Ioannis Psarakis, Lecturer, LL.M (III), PhD (c.)
Thanasis Ioannou, LL.M.
(republished from capital.gr)
Summary: In this article we examine the requirements for industrial design protection, i.e. novelty and individual character, with an emphasis on the critical time to verify their existence. An interesting example is the decision of the EUIPO Appeals Committee in relation to PUMA shoes and related social media posts by the singer RIHANNA. Through this case it becomes evident that even an internet publication that predates the filing of the application with the competent industrial property office deprives the applicant of the protection of the law.
What is industrial design?
The formation of any kind of monopoly is a condition that the entrepreneur seeks. And although both national and EU law generally take a negative attitude to monopoly configurations, there are nevertheless certain intellectual property rights which reward the company with a monopoly right. Such is the case with industrial design, or 'design'.
An industrial design is the externally visible image of the whole or part of an industrial or craft product, resulting from its specific characteristics (e.g. line, shape, colour, etc.).
Protection can be granted for a variety of products such as jewellery, clothing, shoes, handbags, furniture and decorative articles, packaging, construction, toys, etc.
The protection is for five years, renewable for life, subject to payment of fees, up to a total of 25 years. Thereafter, the design becomes common use, becomes "common property" and anyone is entitled, in principle, to copy it.
Basic protection requirements and the case of Rihanna
The basic requirements for the protection of an industrial design are that it must be a novelty and have individual character. This means that no identical industrial design must have been made available to the public by the time the application for registration is filed.
Identical designs are those whose characteristics differ only in minor details. At the same time, the informed user should be left with a unique impression in relation to any other earlier industrial design, that is to say, a design which has been made available to the public before the date of filing of the application for registration.
In particular, the requirement of individual character often raises important legal issues. It is indeed fluid when a particular design has individual character. This is a highly subjective assessment and therefore open to more than one approach. Both case law and the practice of the European Union Intellectual Property Office (EUIPO) have contributed to the development of (relative) legal certainty. A good knowledge of the subject matter and of the way in which the judges deal with industrial design issues is therefore a prerequisite for the correct registration of an industrial design - whether national or EU.
For example, in a case in which the internationally renowned singer Rihanna is somehow involved (read below), the EUIPO Board of Appeal in Case R 726/2021-3 (22.8.2022) held that a registered industrial design of PUMA SA lacked individual character.
The reasoning is interesting: the party seeking the invalidity of the industrial design (Handelsmaatschappij J. Van Hilst B.V.) submitted various publications it had found on the internet showing shoes with a similar design at a time well before the filing of the industrial design application. Thus, at that time, the design in question did not have individual character, as required (and still required) by the relevant provisions.
Of particular weight in this judgment of the EUIPO were some posts on Rihanna's Instagram account and on the profile "badgalriri" with 300,000 likes, which showed Rihanna wearing those shoes as early as 2014: that is, earlier than 26 July 2016 when PUMA SA filed the industrial design application. Recall that the requirements of novelty and individual character are decided at that time (i.e. of filing). Exceptionally, only if the industrial design right holder himself has disclosed the industrial design (e.g. by marketing the product) before the filing of the declaration, he is granted a grace period of 12 months within which he must file it (i.e. the declaration). Only under this condition, notwithstanding the earlier publication of the design, the requirement of novelty and individual character is not impaired (and thus the registration of the design is not prevented).
What is the lesson for business?
The story of PUMA and Rihanna provide some very important lessons in the field of industrial design.
Although the numbers show that industrial design registrations are on a steady rise (currently the EUIPO registers around 100,000 designs per year), every step of the interested party must be taken with great care in order to not only get the design registered, but also to avoid it being subsequently invalidated. This, in other words, is what happened in the case of PUMA. Every design reversal affects the stability of a company and consequently its profitability. Certainty is an important factor in commercial success.
Having said that, the same example highlights how vulnerable the right to industrial design is. It is very likely that, after proper legal scrutiny, it will be found that the monopoly right registered by a competitor (because an industrial design registration amounts to a monopoly right) may fall into the public domain.