BACKGROUND TO THE DISPUTE

PUMA SE is the holder of registered Community Design No. 3 320 555-0002 with a filing date of 26 July 2016. Priority was claimed for US design patent application No. 29/572,153 filed on 25 July 2016; the indication of goods is for “shoes”.

The drawing is represented in the following views

On 22 July 2019, Handelsmaatschappij J. Van Hilst B. V. filed an application for a declaration of invalidity of the contested Community design based on Article 25(1)(b) CDR in conjunction with Articles 5 and 6 CDR, claiming that the contested Community design lacked novelty and individual character.

The invalidity applicant essentially argued that the contested Community design lacked novelty and individual character because it had been disclosed by the design holder himself before the 12-month “grace period” prior to the priority date of the contested Community design. In particular, Rihanna had posted photos of that design on her Instagram account on 16 December 2014.

By decision of 19 March 2021, the Cancellation Division declared the contested design invalid on the ground of lack of individual character in relation to the earlier design, and ordered PUMA SE to pay the costs. On 21 April 2021, PUMA SE lodged an appeal against the contested decision, seeking its annulment.

DECISION OF THE THIRD BOARD OF APPEAL

First, the Board states that according to Article 6(1)(b) CDR, a registered Community design shall be considered to have individual character if the overall impression which it produces on the informed user differs from the overall impression produced on the informed user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.

As regards disclosure of the design, according to Article 7(1) CDR, for the purpose of applying Article 5 CDR, a design shall be deemed to have been made available to the public if it has been published, exhibited, used in trade or disclosed, before the date of filing or, as the case may be, the date of priority of the contested design, unless these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.

The evidence submitted with the application for a declaration of invalidity to prove disclosure of the contested design includes, among others, three Instagram posts uploaded by the user “@badgalriri” on 16 December 2014. These posts contain images of the contested design and pre-date the 12-month grace period preceding the priority date of the contested design. Since the display of an image on the internet constitutes an act which can be classified as ‘publication’ within the meaning of Article 7(1) CDR, the display of the contested drawing on Rihanna’s Instagram account constitutes an act of disclosure (20/10/2021, T-823/19, Bobby pins, EU:T:2021:718, § 32). The fact that those posts have been made available to the public is confirmed by the fact that they have received numerous comments and more than 300 000 likes.

Furthermore, such disclosure is supported by press articles from independent sources. The articles prominently feature these posts showing the contested design and are dated before the priority date of the contested design.

PUMA contests the quality of the images submitted; after examining them, the Board considers that they are of sufficient quality to identify the relevant features of the contested design. Contrary to what PUMA SE claims, the images are clear, without obscurity or opacity, and do not prevent a clear and unambiguous identification of the contested design for the purpose of comparison with the contested registered Community design in the context of the assessment of the latter’s individual character (30/06/2021, T 373/20, Transportable Construction, EU:T:2021:400, § 24-26).

The images provided by the applicant for a declaration of invalidity show the appearance of the above design and can be seen from various angles. Indeed, the front and side views of the contested design allow the main relevant features of that design to be identified, namely a shoe with several lines and holes along the upper, a seven-hole fastening with thick laces and a flat, thick sole with vertical stripes.

In the light of the foregoing, the Board dismisses the appeal and upholds the invalidity of Community design No 3 320 555-0002.