A seemingly innocuous Instagram post by Rihanna is the reason that a Puma design patent* was held invalid. Last week, the General Court of the European Union affirmed the decision of a lower tribunal, invalidating Puma’s application on the grounds that the design had been publicly disclosed prior to the application’s filing date.[1]
In 2016, Puma filed a European design patent application covering a particular shoe design. Three years later, Handelsmaatschappij J. van Hilst (HJVH) moved to invalidate the patent, arguing that the shoe design was disclosed in various Instagram posts dating back to December of 2014—roughly one and a half years before the application’s filing date. The EUIPO invalidated the application in 2021. Puma appealed to the General Court of the European Union, which handed down its decision last week.
Puma’s Design Patent
EU law provides that a design patent may be invalidated if the design was made available to the public during the twelve-month period preceding the patent’s filing date.[2] U.S. Patent Law provides a similar remedy. The “public-use bar,” set forth in Section 102(a) of the Patent Act, establishes that “a person shall be entitled to patent unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.”[3] A one year grace period applies for public uses performed by the inventors themselves, rather than third parties.[4]
As part of its original invalidity proceeding, HJVH submitted several Instagram posts which pre-date the Puma application by at least a year. The posts appear to show Rihanna wearing the shoes that Puma’s application sought to protect. HJVH therefore argued that the design claimed in the application was disclosed by Puma itself prior to the twelve-month grace period.
Rihanna ’s 2014 Instagram Posts
On appeal, Puma argued that the photos are of insufficient quality to make the features of the design visible. The Court rejected that argument, reasoning that “the front and side views of the shoes appearing in the [Instagram posts] make it possible to identify a sports shoe with a number of lines and holes along the upper, a closure of seven holes with thick laces and a flat and thick, vertically striped sole.”[5] The Court additionally noted that due to Rihanna ’s status as a “world-famous pop star,” it is a “perfectly reasonable to take the view that a not insignificant proportion of the people who were interested…in Rihanna herself…viewed the photos in question closely in order to discern from those photos the appearance of the shoes that the star wore[.]”[6]
For now, Puma’s patent is rendered invalid. However, Puma may appeal the decision to the European Union’s Court of Justice.
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*Within the EU, design patents are referred to as Registered Community Designs, or registered designs for short.
[1] Case T‑647/22, Puma SE v. European Union Intellectual Property Office, 2024 ECLI:EU:T:2024:147
[2] Council Regulation 6/2002, on Community Designs, 2002 (O.J.) (L 3) 8-9 (EC).
[3] 35 U.S.C. § 102(a).
[4] 35 U.S.C. § 102(b)(1)(A).
[5] Case T‑647/22, at ¶ 48.
[6] Id. at ¶ 53.