Invalidity of a design pre-disclosed on social media: the EUIPO decision

The European Union Intellectual Property Office (EUIPO) recently ruled on the invalidity of a design pre-disclosed on social media.

The episode under exam dates back to 2019, when a Dutch company addressed the EUIPO to ask for the nullity of the “creepy” shoe model, registered by the well-known clothing company “PUMA”, as a model disclosed before the grace period.

It is important to remember that, pursuant to Regulation no. 6/2022 on designs and Community models (RCD), the designer is granted a period of 12 months, preceding the design application for registration, during which the design can be disclosed without affecting the novelty and individual character requirements.

The goal of this disposition is to offer to the design creator (or the party entitled) the opportunity to commercialize the product, even though for a limited period of time, before registering the design, in order to asses, among other aspects, its commercial success.

Nevertheless, the famous singer Rihanna, nominated by PUMA as creative director of the women collection, had worn precisely the shoes protected by the model in question well before the grace period, as proved by some photos published on the Instagram page of the singer, who has billions of followers all over the world.

The Dutch company therefore used such photos, reproduced in many fashion magazines, as evidence of the pre-disclosure of the model, which were evaluated as suitable to demonstrate the invalidity.

PUMA appealed against the EUIPO Cancellation division stating, in particular, that from the concerned photos, in low quality, the details of the shoes could not be deduced and that the publication of a post on an Instagram page was not in itself a fact that could reasonably be known from the specialized environments of the interested field operating in the European community.

Nevertheless, the EUIPO Board of Appeal, once evaluated the argumentations of the applicant in its decision dated 11th August 2022, rejected the appeal highlighting that the exposition of the model under exam, through photos of the Rihanna Instagram account, fully constituted a “disclosure” pursuant to art. 7(1) RDC, considered moreover that the photos had received numerous comments and more than 300,000 likes.

In brief, taking into account the wide coverage that many fashion magazines gave to the posts of the singer, it was considered highly probable that the interested specialized environments had knowledge of the “creepy” shoes.

The Board then considered that the photos were of a sufficient quality to identify the relevant features of the design in question: in particular, by comparing the PUMA shoe model as it was registered at EUIPO with the shoes depicted in the photos, there were not significant differences such as to give, to an informed user, an overall different impression.

Therefore, considering that the shape of the contested model did not differ significantly from the one of the shoes worn by Rihanna, widely disclosed even before the grace period, the EUIPO Board, rejecting the appeal of PUMA, confirmed the invalidity of the European model.


Giulia Mugnaini