Registered Designs & Disclosure: How much can you reveal?

Introduction

On 16 December 2014, Rihanna posted a picture on Instagram which displayed a white Puma trainer with thick black soles – little did she know this would result in a decision on whether Puma’s registered community design (“RCD”) on this trainer was invalid.

As a result of this Instagram post, the General Court provided a judgment which emphasises the importance of due diligence which designers must carry out when applying for a design right, namely – the design must be novel and have sufficient individual character.

Facts

In 2016, Puma applied to register the design of a shoe range comprising white trainers with a thick black sole. In 2019, a Dutch footwear company filed an application for a declaration of invalidity of the Puma RCD.

This declaration of invalidity was filed on the basis that the RCD lacked individual character, based on Rihanna’s Instagram post, as it had been disclosed by Rihanna more than 12 months prior to the RCD application, i.e. Rihanna posted the designs in 2014 which exceeds the 12-month grace period provided for Puma’s RCD.

General Court Decision

Importantly, the General Court had to essentially decide whether Rihanna’s image amounted to disclosure which would invalidate the design. It looked at this in two stages:

On stage 1, the General Court held that the photos published by Rihanna, due to the similarity between the details and their visual quality in relation to the RCD, amounted to disclosure as it made the designs of the RCD discernible.

On stage 2, Puma had failed to establish that the Instagram posts would not have become known to circles specialised in the fashion sector – given that Rihanna is a ‘world-famous pop star’.

Briffa comment

The case is interesting from a legal perspective, as it makes clear that brands collaborating with celebrities must take high levels of care – especially in the social media age, to ensure that there are no disclosures which can lead to the invalidity of a registered design.

Most importantly, it demonstrates that when considering relying on registered designs, it is best practice to file for protection before any disclosures have been made.

The litigation landscape for design rights is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the design right litigation space for over 25 years.