Invalidation of design pre-disclosed on social media platforms: the recent case decided by the EUIPO

In 2016, PUMA SE ("PUMA") filed a EU design application for trainers with the EUIPO, as depicted below:

 In 2019, the Dutch company Handelsmaatschappij J.H. van Hilst b.v. ("Handelsmaatschappij") had challenged the validity of the EU model before the Cancellation Division of the EUIPO claiming the lack of novelty and individual character, as PUMA had filed the design application over a year after its first disclosure, i.e. beyond the so-called "grace period" pursuant to Article 7(2) of EU Reg. No. 6/2002 (“CDR”). In other words, there is a period of 12 months prior to the filing date of the design application during which a designer may disclose his design without affecting the novelty requirement.

In support, Handelsmaatschappij had submitted, as evidence, posts on the famous singer Rihanna's Instagram profile, dating from 16 December 2014, showing her wearing the model of shoe in question, which was subsequently reproduced in various newsletters and online magazines.

The EUIPO Cancellation Division upheld this application for invalidity in 2021.

This decision was appealed by Lego A/S before the EU General Court (Case R 726/2021-3). There, PUMA maintained the validity of its model, contesting the evidence provided by Handelsmaatschappij and in particular claiming, inter alia, that:

1. the photographs produced were blurred and rather dark and showed only a limited view of the design. In addition,, the pictures did not show the back and the sole of the shoes and therefore did not allow a proper comparison with the contested model;

2. the publication of a post on a celebrity’s Instagram page, portraying shoes, was in itself incapable of attracting groups  specialising in the relevant sector within the EU, i.e. the footwear sector

3. there was no certainty as to the date of the photographs.

However, by decision of 11 August last year, the Third EUIPO Board of Appeal rejected PUMA's defence. First of all, the Commission stated that, in order to establish the disclosure of an earlier design, it is necessary to take into account all the relevant circumstances of the specific case when making its overall assessment; moreover, it reiterated that certain elements of evidence, which considered alone are insufficient to prove the disclosure of an earlier design, when combined or in combination with other documents or information, may contribute to the proof of disclosure. Again, the Commission held that, in order to assess the probative value of a document, it is necessary to verify the plausibility and accuracy of the information contained therein, taking into consideration, inter alia, the origin of the document and the circumstances surrounding it, the person to whom it was addressed and whether, at first sight, the document appears solid and reliable.

With reference to the present case, the Board recognised that the display of an image on the Internet constitutes an event qualifying as a 'publication' within the meaning of Article 7(1) CDR and, therefore, the display of the prior design on Rihanna's Instagram account constitutes an event of disclosure. This argument was further supported not only by the number of likes found under the post in question (approximately 300,000) but also by the numerous online articles that re-shared it, resulting in increased media coverage.

The Board then considered the photographs to be of sufficient quality to identify the relevant features of the prior design.

It concluded by stating, inter alia, that when comparing the contested model with the shoes depicted in the photographs, no significant differences actually emerged, such as to produce a different overall impression in the informed user. On this point, it should be recalled that the individual character of a design must also be assessed with reference to the general impression created in the informed user who, although not a technical expert, is familiar with the various designs existing in the sector and who, because of his/her interest in the products in question, has a relatively high degree of attention to detail.

In the present case, according to the Board, the EUIPO correctly excluded the individual character of the design in question, given that, on the basis of the evidence filed by the parties and known elements, the shape of the contested design would not significantly differ from the shape of the shoes, which appeared in the post on 16 December 2014.

Ultimately, the Board therefore confirmed the EUIPO's decision, rejecting PUMA's appeal.