The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.
The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:
Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.
According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.
In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.
Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.
The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.