General Court: No Design Protection for Sneakers Already Known to the Public
A social media post can have dire consequences, even for design protection. This was a hard lesson learned by a sports equipment manufacturer which, according to a ruling by the Court of the European Union dated March 6, 2024 (Case No.: T-647/22), lost the design protection for a model of shoes. The reason was that the shoe model was visible on social media before its launch, and therefore could no longer enjoy design protection, as stated by the General Court (EuG).
Design can provide a high degree of brand recognition among customers. Thus, effective protection of design against competitors is critically important for companies. However, design can only be protected under certain conditions. This includes the requirement that the design must be novel and must differ from existing designs, according to the law firm MTR Legal Rechtsanwälte, which also advises on industrial property protection.
Backfired Advertising
The influence of social media and influencers has become a significant factor in advertising. However, entrepreneurs should be cautious not to let new designs appear on internet platforms before they are released to the market. If they do, the design protection could be at risk.
Collaboration with well-known personalities can also hold substantial advertising value for a company. Thinking along these lines, a sports equipment manufacturer agreed on a collaboration with a famous singer as a creative director. She posted photos of her signing the contract on Instagram, wearing the manufacturer’s sneakers, which were clearly visible in the photos.
EUIPO Declares Design Protection of the Sneakers Invalid
Fundamentally, this was not bad advertising for the shoes, but in this instance, it backfired. This became apparent when the sports equipment manufacturer applied for design protection for the shoes at the European Union Intellectual Property Office (EUIPO) about two years later. Although the design protection was initially granted as requested, it was declared invalid upon the application of a Dutch company that also sells shoes.
The European authority justified this by stating that the design was no longer new at the time of application in 2016, as the shoes had already been visible on Instagram two years earlier. Article 4(1) of the EC Design Regulation states that a design can only be protected if it is new and has individual character. A design is considered new under the regulation if it had not been made accessible to the public twelve months before the application or if it was not known to the sector circles involved in that economic sector. This was not the case here, as the shoes were already visible on the singer’s Instagram account in 2014.
EuG Dismisses Lawsuit
The sports equipment manufacturer did not want to accept the annulment of the design protection lightly. It filed a lawsuit at the Court of the European Union (EuG). The manufacturer argued that at the time the photos were published, no one was interested in the singer’s shoes, and thus the design went unnoticed.
However, this argument did not hold up at the EuG. The court dismissed the lawsuit, stating that the singer had millions of followers on her account and the details of the shoes were clearly visible in the photos. Thus, with her post, the singer had made the design accessible to millions of followers and thereby the public. Furthermore, the singer was already so famous in 2014 that the public was interested in her outfit, according to the EuG. The manufacturer can still appeal the decision at the European Court of Justice.
The judgment highlights that companies should ensure timely application for design protection for their products.
MTR Legal Rechtsanwälte provides advice on industrial property protection.
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