EU General Court invalidates Puma design over Rihanna disclosure - Amazon sued for LED patent infringement at UPC

EU General Court invalidates Puma design over Rihanna disclosure

In a recent judgment of 6 March 2024 (T-647/22), the General Court of the European Union dealt with a design dispute involving the well-known Puma brand and the prior disclosure of its shoe model by the artist Rihanna.

The parties in this case are Puma SE, the worldwide recognised German fashion company, and Handelsmaatschappij J. Van Hilst BV a Dutch footwear wholesaler.

The dispute dates back to 2019, when the Dutch footwear wholesaler filed a request for a declaration of invalidity against Puma's Community design No. 003320555-0002, covering the design of sneakers it was commercialising. The Dutch company based its request on the argument that, at the time Puma filed its application for registration in July 2016, the footwear lacked the novelty and individual character required for RCD protection. The evidence supporting their argument consisted of a series of photos shared by singer Rihanna on her Instagram in 2014, showing her wearing white Puma shoes with thick black soles, very similar to the design covered by the design registration. The posts were shared to mark her debut as Puma's creative director.

In the European Union's Community design system, "novelty" and "individual character" are two basic requirements for design protection. "Novelty" means that the design must not have been disclosed to the public before the date of filing the application. On the other hand, "individual character" refers to the ability of the design to produce a different visual impression on an informed user compared to previously disclosed designs. In addition, it is important to note that Article 7 of the Community Design Regulation (EC) 6/2002 provides for a grace period of 12 months during which applicants may file an application for registration of a design even after it has been disclosed to the public, without affecting its novelty.

The EUIPO Board of Appeal concluded that the request for a declaration of invalidity was admissible and that the earlier design had been disclosed to the public before the start of the grace period. Faced with this situation, the German company appealed to the General Court, which had to decide whether Puma's design was invalid due to prior disclosure before the application for registration.

The General Court upheld the EUIPO's decision, holding that the Instagram post, which received more than 300,000 likes, met the criteria of prior public disclosure, as it could have been known to circles specialised in the relevant sector and operating within the European Union. The Court therefore confirmed the invalidity of Puma SE's registered Community design.

Amazon faces a patent infringement lawsuit from Seoul Semiconductor at the UPC

Seoul Semiconductor, a leading LED technology company, has taken its legal battle with e-commerce giant Amazon to the Unified Patent Court of the European Union. The South Korean company filed a lawsuit against Amazon's European division, Amazon Services Europe, accusing it of infringing its patents and seeking a final injunction to stop the sale of its patented products in 17 European countries.

Seoul Semiconductor, who has more than 18,000 registered patents, brought its claim on the basis of two patent. The first one enables dynamic brightness and colour adjustment in LED lighting products, which is necessary for smart and adaptive lighting solutions. The second patent relates to heat dissipation technology in LED packages, commonly used in automotive lighting systems. Seoul Semiconductor has decided to bring the suit against Amazon to stop the company’s distributing of infringing products through its online marketplace.

This legal action follows a series of successful patent infringement cases brought by Seoul Semiconductor in the US, Germany, France and the Netherlands in recent years, including victories against industry giants such as Philips and German retailer Conrad Electronic. As previous efforts to address infringement through individual lawsuits in different countries have been ineffective, Seoul Semiconductor has decided to use the Unified Patent Court to obtain a general ban on the sale of infringing products in Europe.

The Unified Patent Court (UPC), established in June 2023, serves as an international court for 17 EU member states, including France, Germany, Italy and Luxembourg. Its purpose is to simplify legal proceedings concerning patent infringement and revocation. With jurisdiction over unitary patents and European patents, the UPC issues binding decisions that are directly enforceable in the participating member states. This system reduces the complexity and cost of securing intellectual property rights across borders.