In a recent ruling, the EU General Court upheld the EUIPO’s decision regarding the invalidation of the Puma Creeper model (pictured above/below). Rihanna had made the model public via Instagram much earlier.
There are two requirements for a design registration; the design must be novel and have individual character. The novelty requirement means that the design has not been made available to the public before filing the design application. Disclosure of the design during the 12-month period prior to the application does not harm the novelty of the design. However, Rihanna had already shared several photos on Instagram in 2014, over a year before Puma’s design application, wearing the same shoes.
The EUIPO declared the design registration invalid, since the Instagram posts harmed the novelty requirement. Puma filed an appeal at the EU General Court.
In their appeal, Puma argued that Rihanna’s Instagram posts did not qualify as a disclosure. No one would have been interested in the shoes worn by the pop star in the photos and thus no one would have noticed the design. Not the shoes, but rather Rihanna herself would be the focus of the photo.
The General Court however confirmed the earlier decision of the EUIPO. Rihanna was already a world-famous pop star at the time, and she had signed the contract for Creative Director of Puma on the day of the Instagram post. For that reason the pop star’s followers, including fans and people from the fashion world, were certainly interested in the shoes she was wearing that day. Therefore, a not insignificant amount of these followers would have looked closely at the shoes the singer was wearing in the photo.
The photos Rihanna shared are sufficiently clear and make it possible to recognize all features of the model. Therefore, the Instagram photos serve as a disclosure of the design, meaning the design was no longer novel at the time of the application.
A clear ruling with a clear lesson: be on time with your design application. In addition, it is important to ensure that a design is not accidentally disclosed. Especially if you just signed a contract with a world-famous pop star.
© Instagram/badgalriri (2014)
