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In 2014, the famous singer Robyn Rihanna Fenty joined the clothing brand Puma as a creative director and ambassador, initiating a successful collaboration. A year later, in September 2015, this collaboration resulted in the launch of the first “Fenty x Puma” collection, featuring the iconic “Creeper” model (Fenty Creeper). However, the disclosure of this new model before its registration application compromised its full protection, leading to a legal saga.
On March 6, 2024, the Court of Justice of the European Union (CJEU) delivered a significant ruling in case T-647/22, opposing Puma SE and the European Union Intellectual Property Office (EUIPO). The decision clarified the issues related to the protection criteria for Community designs, as well as the grounds for invalidity, directly impacting the intellectual property protection strategies of companies.
Background of the Case
In this case, Puma SE, the renowned clothing brand, contested an EUIPO decision invalidating a Community design representing a shoe, which Puma had filed on July 26, 2016.
On July 22, 2019, a third-party Dutch company, initiated invalidity proceedings against this Community design, citing its prior disclosure by Puma, particularly through social media publications.
In this case, the Dutch company argued that the contested design lacked individual character because it had been disclosed by Puma more than twelve months before the registration application, thus exceeding the grace period granted for the protection of the design.
To support its claim, the applicant presented various photographs from Rihanna’s Instagram account dated December 16 and 17, 2014, which announced her partnership with Puma, as well as online press articles displaying images of the shoe model shortly after her appointment as the brand’s creative director. However, Puma only filed the design registration application for its shoe model on July 26, 2016, which was seven months after the end of the stipulated grace period.
By a decision dated March 19, 2021, the invalidity division upheld the Dutch company’s request to declare the Community design’s protection invalid. Puma then appealed this decision on April 21, 2021.
Fundamental protection conditions for a design
The granting of protection for a design is subject to certain substantive conditions, such as its novelty, individual character, and conformity with public order and morality. As mentioned previously, the novelty of a design implies that no identical design has been disclosed beforehand. A design is considered disclosed if it has been made public through publication, exhibition, commercial use, or any other means before the filing date of the registration application.
However, the creator of a design benefits from a 12-month grace period preceding the registration application, during which any disclosure will not hinder the criteria of novelty and individual character.
In addition to the grace period exception: if the disclosure could not have been reasonably known to the specialized circles operating within the European Union, it will not be considered. This rule aims to protect the interests of creators who might, unintentionally or inadvertently, make their creations public before registration.
Analysis by the Court of Justice of the European Union
The Court confirmed that the design had been made public before Puma’s registration application. The judges concluded that the images were sufficiently clear and detailed to identify the distinctive features of the design, such as the linear patterns along the upper and the decorative elements outlining the shoe’s structure. They also determined that the quality of the images allowed these details to be clearly revealed from different angles.
Thus, the photographs provided by the Dutch company demonstrated that all the design’s features were identifiable to the naked eye or when enlarging the images, with sufficient quality to prove prior disclosure before the twelve-month grace period stipulated by European regulations
Furthermore, no evidence of image modification or alteration was identified, thereby reinforcing their reliability as evidence. The Court also emphasized that Rihanna’s notoriety and her partnership with Puma ensured wide accessibility of these disclosures, making them likely to be known to specialized circles, as evidenced by the large number of “likes” and shares of the singer’s posts.
Key Implications of the EU Court’s Decision on Community Design Disclosure
This case highlights the necessity for design holders to pay close attention to the disclosure of their creations before registration, imposing significant requirements on them:
- Strict management of disclosures: it is imperative for companies to carefully manage any public disclosure of their designs before filing a registration application. This ensures that the designs retain their novelty and individual character required for protection.
- Promote confidentiality agreements: establish confidentiality agreements with employees and external parties involved in the project to prevent any disclosure of the design.
- Date the creation of the design: ensure that the creation date of the design is documented to be able to claim priority.
- Strengthen evidence: in the event of a dispute, evidence of disclosure must be clear and persuasive, not only to support the validity of a design but also, potentially, to prove its invalidity.
Conclusion
This ruling by the Court of Justice of the European Union underscores the strict application of rules governing the disclosure of Community designs. The Court emphasizes that any careless disclosure prior to filing can jeopardize the protection of these designs by depriving them of the novelty and individual character necessary for their protection. This precise and crucial decision reinforces the legal protection of designs, highlighting the need for strict control over disclosures before filing, and reminding rights holders of their responsibility to ensure that all disclosures comply with the deadlines prescribed by European regulations.
Dreyfus Lawfirm offers specialized expertise in the field of Community designs, providing strategic advice and opinions to secure your creations and ensure their protection against third-party claims, thus guaranteeing an effective defence of your intellectual property rights.
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