Design protection of shoes: recent cases involving the PUMA brand

In the dynamic world of fashion, design protection plays a significant role in safeguarding creativity and innovation. Companies invest heavily in developing unique designs that not only attract consumer attention but also reflect their brand identity and values. In the first half of this year, the General Court of the European Union has issued several decisions on the protection of shoe designs, involving the well-known sneakers brand PUMA. We will look at these recent decisions, which illustrate different important elements which must be borne in mind when dealing with the IP protection of clothing and shoe wear designs.

Case T-647/22: PUMA design invalidated due to prior disclosure by Rihanna

In this case (which we covered in our blog here), a Dutch wholesaler challenged PUMA's registered design, arguing that it had been disclosed to the public before its registration, meaning that it should not have been accepted for registration due to lack of novelty. The action was successful: the General Court upheld the EUIPO's decision to invalidate PUMA's community design (No. 003320555-0002) registered in 2016, on the basis of a series of Instagram posts made by Rihanna in 2014 showing shoes with very similar designs. These posts, which marked her debut as PUMA's creative director, received over 300,000 likes. The Court held that this early publication met the criteria under Article 7 of the Community Designs Regulation (Regulation (EC) No 6/2002), as it occurred more than 12 months (which is the authorised grace period during which a design application may be filed after first disclosure of the design) before PUMA's application was filed in July 2016. The publications therefore offered ground to invalidate PUMA's design. Furthermore, the Court pointed out that the publication was sufficiently well known in the relevant sector in the EU, thus confirming the invalidity of the design for lack of novelty.

Case T-758/22: PUMA v Fujian Shoes

In this other case (which we also covered, here), it was PUMA that challenged the validity of a Community design registered by Fujian Daocheng Electronic Commerce Co. Ltd, claiming that it lacked individual character due to its similarity to its own registered design (No 1286116-0005) and other products on the market. PUMA was however unsuccessful. The Court upheld EUIPO's decision to maintain Fujian's Community Design (No. 008367742) and dismissed PUMA's invalidity claim. The Court pointed out that although there were similarities in the outer soles, significant differences in other aspects of the design, such as the decoration of the shoe body and the low collar design, were sufficient to create a distinctive overall impression for the informed user, in this case someone who regularly buys shoes and pays close attention to details. Similarity in certain aspects could not be enough to invalidate a whole design when this design, as a whole, differed sufficiently from pre-existing ones. Therefore, the disputed shoe design was considered unique enough and had significant differences from the previous designs, which justified its protection as a valid Community design.

Case T-757/22: PUMA v Road Star Group

Another of PUMA's challenge, this time to Road Star's Community Design (No. 004160273) for its sports shoes, was rejected by the Court. The issue was that while Road Star’s design was claimed for the whole shoe, PUMA’s designs which served as basis for its challenge only focused on the soles. PUMA argued that its earlier designs, registered as "shoe soles", should only be compared to the sole of Road Star’s design, being the essential element. However, both the EUIPO and the General Court rejected this argument, stating that the comparison must consider the overall appearance of each design. In addition, the General Court highlighted significant differences in the disputed design compared to PUMA's designs, including a low collar without a prominent tongue or heel, and a thicker, more curved upper compared to PUMA's designs with high collars, high tongues and large heels.  These features are in clear contrast to PUMA's designs, creating a distinctive overall impression for the informed user and therefore justify the protection of the Road Star Group's registered Community design.

Key aspects related to disputes related to registered designs in the fashion industry

Beyond their connection to PUMA, these cases share several elements and highlight key principles which need to be taken into account when dealing with the protection of designs in the fashion industry: 

Importance of prior public disclosure

Case T-647/22 shows how prior public disclosure can invalidate a design if it occurs outside the EU's one-year grace period. Rihanna's Instagram posts before PUMA's official design registration led to its invalidation. This simple fact highlights the need to carefully manage public information about new designs. Otherwise, they may endanger legal protection.

Assessment of the overall impression

In Cases T-758/22 and T-757/22, the General Court emphasised that the comparison of designs should be based on the overall impression made on the informed user. This holistic assessment means that design protection depends on how the product is perceived by the end user as a whole, and not only in relation to specific elements such as the soles.

Significant differences

Differences in design details, such as decoration and structure, are essential to create a distinctive individual character. In the case involving the Fujian shoes mark, differences in the decoration of the shoe body, the design of the low collar and other features such as structure and patterns were sufficient to create a distinctive impression. Likewise, in the case of Road Star, a low collar without a pronounced tongue and heel and a curvier and thicker upper compared to the Puma designs which had a high collar and tongue were sufficient characteristics to create a distinctive appearance. These differences may seem minor, but they are enough to justify the registration of a specific design and to ensure its recognition and protection on the market.