are not core to the design in question. In contrast, anything shown in solid lines constitutes part of the claimed features of the design (unless disclaimed by other means, for example, using a written disclaimer in the UK).

In Puma’s earlier registered designs, the entire upper part of the shoe is shown in broken lines and protection is only intended for the sole of the shoe.

Puma argued before the General Court that their earlier designs D1 to D5 are registered with the indication of “soles for footwear” and that the representation of the upper part of the shoe, which is shown in broken lines, is only present to indicate how the sole would be attached to the remainder of the shoe. Consequently, Puma argued that the comparison of the designs can only be limited to the sole of the shoes. Therefore, even if the upper part of the shoe of the contested designs and the earlier disclosures may look different, these differences should be discounted because the features are shown in broken lines in Puma’s earlier designs. Therefore, these disclaimed features of the earlier design do not contribute to a different overall impression to the contested designs, and therefore the contested designs lack individual character.

The General Court held that pursuant to Article 6 of Community Design Regulation, the comparison of the overall impression produced by the designs at issue must be made in light of the overall appearance of the designs, including all protected elements. Therefore, when comparing the contested designs to the previous Puma designs for invalidity, the General Court stated that both the sole and the upper of the shoe must be taken into account. This is notably different from infringement proceedings, whereby use of a previously registered design, even if used in combination with other elements, would still amount to infringement (as per Article 25(1)(e) of the Community Design Regulation).

With regards to the earlier Puma designs and the use of broken lines, the General Court stated that “in order to determine whether the elements of an earlier design may be taken into account, it is not necessary to focus on the subject of the protection of that design, but solely on the question whether those elements have been disclosed”. It was therefore held that, although the upper part of the shoe in each of earlier designs D1 to D5 was not the subject of protection of those designs (being disclaimed by broken lines), it was nonetheless shown in a sufficiently clear and precise manner which could be perceived without any interpretive effort. Hence, the General Court found that the disclaimed features of the earlier designs D1 to D5 formed part of the prior art and could be taken into account to assess the individual character of the contested design. Therefore, the Board of Appeal’s finding that the contested designs produced a different overall impression was upheld, and thus the contested designs were valid.

Conclusion

Broken lines remain a useful tool for disclaiming features of designs so as not to unduly limit the scope of design protection. Nevertheless, rights holders should be wary that disclaimed features can still form part of the prior art and therefore may be prejudicial to the novelty or individual character of a later-filed design application. Care should therefore be taken when using broken lines to disclaim features when potential future design protection for those features is intended.

[1] Section 5.4 of the EUIPO’s guidelines on the examination of applications for registered community designs.