Background

 

On 23 August 2017, Road Star Group (a wholesaler and retailer based in the Czech Republic) applied to register a Community design for footwear, which included the following images:

 

  

 

On 23 December 2020, the Chinese company Fujian Daocheng Electronic Commerce applied to register a Community design for footwear, which included the following images:

 

  

 

Puma filed applications for declarations of invalidity, claiming that Road Star and Fujian’s RCDs produced the same overall impression as the earlier “PUMA NRGY” design, which was designed and developed by Puma and protected by a Community design, which included the following image:

 

 

Puma also alleged that Road Star and Fujian’s RCDs lacked individual character over its “NRGY v2” product shown below:

 

 

Issues

 

The EUIPO’s Invalidity Division rejected Puma’s applications for declarations of invalidity, on the ground that the Road Star and Fujian designs had individual character. 

 

The Third Board of Appeal upheld the Invalidity Division’s decisions.

 

Puma appealed to the General Court, on the grounds that the Board had incorrectly assessed the scope of protection of its earlier designs and erred in finding that the Road Star and Fujian designs had individual character.

 

Decision

 

The focus for EUIPO had been on defining exactly what elements would be considered in the comparison between Road Star, Fujian and Puma’s designs.

 

Puma disputed that the upper part of the shoe - as shown in the contested Road Star and Fujian designs and as depicted in broken lines in five of Puma’s earlier designs - had to be taken into consideration. 

 

However, the submitted evidence failed to prove that “the sole is the essential element of a shoe” as Puma had claimed. 

 

Moreover, Puma did not dispute that the disclaimed elements of its earlier designs, namely the appearance of a shoe upper in broken lines, had also been disclosed at the same time as the protected part of those designs.

 

Furthermore, the court noted that the disclaimed elements of Puma’s earlier designs appeared sufficiently clear and precise to perceive, without any interpretative effort, the appearance of a shoe upper and of various parts such as, amongst other things, the heel counter, the laces or also the arch.

 

Accordingly, the General Court found that the Board had been right to find that the upper parts of the shoes were part of the prior art, along with the soles. 

 

Also, contrary to what Puma claimed, the court considered the Board had not erred by taking into account the “stripe with a wide horizontal base which [tapered] to a thinner line”, corresponding to an EU trade mark owned by Puma, since that figurative sign contributed greatly, in particular, on account of its size and, more specifically, of its ornamentation, to the appearance of Puma’s earlier “NRGY v2” product.

 

Even though Road Star, Fujian and Puma’s designs shared certain visual features, such as the outer sole, the court found that the main differences, such as the decoration of the body of the shoe, the low-cut collar and the characteristics of the sole, were sufficient to create a different overall impression which would not escape the attention of the informed user, defined as someone who regularly buys shoes and pays a relatively high level of attention.

 

Comment

 

This judgment highlights the importance of treading carefully, as the overall impression created by a design application - including disclaimed elements that appear in broken lines - will be considered in the comparison of the overall impression of designs at issue.

 

Disclaimed elements that appear in broken lines in earlier design applications could be deemed as having been made available to the public and, therefore, could be considered in assessing the individual character of a contested design or an earlier design.

 

As this judgment also illustrates, a figurative mark on an earlier design can be included in the overall impressions for the purpose of establishing the individual character of the contested design, if it is deemed to contribute greatly to the appearance of the earlier design; in particular, on account of its size and, more specifically, of its ornamentation, as was the case for Puma’s figurative EU trade mark for its tapering stripe.

 

Case references: Puma v European Union Intellectual Property Office (EUIPO) (T-757/22) EU:T:2024:291 and Puma v European Union Intellectual Property Office (EUIPO) (T-758/22) EU:T:2024:292.

 

Our full article on this case will appear in Entertainment Law Review Issue 6 2024