Rihanna’s Instagram post invalidates Puma design registration

The partnership between Rihanna and Puma has extended beyond footwear, with the singer also designing apparel and accessories for the brand. Overall, their collaboration has been highly successful, blending Rihanna's distinctive style with Puma's sporty aesthetic to create fashion-forward collections that resonate with consumers worldwide.

Nevertheless, one of the most notable releases from this collaboration is the Puma Fenty Creeper, which quickly became a fashion staple and received widespread acclaim for its unique design. Rihanna's influence has helped Puma appeal to a younger demographic and has brought a fresh perspective to the brand's image.

Puma registered the design of those sport shoes in August 2016. Rihanna, though, posted three photos in December 2014 of white shoes with a thick black sole to mark her signing as Puma's creative director.

This is the reason of the legal dispute between Puma and a Dutch children's footwear manufacturer regarding the design registration. Handelsmaatschappij J. Van Hilst (‘HJVH’), in fact, argued that the design registration was invalid due to the prior disclosure on social media.

In support of its application for a declaration of invalidity, HJVH had, between others, submitted images taken from the Instagram account ‘badgalriri’ which were dated mid-December 2014 and which related to Rihanna’s appointment as Puma’s new creative director. Those images showed Rihanna wearing a pair of white trainers with a thick black sole. Those images were reproduced in several articles in online newspapers.

In August 2022, EUIPO declared the invalidity of the Community design for Puma sports shoes. In those circumstances, EUIPO took the view that the prior design had been made public, which justified the invalidity of the registered design.

Puma went to court trying to reverse the ruling.

On 6 March 2024, the General Court of the EU based in Luxembourg ruled in the case Puma vs EUIPO – Handelsmaatschappij J. Van Hilst (T-647/22). 

The General Court upheld the decision of the European Intellectual Property Office, condemning Puma to pay the legal expenses.

The General Court, in fact, upheld EUIPO’s assessment that those images were sufficient to demonstrate the disclosure of the prior design and that the disclosure could have become known to the circles specialized in the sector concerned. In this regard, it stated that the images taken from the Instagram account named ‘badgalriri’, published in December 2014, made it possible to identify, with the naked eye or by enlarging those photos, all essential features of the prior design.

In that context, the General Court rejected Puma’s arguments that nobody took an interest in Rihanna’s shoes in December 2014 and that nobody therefore perceived the prior design. In December 2014, Rihanna was a world-famous pop star, which means that her fans and the circles specialized in the fashion sector had, at that time, developed a particular interest in the shoes that she wore on the day on which the contract under which the star became Puma’s creative director was signed. 

In view of those considerations, according to the General Court, EUIPO was entitled to find that the prior design had been disclosed in December 2014 in such a way as to allow the registered design to be declared invalid.

The decision underscores the importance of considering prior art and public disclosure when seeking design protection.

In intellectual property law, designs that have been publicly disclosed or are already in the public domain may not be eligible for registration or protection. The fact that the design was featured on Rihanna's Instagram account constituted public disclosure, making it challenging for Puma to claim exclusive rights to it through registration.

This case highlights the complexities and challenges involved in obtaining design protection, especially in the age of social media where images can quickly spread and become widely accessible. 

It also underscores the importance of conducting thorough research and due diligence before seeking design registration to avoid potential conflicts or challenges.