The “Rihanna Case” and the risks of untimely disclosure
On March 6, 2024, the Sixth Chamber of the General Court of the European Union upheld the declaration of invalidity of a Community design for shoes which belonged to the German firm Puma due to the disclosure made before the grace period by the Barbadian singer Rihanna. The case illustrates the need to carefully time the launch of a new product and the devastating consequences of premature disclosure.
On July 22, 2019, the Dutch firm Handelsmaatschappij J. Van Hilst BV requested the invalidity of the Community design registered by the German firm Puma SE under No. 3 320 555-0002 on the basis of an application filed on 26 July 2016 for “Shoes”, arguing that it lacked novelty and individual character as it had been disclosed by the registrant itself before the grace period.
The disclosure had taken place on December 16, 2014 on the Instagram account “badgalriri” of the well-known singer (and businesswoman, designer and actress) Robyn Rihanna Fenty, who at the time was also creative director of Puma. Rihanna’s appointment was reported and she was shown in a succession of photographs wearing a pair of white sneakers with thick black soles. This post had more than 300,000 likes.
Council Regulation (EC) No. 6/2002 on Community designs provides that “a design shall by protected by a Community design to the extent that it is new and has individual character” (Art. 4(1)). It is new if no identical design has been made available to the public (and designs are deemed to be identical if their features differ only in immaterial details) (Art. 5), and it has individual character “if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public ” (Art. 6(1)).
The cut-off date is the filing date or the date of priority if a priority is claimed (Article 5(1)(b)). The grace period covers disclosure by the designer of the design, his successor in title or, in certain circumstances, a third party, “during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority ” (Art. 7(2)).
On March 19, 2021, the Invalidity Division of EUIPO granted the invalidity on the grounds that the design in question did not have the individual character required by Article 6 of the Regulation. That decision, which was appealed by Puma, was upheld on the same grounds on August 11, 2022 by the Board of Appeal of EUIPO. A new appeal, this time before the General Court of the European Union, was also rejected in the ruling I am commenting on.
Here the Court stated that the posts on the Instagram account “badgalriri” made it possible to identify all the features of the design from various angles. It also considered that in December 2014 Rihanna was a world-famous pop star and therefore it was perfectly reasonable for a “not insignificant” proportion of people interested in her or her music to take a close look at the photographs in question. Those disclosures predated the filing of the challenged design by more than twelve months, so the grace period did not apply to this case. As a result, the Court dismissed the latter action, with costs.
How would this same case have been resolved in Argentina? Most likely, the same conclusion would have been reached, but this is not entirely certain because in Argentina individual character (a different overall impression on informed users) is not required. Consequently, if the photographs included in the Instagram posts were considered insufficiently clear, then it would be more difficult to invalidate the design for lack of novelty.
Be that as it may, the lesson of the “Rihanna case” is loud and clear and as applicable here as it is there: it is absolutely essential that the firms’ creative and commercial departments be carefully aligned with their Intellectual Property advisors. This is true not only for designs but also for trademarks, patents and utility models. In the case of trademarks, the loss of novelty may not be an insurmountable difficulty, but for patents and models it is usually fatal.
For further information please contact rflanzbaum@ojambf.com
