Brands Beware! Head of Intellectual Property, Gerard Kelly explains why brands should be careful not to let their influencers or ambassadors post their design on social media before the ‘grace period’ preceding their design’s priority date and, as a result, risk finding themselves the subject of invalidity proceedings for lack of novelty.
Puma found themselves defending European Union Intellectual Property Office (EUIPO) Invalidity Proceedings in 2019 concerning the novelty of a shoe design that had been previously promoted by a well-known celebrity on social media.
The applicant for the declaration of invalidity argued that one of Puma’s registered community designs (RCD) lacked novelty and individual character as it had been disclosed by Puma prior to the 12 months ‘grace period’ preceding its priority date.
What is a priority date?
The priority date is the first date of filing of a patent/design application. It is essential for determining whether any subsequent application for the same invention can still be assessed as novel. It also makes it possible to determine whether the subject-matter of a patent application is prior art on a particular date.
Not under Rihanna’s umbrella
This disclosure was due to Rihanna, the well-known celebrity and singer, posting photos of the shoes in question on her Instagram account in 2014. Additionally, news sources had captured Rihanna wearing the shoes in New York city in 2015.
In March 2021, the Invalidity Division declared the RCD to be invalid for lack of individual character. They held that even if the prior design was not sold before the grace period, the fact that the RCD had been disclosed on the internet was enough to rid it of novelty and/or individual character. In addition, Puma failed to prove that the disclosure had not become known in the normal course of business to the circles specialised in the sector concerned, i.e., the fashion/shoe industry, operating in the European Union.
In April 2021, Puma filed their appeal. After a protracted period, the Third Board of Appeal handed down its decision in August 2022. The parties made the following arguments:
Puma’s arguments for appeal
Puma argued the photos on Instagram were of insufficient quality to allow a comparison with the RCD. As a result, Puma contended that it was not possible to discern the features and structure of the sole of the shoe with any clarity. Puma claimed there was uncertainty as to the legitimacy of the evidence provided, that the internet printouts showed false dates, and that one of the website photos was a fake post with no comments. Puma pointed out that the applicant only exhibited seven worldwide publications in their application, and they therefore claimed it was not possible to conclude that the public had become aware of the prior design. Puma argued that none of the submitted evidence sufficiently proved that the prior design had become known in the normal course of business to the group specialized in the sector concerned in the EU. They were of the view that gossip news sources and Rihanna’s personal Instagram account had nothing to do with the shoe industry. Puma also claimed the application was inadmissible due to bad faith, breach of contractual obligations, and abusive character of the application. They claimed the applicant’s behaviour was unethical and was an attempt to commit blackmail for money or to get a competitive advantage.
The applicant’s reply to the appeal
The applicant counter-argued that the photos exhibited were of sufficient quality to discern the features of the RCD. The content could not be faked as they could be viewed on a mobile phone or a PC, and they all showed the date they were posted on Instagram.
Rihanna was drawing attention to her collaboration with Puma through these posts, and as a result, she drew attention to the shoes. Rihanna wearing the shoes in public at events in Germany and New York was sufficient for the RCD to be disclosed to those concerned with the industry/fashion sector. The applicant argued that the fashion press attends all of Rihanna’s public performances and would have attended the press events where the shoes were worn, as this was where she was announced to be the creative director for Puma. The applicant claimed the bad faith argument put forward by Puma was irrelevant as it is not recognised as a ground for invalidity under the design regulation. They also claimed that there were no contractual obligations that disallowed the application.
Although the Third Board of Appeal rejected the applicant’s reply on the grounds that it was filed too late, they did note that even if the reply was taken into account, the outcome of the proceedings would have remained the same. The Board considered Puma’s appeal to be unfounded.
The Board’s Decision
The Board found that the three Instagram posts uploaded by Rihanna captured the prior design and predated the 12-month grace period preceding the priority date of the RCD. Rihanna’s Instagram posts constituted events of disclosure. The posts were made available to the public and this was confirmed by the fact that the posts received numerous comments and more than 300,000 likes. The news articles were also considered to be events of disclosure. The extracts detailed the internet source, the prior design, and its date of disclosure.
Regarding the evidence provided by the applicant, the Board found this to be ‘solid and objective’ proof of ‘effective and sufficient disclosure’ of the prior design. The Board considered the publications to be of sufficient quality to identify the relevant features of the prior design and the prior design was discernible from various angles. The argument that the content and dates could have been manipulated was rejected. The credibility of the evidence could only be undermined by concrete proof of manipulation.
The Board found that there was no explanation by Puma as to how or why the dates or content would have been retrospectively changed. The Board pointed out that it is for the party challenging the application to prove that the design had not become known in the normal course of business in the circles specialized in the sector concerned operating within the EU. Puma failed to furnish any evidence in support of this.
Puma’s argument that there had been bad faith and breach of contractual obligations was rejected by the Board as these cannot be raised as defences where they do not relate to any possible error in the Invalidity Division’s initial decision.
The Board confirmed that the prior design destroyed the individual character of the RCD and therefore, the appeal was dismissed.
Conclusion
Brand owners need to be aware of the risk social media poses to their design rights. If an unregistered design is shared with the public, including on social media, it can rid the design of the novelty and individual character it requires to avail of registration. This will leave the design in the public domain to be used by all.
So, let this case stand as a warning to all brand owners: early protection is key and be careful not to let your brand influencers or ambassadors disclose your designs before they are adequately protected.
For more information on protecting your intellectual property rights, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
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