Our new IP Telegram concerns the EU General Court’s decision on Community design belonging to a famous shoe company.

Recently, the General Court dismissed the action of Puma whose design was previously invalidated by the EUIPO. What makes this case more interesting and worth examining is the fact that one of the world’s most popular singers is involved.

Explore the full IP Telegram to find out more about the arguments of the parties and Court’s rulings on i.a. the grace period.W naszym najnowszym IP Telegramie omawiamy niedawne postanowienie Izby Odwoławczej EUIPO dotyczące podjętej przez firmę Prada próby zarejestrowania jej ikonicznego wzoru trójkątów.

On 6 March 2024 the General Court dismissed the action of the Puma SE for the annulment of the decision of the Invalidity Division of the EUIPO on the basis of which PUMA’s design RCD 003320555-0002 was declared invalided (T-647/22).

EUIPO declared PUMA’s design invalid due to lack of individual character. Puma immediately appealed against the decision and alleged the inadmissibility of the application for a declaration of invalidity and the breach of Article 7(1) of Regulation 6/2002.

Firstly, the EUIPO found irrelevant Puma’s argument that the application was inadmissible because of the breach of a contractual obligation by Handelsmaatschappij and its abusive character. The Court justified the rejection on the grounds that the proceedings are about resolving the individual character of the design, the assessment of which is objective.

Secondly, the General Court assessed the sufficiency of the given evidence (e.g. Rihanna’s posts on Instagram), the lack of individual character and the disclosure of the design prior to the grace period.

The Court stated that it is possible to identify the characteristics of Puma’s registered design while looking at photos posted on Rihanna’s Instagram and stressed that because of her global popularity followers would certainly pay attention to her outfits including shoes.

The Court also found that Puma did not prove that those posts „could not have become sufficiently known in the ordinary course of business to the industry specialist communities operating in the Community” (Article 7(1) of Regulation 6/2002).

Moreover, Rihanna posted the above-mentioned photos in December 2014 and the contested design was registered in 2016 so that means that Puma SE did not fulfil the conditions regarding the 12 months long grace period.

The full text of the Court’s decision is available here:

https://curia.europa.eu/juris/document/document.jsf?text=&docid=283501&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=5796338