By Jorge Vicente Martínez, Intellectual Property Lawyer | Litigation Department

Introduction | Background

In 2019, the company Handelsmaatschappij J. Van Hilst BV filed a request for invalidation with the EUIPO regarding the following Community design owned by Puma, which it registered in July 2016:

A case involving its long defence then followed before the EUIPO and the European Courts, until Puma’s last attempt to save its Community design for shoes was extinguished on 24 September 2024 with the inadmissibility of its appeal before the Court of Justice of the European Union. Prior to that, on 6 March 2024 the General Court of the European Union had confirmed the EUIPO’s decision to invalidate this design due to the lack of novelty.

Analysis

The invalidity of the design was due to lack of novelty, since they had publicly disclosed the design of the shoes beyond the one-year grace period, thus neglecting an essential requirement for its protection.

The case is unique because of the circumstances in which the design was disclosed: various images of the singer Rihanna wearing the shoes were posted on Instagram, announcing an agreement with Puma in which the artist had been named the new creative director.

The photographs dated back to December 2014, so when the registration of the design was applied for in July 2016, it was a design already known to the interested parties. Moreover, it exceeded the one-year grace period allowed by Regulation No. 6/2002 on Community designs.

The applicant for a declaration of invalidity claimed that the shoes worn by Rihanna in those 2014 photographs were not substantially different from the design registered in 2016, meaning that the latter lacked novelty, an essential requirement to benefit from Community design protection.

Puma, in an attempt to save the registration of its design, claimed that these photographs were insufficient. Firstly, the photos did not give users the same overall impression, since the photos were of poor quality and they did not focus on the shoes, but on Rihanna. In short, there was not enough information for the shoes to be recognised with the design subsequently applied for.

It also claimed that since the posts appeared on Instagram, which consumers typically access from a mobile phone, the screen is not large enough to see details, and moreover, in 2014 the app did not have the option to zoom in.

The EUIPO, nevertheless, considered that the photographs were of sufficient quality and that the design was visible at a glance, where the vast majority of the shoes’ design features can be seen. This opinion was also supported by the CJEU. Furthermore, regarding the size of the photographs, the truth is that they were not so blurry or so small that their details could not be observed. Although the zoom-in feature did not exist on Instagram, any user could take a screenshot and increase the size.

In addition, regarding the disclosure among interested circles, there is no doubt that Rihanna was a world-famous pop star in 2014, meaning that not only her fans, but also circles specialised in the fashion sector were going to have a particular interest in the shoes she was wearing. The context was precisely the announcement of Rihanna’s deal as creative director of Puma!

Therefore, a significant number of interested people who had seen the 2014 photographs could recognise the design of these shoes.

Conclusions

In view of all the foregoing considerations, the CJEU fully supports the EUIPO, which had appropriately considered that the evidence provided during the procedure, and more specifically the images posted on the Instagram account, demonstrated the effective disclosure of the earlier design in December 2014 and as such, before the start of the one-year grace period.

All of this reminds us, once again, of the importance of paying the utmost attention to the fact that when a product with a novel design is shown to the public for the first time, even if it is not a specific presentation of said product, it must be accompanied with careful monitoring of the dates so as not to lose protection of the registration.