There is a one-year grace period for filing an industrial design. If the design has been disclosed more than one year before the priority date of the application the registration of the design will be potentially invalid. Several decisions in the European Union have found designs invalid based on prior disclosure in social media posts.
A recent decision of the E U General court provides a graphic example of how things can go wrong. Puma SE v. European Union Intellectual Property Office (EUIPO) General Court (Case T647/22)
The Facts
Puma SE filed an application for an industrial design on July 26, 2016. The features of the design consisted of a shoe with a number of lines along the upper and a decorative top stitching, delineating the throat of the shoe and the heel tab; an upper with a low collar which is approximately the same thickness as the sole; a large flat sole of uniform thickness with pronounced ribbing, which creates a ledge with the upper; an Achilles notch that is the same height as the throat of the shoe; seven pairs of circular eyelets and a thick shoe lace; a pattern of two parallel lines of small holes (dots) on the side of the upper; a verbal and figurative element, located on one side of the upper. The drawing of the design views are set out below
In December 2014 Rihanna was appointed the creative director of Puma SE. On December 16 and 17 of that year she made a series of posts to her own Instagram account reporting her appointment and showing her wearing a pair of white shoes with thick black soles. A series of additional articles published at the same time reproduced the images from the posts. The posts made it possible to identify by the naked eye or by enlarging the photos, the features of the design from various angles. Two of the eight posts are set out below:
An initial application for a declaration of invalidity was allowed. On appeal to the Third Board of Appeal of EUIPO the appeal was dismissed. Then Puma applied to the General Court to annul the decision of the Third Board of Appeal.
The Court concluded the Board of Appeal was entitled to find, for the purposes of the comparison of the overall impression produced by each design at issue, that the evidence consisting of the images posted on the Instagram account, satisfied the conditions required to demonstrate actual disclosure of the earlier design on the market on 16 or 17 December 2014 before the start of the grace period.
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Obtaining industrial design registrations can be an effective method of protecting product shape or appearance. However, as seen above, diligence must be exercised to avoid inappropriate disclosure. Applications should be filed promptly after any public disclosure.
If you have questions, please contact me at mckeown@gsnh.com
John McKeown
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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