The Malta Independent 26 May 2024, Sunday
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Law report: If the shoe fits, register the design in time

Ganado Advocates Wednesday, 15 May 2024, 10:13 Last update: about 11 days ago

Neil Zahra

In ‘Puma v European Union Intellectual Property Office’ (Case T-647/22), decided on 6 March 2024, the General Court of the European Union (the “GCEU” or the “Court”) delivered a decision concerning a declaration of invalidity of a Registered Community Design for sports shoes (the “Contested Design”). Puma (the “Applicant”) sought to annul the decision of the Third Board of Appeal of the European Union Intellectual Property Office (the “EUIPO”), which had granted the application for a declaration of invalidity filed by Handelsmaatschappij J. Van Hilst BV (the “Intervenor”).

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Background

A Registered Community Design safeguards the aesthetic elements of a product throughout the European Union, so long as such design meets the requirements of novelty and individual character. As per Article 7(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (the “Regulation”), a design shall not be considered as being novel and having individual character, if it has been made available to the public before the date of filing of the application for registration of the design for which protection is claimed. In this context, a grace period exists whereby applicants must register a Community Design within 12 months of its initial disclosure. This grace period therefore allows applicants to disclose their design without destroying its novelty and individual character.

Relying on Article 25(1)(b), in conjunction with Article 4(1), of the Regulation, the Intervenor claimed that the Contested Design lacked novelty and individual character within the meaning of the Regulation, since it had been disclosed by the Applicant prior to the grace period. The Applicant had filed an application for the registration of the Contested Design on 26 July 2016, yet the design had been disclosed on 16 December 2014 through a series of Instagram posts uploaded by Robyn Rihanna Fenty (“Rihanna”) announcing her appointment as the Applicant’s new creative director. In view of the prior disclosure of the design by Rihanna, the EUIPO granted the application for a declaration of invalidity.

Analysis of the Court

The Applicant sought the annulment of the EUIPO’s decision through two pleas (1) that the application for a declaration of invalidity was inadmissible on the grounds of bad faith and (2) a breach of Article 7(1) of the Regulation.

The bad faith alleged by the Applicant stemmed from the fact that the Intervenor filed the application for a declaration of invalidity after having agreed to an out of court settlement with the Applicant in the context of infringement proceedings brought by the Applicant against the Intervenor before the Dutch Courts. The Court dismissed the first plea on the basis that the current case revolved around “ruling on the individual character of the contested design, the assessment of which is objective.” While defences related to bad faith, infringement of a contractual obligation or abusive character could be relied on in ad hoc civil law proceedings, they could not be raised as a defence in invalidity proceedings.

The Court examined the second plea in greater detail. The Applicant argued that the photos uploaded on social media did not enable recognition of, and comparison with, the Contested Design. Moreover, the Applicant argued that the photos “are all of insufficient quality, since they are, in particular too dark and blurred”, that the focus of the photos is Rihanna and not the shoes, that not all views of the design are visible, and that at the time Instagram did not have a zoom function. The Court highlighted that for the purposes of Article 7(1) of the Regulation, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.

In accordance with case law, the Court reiterated that “a design is deemed to have been made available [to the public] once the party asserting it has proved the events constituting the disclosure.” To rebut this presumption, the party challenging the disclosure must prove that such design could not have reasonably become known in the normal course of business to the circles specialised in the sector concerned. However, the Regulation does not specify a compulsory form of evidence of disclosure to be provided in support of the application for a declaration of invalidity. Documents proving the existence of an earlier design together with an indication of facts, evidence and arguments in support are sufficient. The EUIPO had found the evidence produced by the Intervenor to be sufficient to demonstrate disclosure, with the Applicant having failed to prove otherwise. Consequently, the EUIPO’s determination that the images were sufficiently clear to demonstrate that the Contested Design had been disclosed was upheld by the Court.

The Court proceeded to reject the assertions put forward by the Applicant and held that the image quality was sufficient for the Contested Design to be recognised, making it possible to identify all the features of the design from various angles. Similarly, the Applicant’s claim that nobody took an interest in Rihanna’s shoes in December 2014 was rejected by the Court, since both her fans and circles specialised in the fashion sector developed a particular interest in the shoes that she wore on the day she announced her becoming the Applicant’s creative director. Since Rihanna’s Instagram posts constituting disclosure predated the application for the registration of the design by 19 months, the Applicant could not rely on the 12-month grace period.

Conclusion

In light of the above, the Court dismissed the appeal and upheld the EUIPO’s determination that the evidence furnished by the Intervenor satisfied the conditions required to demonstrate disclosure of the earlier design before the 12-month grace period, thereby allowing the Contested Design to be declared invalid due to a lack of novelty and individual character. This judgment highlights the importance of registering a design within the stipulated timeframes as found in the Regulation and reaffirms the principle that the burden of proof lies with the party seeking to invalidate a Registered Community Design.

Disclaimer: Ganado Advocates is responsible for contributing this law report but was not in any way involved as legal advisor for the parties in the judgment being covered in this law report.

Neil Zahra is a Trainee Advocate at Ganado Advocates.

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