Background

“Fenty x Puma” is a collaboration with the singer Robyn Rihanna Fenty (Rihanna). Rihanna partnered with Puma in 2014 as a creative director and brand ambassador. In September 2015 Puma launched the first Fenty x Puma collection, including its “Creeper” model (Fenty Creeper). Looking back at shoe styles, the crepe sole dates back to the years following World War II, but the combination with a sneaker upper (at least) appeared to be a novelty. The Fenty Creeper soon became an “it sneaker”.

Designs for this model were filed in July 2016. In the EU, designs were filed for the sole standalone (registered Community design number 003320555-0001) and for the shoe model as a whole (registered Community design number 003320555-0002).

Given the popularity of the Fenty Creeper knock-offs were inevitably to follow, and Puma heavily enforced its designs.

In 2019 a third party filed invalidity actions against these registered community designs (RCDs). Interestingly enough, Puma withdrew its appeal to the Board of Appeal in relation to the sole design. The design has been declared invalid. However, the proceedings against the RCD for the entire shoe went to the General Court after the Board of Appeal confirmed the invalidity of the design.

Decision

The General Court then confirmed that the design is in fact invalid for lack of novelty and individual character.

The reason for this was that the invalidity applicant was able to dig up Instagram posts and articles showing Rihanna wearing the Fenty Creeper model in 2014.

Puma tried to argue that:

• the images were not detailed enough to make out any of the features of the attacked RCD; and
• with regard to one photo taken from “hausofrihanna.com”, the photo would be of questionable origin, could have been added to site at a later date, and it could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned.

However, the General Court confirmed that the design had already been disclosed by the posts and articles in 2014. With regard to this, the General Court highlighted that Rihanna was a world-famous pop star in 2014. Therefore, her fans and those who specialised in the fashion sector “had developed a particular interest in the shoes that she wore on the day on which the contract under which the star became the applicant’s creative director was signed. It is perfectly reasonable to take the view that in December 2014 a not insignificant proportion of people who were interested in music, or in Rihanna and her clothing, viewed the photos closely to identify the shoes that the star wore, thus recognising the features of the prior design” (see paragraph 53 of the decision).

Outlook

Given the high threshold for an appeal to the Court of Justice of the European Union (CJEU) it is unlikely that Puma will be able to appeal. Therefore, this decision will likely put a damper on Puma’s enforcement campaign, at least on the basis of any registered Community designs. On the other hand, at least in Germany, Puma may still try to rely on unfair competition claims. As the territorial scope of such claims is limited to Germany, it will certainly be more cumbersome than pan-EU enforcement based on an RCD.

In short

Overall, the decision serves as a reminder to get designs filed as soon as possible, ideally before any disclosure to the public. Aside from that, instilling this awareness in any collaborators (for example, Rihanna) may certainly have gone a long way. After all, Rihanna was wearing the shoes in public before their official launch in September 2015. With the designs having been filed in July 2016, this was a long while before Puma’s legal department was able to act or at least realise that designs would facilitate enforcement against any knock-offs.