Puma's shoe design invalid proven by Rihanna Instagram-post

Because Puma's shoe model, which has been under European design protection as a Community design since 2016, has been seen before in the same or very similar form in a Rihanna instagram-post, it has been declared invalid. Rightly so, confirmed the European Court yesterday, and dismissed Puma's action against the EUIPO decision of 11 August 2022.

Shoe design protection lost - proof by Rihanna Instagram-post

Puma had recruited Rihanna as creative director, and to announce the collaboration in 2014, Rihanna wore a very similar shoe model, which Puma then had registered as a community design in the summer of 2016, around 1.5 years later. These are white shoes with a thick black sole. Three posts with pictures of Rihanna at this announcement could be seen on the Instagram account "badgalriri" in December 2014.

Design protection in Europe and grace period

However, design protection can only be granted for designs that have novelty and individual character. In Europe, designs can have been shown to the public for a maximum of 12 months before the application for protection as a Community design, this is the so-called grace period.
However, if a design has already been shown to the public for a longer period, it is considered to be well-known and is already part of the existing pool of design creations. It can then no longer be protected as a European Community design or as a national design.

However, the grace period was not the issue before the European Court(CFI). Rather, the relevant question before the court was whether three Instagram postings on a the Instagram account "badgalriri" counted as a publication of this Puma shoe model. Puma argued that the attention had been focussed on Rihanna and not on the shoes she was wearing in the picture. Puma also questioned whether one can draw conclusions from a Rihanna photo in these Instagram-posts about the perception of a shoe model by specialist circles.

However, the European Court didn’t follow this reasoning. Because Rihanna was already a star in 2014, fans would have taken notice of everything, including her shoes, the court said. And since the three Instagram posts received over 300,000 likes, it can also be assumed that the Instagram account "badgalriri" was perceived by the public.
Whether this public perception of the photos of Rihanna with the shoe model at issue also reached specialist circles was not a question that the CFI pursued. The court explained that the plaintiff Puma has not put forward any arguments capable of supporting the exception provided for in the first sentence of Article 7(1) of Regulation No 6/2002. However, it was for the applicant to rely on that exception.

The CFI confirmed the decision of the EUIPO of 11 August 2022 (Case R 726/2021-3) ('the contested decision'), by which the contested Community design of Puma had been declared invalid at the request of the company Handelsmaatschappij J. Van Hilst (Netherlands) (CFI T 647/22). Puma's action was dismissed in its entirety.

Design revealed on the Internet is public

This decision is not surprising. The common EU decision-making practice regarding the disclosure of designs on the internet and the recognition of evidence of disclosure has been in force since 1 July 2020. The sources of a possible disclosure of a design on the internet are manifold: social media, email, product placement, websites, apps, file sharing and also e-commerce and online shops.
The EU Directive on the protection of designs does not contain any restriction regarding the place of disclosure in the relevant section (Article 6(1) of Directive 98/71/EC), so any publication on the Internet is to be regarded as a potential worldwide disclosure of designs. If the evidence is verifiably relevant at the relevant time (as in the present case), printouts and screenshots with reference to their source and URL are admissible as evidence.

Case law in Germany also confirms disclosure through publication on the internet. For example, the Federal Court of Justice (BGH) already declared in 2018 that models offered for sale to the general public via internet are part of existing pool of design creations (BGH, Ballerinaschuh - I ZR 187/16, 11 January 2018).

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