Instagram posts prevent design protection

Instagram posts of Rihanna wearing Puma trainers prevent protection of a corresponding Community design.

Facts

In 2014, Rihanna was appointed as the creative director of Puma. In December 2014, pictures of her signing the contract while wearing white Puma trainers with thick black soles were published, in particular on Rihanna’s Instagram profile “badgalriri”.

In July 2016, about a year and a half after the pictures were published, Puma filed a Community design application for almost identical shoes to those shown in the published pictures. The European Union Intellectual Property Office (EUIPO) initially registered the Community design. The requirements for protection, “novelty” and “individual character”, are generally not examined by the EUIPO. After registration, a Dutch company filed an application for a declaration of invalidity of the registered Community design.

The EUIPO granted the application for a declaration of invalidity. Puma appealed against this decision.

Judgment

The General Court of the European Union (EuG) upholds the decision of the EUIPO. According to the court, the published pictures constitute an act of disclosure within the meaning of Article 7(1) of Regulation No 6/2002.

The shoes shown in the pictures show a prior design with the same features as the registered design. This had been disclosed more than twelve months before the application for registration was filed, so that the so-called grace period of twelve months did not apply.

The circles specialized in the sector concerned were also aware of the disclosure through the pictures. In the pictures, all the essential features of the prior design were visible to the naked eye or by enlarging.

Puma still argued that nobody was interested in Rihanna’s shoes in December 2014.

But the court was not convinced: In 2014, Rihanna was already a world-famous pop star. Her fans and the circles specialized in the fashion sector, which is the relevant sector here, would therefore have had a particular interest in the shoes Rihanna wore when she signed the contract.

Note

Where possible, Community designs should be kept under seal before registration – this also applies to German designs.

However, if they have to be published in advance for examination purposes, the following applies: The date of disclosure must be documented. In addition, the expiry of the grace period should be noted so that a subsequent application can be filed within the grace period.

The judgment of the EuG is available here.