Design Registration: Be Careful Of Accidental Publication On Social Media – Copyright

A recent finding of invalidity against sportswear brand
Puma provides a valuable reminder of the need to obtain design
registration within the designated 12-month grace period
– and to be careful of accidental publication online, says
Noa Rubingh.

A design registration gives its owner an exclusive right to the
design of the product, meaning they are the only ones who can
produce, supply, sell or lease the design. In the EU, applicants
must fulfil two criteria to acquire a registered Community design
right (RCD): it must be i) new and ii) possess individual
character. But, what does ‘new’ actually mean? And can
evidence coming from social media work against you?

On 11 August 2022, the EU IP Office (EUIPO) confirmed a finding
of invalidity against a design registration filed by sportswear
brand Puma (previously ruled on 
19 March 2021). The reason? A viral Instagram post by singer
Rihanna in December 2014 in which she wore the same shoe, as the
RCD filed in July 2016. This case involved shoes with a
‘creeper’ sole, which can be seen in the drawing,
right.

Design registration in the EU: Novelty and individual
character 

Designers have wide (creative) freedom when it comes to a shoe
design; the only requirement is that the shoe must fit around a
foot. However, the larger the degree of freedom enjoyed by
designers when developing a design, the higher the requirement is
for novelty and individual character. A ‘new’ model needs
to be significantly different from other models if it produces a
different overall impression from other designs which had been made
available to the public before its registration. Made available
means published, exhibited, marketed or otherwise disclosed. An
exception to this is if, in the normal course of events, the facts
could not have been known to those working in the relevant industry
in the EU.

When meeting this criterion, time is of the essence, as Puma has
discovered to its cost. It filed its application for the
illustrated shoe in July 2016, but Rihanna had worn the same shoes
in Germany and New York in 2014, as captured by photographers at
the time. She also posted photos showing the shoes on her Instagram
page (see examples below, left), with these images receiving more
than 300,000 likes. In addition, several online media outlets
picked up Rihanna’s posts and reproduced the images because
they coincided with the announcement that she would begin working
as a ‘creative director’ at Puma. 

In principle, this scenario would not have been a problem if
subsequent registration of the design had taken place within the
designated 12-month ‘grace period’. This grace period
provides designers with a window to sell or exhibit designs,
without the criteria of novelty blocking a potential design
registration. However, the time between this Instagram post by
Rihanna and Puma’s design application exceeded 12 months,
meaning the requirement of novelty could no longer be
met. 

The fact that the shoes were only sold by Puma from September
2015 does not negate the fact that the shoes had already been made
public. In other words, online publication is enough to negate the
novelty requirement of a valid design registration. 

Design registration and social media: Lessons to be
learned

By publishing the images on her Instagram feed, Rihanna had
effectively made the design available to the public before its
registration. Due to the number of likes and comments on Instagram
and the large external media attention surrounding the
collaboration, the relevant public was even more likely to have
viewed the photos.

Even though the photos do not show all sides of the shoe, such
as the heel or sole, the additional features in the design
application were not considered sufficient to create a different
impression of the shoe from the Instagram images (which would be
necessary for the model to still be considered new). From the front
and side views of the shoe in the images, the main and relevant
features of that shoe model can be identified: namely, a shoe with
several lines and holes along the top, a closure with seven holes
and thick laces, and a flat and thick, vertically striped sole. Nor
does the quality of the photos detract from the
revelation. 

Puma’s attempt to argue that the shoes are only a small part
of the photos was not successful either. It was precisely the
collaboration between Rihanna and Puma that made people look
specifically at the shoes.

Design registration in the EU: Tips for designers

Puma could have avoided this invalidity ruling by banning the
Instagram post in advance. However, its best option would have been
to file the design within the 12-month grace period; after all, the
design was (as good as) ready anyway. 

Celebrity and 
influencer marketing offers a valuable tool for brand
owners and designers looking to profile their products and build
customers online. However, as this recent ruling illustrates,
it’s vital to ensure that any intellectual property is
protected before disclosure or within the designated grace
period. 

Make sure you file your design rights in a timely
manner. If in doubt, consult with your attorney on the best
strategy to safeguard your rights.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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