Fenty X Puma - a crash course in design invalidation

The partnership between the brand Puma and Rihanna's brand Fenty is iconic and has developed many "it" products. Due to the popularity of their designs, these products are frequently fraudulently duplicated. One such product is the Fenty Creeper model, a shoe with a blocky platform sole and elegant structured sneaker upper. The collaboration registered the Creeper design with many nations, including the USA and EU. It aggressively brought suits against knockoffs; however, a recent court appearance ended the EU Intellectual property protection for the Fenty x Puma Creeper model. In this post, we will explore the details of the March European Union General Court IP ruling and explain the concept and significance of design invalidation.

Background

The parties were the European Intellectual Property Office and Germany's Puma SE. However, the initial complaining party was Handelsmaatschappij J. Van Hilst, BV of the Netherlands. Hilst brought a complaint in July 2019, declaring an invalidity within the design, which Puma registered when it filed with the EU in 2016. The complaint referenced an application image of seven Puma Creeper design angles. Hilst argued that these images were generic and 'lacked individual character'. In support of this argument, Rihanna's social media was brought as evidence, along with multiple photos used in press announcements of the partnership. All contained pictures of the singer in shoes, which replicated the simple design referenced in the 7-view design flats from the EU IP filing.

The main issue of the case is whether the Creeper design possesses sufficient individuality to be recognised as a unique design protected by intellectual property rights.

To examine this issue, the court relied on a few legal rules. Much of the case was read in relation to Article 4(1) of Regulation No 6/2002. This regulation manages Community designs within the EU. A Community design is an intellectual property design registered within the EU. This registration protects the colours, textures, materials, and additional design details. Such registration protects the product for up to 25 years. Article 4(1) stipulates that the design submitted within the community design application must be a graphic or photographic representation of the design. It can either be in black and white or in colour. These graphics will be used as a representation of the design. Puma submitted the 7-view design flats referenced above in this case, and it is these representations of the design which the courts used to evaluate the case.

Furthermore, the court looked to Article 6 of the same regulation, which states that Community designs must possess an individual character. This means that the designs submitted (in this case, the 7-view flats) must demonstrate an aspect of the design that differs from other existing designs to such a degree that it may be awarded intellectual property protections. In this case, the most crucial feature of Article 6 is the comparison and impression aspects. The court will consider the design and how an informed consumer might compare it to similar designs to formulate an overall impression of the product. If the design cannot provide distinction, it is unlikely to be ruled to possess individuality.

The above rules were applied clearly to the case in the March 2021 decision. Regarding Article 4(1), it may be determined that the flats submitted were sufficient and adequate design representations. This is because the images submitted were black and white, and the design was demonstrated from multiple angles. However, when Article 6 is combined with Article 4(1), the court ruled that the design wasn't individual enough, thus creating an invalidity. Invalidity is the legal concept that a design lacks individuality or new character, making it an invalidly registered Community design, often resulting in a ruling that removes the IP protections that the design enjoys within the EU trade market.

In the April 2021 appeal, Article 55 of the same regulation No 6/2002 was utilized. In summary, Article 55 states that designs must differ in some way from preexisting products. To emphasize this, Article 25(1)(b) was referenced by the Board of Appeal of EUIPO as a foundational factor for why the appeal was dismissed. Article 25(1)(b) states that in cases of invalidity, the grounds (novelty, character, etc.) within the whole of Article 25 will apply. If most are present, the court will be obliged to declare the design invalid.

A final conclusion to the case was finally provided on 06 March 2024 by the General Court of the EUIPO. The court ruled that the design was, in fact, invalid. This ruling was based on the considerations of all the above legal rules and applications. Furthermore, the court ordered the applicant (in this case, Puma) to pay for any costs of the other party's legal actions. This is pursuant to Article 134(1) of the Rules of Procedure of the General Court. The overarching result is that the General Court confirmed that the Creeper model design submitted to the EUIPO was invalid.

Puma is unlikely to appeal to the Court of Justice of the European Union. As such, it will face a complex trial to enforce its Creeper designs within the EU. Any additional designs from the company registered as Community designs within the EU may be scrutinised. At a broader scope, this case enforces the essential individuality aspect of designs submitted to EUIPO by fashion companies. The precedence set by Fenty X Puma will likely lead the court to rule similarly in parallel cases in the future. Finally, it is through this case that the layperson can better understand Invalidity. Fenty X Puma is a recognised brand collaboration worldwide. While fans may have been unaware of the legal drama unfolding, they now have access to understanding a niche aspect of Intellectual Property law and how it impacts worldwide trade.

Resources for this post include the following:

Puma SE v EUIPO T-647/22 (Case here)

Yvonne Stone, 'I Spy with my little eye…How to invalidate your own design!' (D Young & Co Knowledge Bank, 18 April 2024)<https://www.dyoung.com/en/knowledgebank/articles/invalidate-design-puma-euipo#:~:text=The%20General%20Court%20then%20confirmed%20that%20the%20design,Rihanna%20wearing%20the%20Fenty%20Creeper%20model%20in%202014.> accessed 29 May 2024