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An early product reveal can weaken a design registration long before the proprietor has reason to enforce it. When a successful product attracts competing versions, the launch history may become as important to the dispute as the appearance of the products themselves.

Puma’s litigation over a shoe design illustrates the exposure. Its application was filed on 26 July 2016. In the subsequent invalidity proceedings, the challenger relied on photographs of Rihanna published in December 2014, when her appointment as Puma’s creative director was announced. She was wearing shoes whose appearance was later relied on against the registered design. More than 19 months separated those photographs from the filing.

Puma disputed whether the images disclosed enough of the design. The photographs focused on Rihanna, and the company argued that their quality and presentation prevented a proper identification of the shoes’ features. Those arguments failed. In its judgment of 6 March 2024, the General Court upheld the decision invalidating the registration for lack of individual character. Puma’s reliance on an earlier settlement of infringement proceedings also failed: alleged contractual breaches or bad faith did not answer the objective question of the design’s validity. Puma v EUIPO, T-647/22.

For a proprietor contemplating enforcement, that procedural history matters. Once an earlier disclosure is identified, the proprietor may have to defend the right on which its infringement claim depends. Archived publicity can become central to the proceedings, affecting the strength of an injunction application and the parties’ negotiating positions. A review of the launch history before asserting the registration can reveal a vulnerability that a comparison of the competing products would miss.

The difficulty is particularly acute where the commercial launch has several stages. A manufacturer may work towards a fixed release date while a distributor circulates a catalogue weeks earlier. A collaborator may publish a photograph before the campaign has formally begun. The company’s internal description of those events carries limited weight if the material itself establishes a legally relevant disclosure. Equally, an early image does not necessarily disclose every feature of the design eventually filed. The assessment depends on what was actually visible and how it relates to the registered appearance.

The EU’s 12-month grace period allows qualifying disclosures originating from the designer or successor in title to be disregarded when assessing a registered design’s novelty and individual character. It leaves room to test demand before committing to registration. The period is measured against the filing date or a validly claimed priority date, however, and reliance on it requires evidence of the disclosure’s timing and origin. A later campaign does not restart the period for an appearance already disclosed.

There can be a sound commercial reason to use that flexibility, particularly where a business develops numerous designs and only a proportion will justify continued investment. The decision becomes harder to manage when advance material passes through several commercial partners. In that setting, the proprietor’s ability to identify and substantiate the earliest disclosure deserves attention before the business commits to postponing a filing.

International launches add another constraint. The availability and scope of protection following disclosure vary between jurisdictions. A business may retain an opportunity to register in the EU while having prejudiced protection in another intended market. The filing sequence should therefore reflect the territories in which exclusivity will matter, including markets the business expects to enter after the initial launch.

For designs expected to support a substantial product line, there is a strong case for settling the filing position before promotional material is released. That requires the people handling registration to see the proposed launch material and understand the arrangements with commercial partners. Where the business chooses to disclose first, the grace period should be a deliberate part of the filing strategy, supported by a reliable record. Discovering the relevant chronology through an opponent’s invalidity application is an expensive way to establish when the product first became public.

This article is intended as general information only. It does not constitute legal advice.

For advice on design protection, including the impact of early disclosure on registration and enforcement, please contact our team at Irimia & Partners using the form below.