A recent ruling in an intriguing case has helped clarify when the publication of a design precedes an application for design registration. The case has gathered attention in recent years because it involves none other than the internationally renowned singer Rihanna and the footwear manufacturer PUMA®.
The case began in December 2014 when Rihanna was appointed as PUMA®’s creative director. In connection with this role, she shared a post on her Instagram profile, posing with a pair of new PUMA® sneakers marketed as ‘PUMA® Creeper.’ It is precisely this pair of shoes that forms the crux of the case, as PUMA® only applied for design protection of the shoe model in July 2016.
Without getting into technical details, there is a rule in EU design legislation that allows for the display of a design to the public before applying for registration. However, there is a requirement that within 12 months of publication, one must seek registration for the same design. Additionally, the publication must be known to the public within the EU.
In practice, there are cases demonstrating that if a design is published, for example, in Hong Kong through a local newspaper, it would not typically be considered a publication within the EU (see the ruling in SackIt ApS’s EU design case no. 002426460-0001). Conversely, if a design is unveiled at an international shoe fair in the USA, it is also deemed a publication within the EU (see the case of Crocs in T-651/16).
The matter of PUMA® and Rihanna’s publication was initially addressed by the EU authority, EUIPO. They concluded that due to Rihanna’s international fame and how many Instagram followers she had, the publication, even though it occurred in the USA where Rihanna resides, would be known to the public within the EU.
PUMA® attempted to have the decision overturned at the EU Court. Among other arguments, they claimed that the entire design was not visible in the images. The EU Court has now confirmed the decision from the EUIPO and maintains that the images shared by Rihanna on her social media and elsewhere were clear enough for all design elements to be recognizable. Additionally, due to Rihanna’s prominent status, they would have been seen by many people.
This ruling is important as it underscores the necessity for caution when a company publicly presents its new designs. From that moment, a countdown of 12 months begins.
The case also serves as a reminder that one cannot always assume that a registered design in the EU is valid. The design may have been disclosed more than 12 months before the application was submitted, a factor not investigated by the authorities.
What can we learn from this case?
Design owners face a delicate balance between leveraging the benefits of promoting their designs through well-known individuals, including influencers, and the need to protect their intellectual property rights by registering their designs. In this context, exercising meticulous control over social media disclosures is crucial, even if it may be uncomfortable for the celebrity involved.
As previously mentioned, if a design is publicly disclosed or widely shared on social media before being registered, the clock starts ticking on the 12 month deadline. Therefore, early protection is essential, even if it means that influencers or ambassadors don’t have quite as much freedom to provide a sneak peek of the design.
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