17/06/2025
In this recent decision, the EUIPO’s Board of Appeal considered whether a partial design to the sole of a shoe could invalidate a full registered design to a whole shoe. The case, brought by Puma SE, puts a spotlight on how design protection is interpreted at the EUIPO and offers a few key lessons for rights holders and challengers alike.
A summary of the case and our take-home points are set out below.
Background
In June 2022 the EUIPO’s Invalidity Division declared that registered EU design no. 008143762-0001, to a training shoe, was valid over prior art consisting of five partial designs for shoe soles (D1 to D5), and two Amazon product listings (D6 and D7).
The invalidity applicant, footwear manufacturer Puma SE, disagreed with the decision and filed an appeal, arguing that:
- The subject of the proceedings is not the design of the entire shoe, but only the sole of the shoe (as shown in D1 to D5), because otherwise protection conferred by D1 to D5 would be unduly limited;
- The comparison between the contested design and D1 to D5 should be limited to the soles because D1 to D5 are prior designs directed only to soles;
- The contested design does not create a different overall impression compared to D6 and D7; and
- German infringement cases were decided in favour of the invalidity applicant.
The Contested Design
Registered EU design no. 008143762-0001 has a product indication of “training shoes”.
It was filed and registered on 24 August 2020, claiming priority from a Chinese design application filed on 28 February 2020.
The design has the following views:
Contested Design
What is the point of reference when assessing individual character of a registered EU design?
D1 to D5 are prior registered designs directed to a sole of a shoe only, with an upper of the shoe shown but disclaimed in dashed lines. Whereas, the contested design shows a complete shoe with a sole and an upper.
D1
The invalidity applicant argued that the point of reference for assessing individual character is the prior art. If the prior art is a partial design then the assessment for individual character should be limited to comparing the features which are claimed in the prior design.
Since D1 to D5 are limited to claiming only a sole, the invalidity applicant argued that the assessment for individual character should also be limited to comparing the soles of D1 to D5 to the sole of the contested design. If the sole of the contested design has an overall impression that does not differ from the overall impression of one of D1 to D5 then the contested design does not have individual character and is not valid.
D6 and D7 are Amazon product listings, each showing a single image of a shoe. The invalidity applicant argued that the assessment for individual character should be limited to comparing the prior designs D6 and D7 with a corresponding single image of the contested design.
D6
D7
The Board of Appeal did not agree with these positions.
Following the established case law set out in T-193/20, the Board said the point of reference for assessing individual character is the contested design because its validity is at issue. Consequently, where, as in this case, the contested design discloses more features than the prior design, the overall impression is determined by all the discernible features.
Following these principles, the Board said the entire shoe in the contested design, including the sole and the upper, should be compared with the prior designs.
Interestingly, for the comparison with D1 to D5, the Board took into account the disclaimed features because while these features are not part of the claimed subject-matter of D1 to D5, they are part of the published images.
Does the contested design have individual character over D1 to D5?
After confirming that that the point of reference for assessing individual character is the contested design, the Board then assessed whether the contested design has individual character over the prior designs of D1 to D5. In order for the contested design to have individual character, it must convey a different overall impression on an informed user, compared to each of the prior designs.
The Board agreed that the contested design and D1 to D5 all show a tapered, textured sole. However, the Board held that this similarity is not sufficient to outweigh the many differences between the designs. The Board identified the following differences in the upper, the heel, the lacing, and the sole:
- the upper of the contested design shows “a mesh-like structure and varied surface patterns”whereas D1 to D5 show“an upper structure with two distinct patches”;
- the contested design has a “heel counter formed by an additional segment extending into the midsole”, which is absent or restrained in D1 to D5;
- the contested design has “crisscross lacing through three pairs of fabric loops”, while D1 to D5 have a “straight-laced configuration with five pairs of eyelets”; and
- the sole of the contested design features “a two-layered, textured sole with a prominent overhand at the heel, tapering towards both the toe and heel, creating a pronounced curvature in the midfoot”, whereas the soles of D1 to D5 “are single-layered with a relatively uniform thickness”.
Consequently, the Board decided that the overall impression produced by the contested design on the informed user is different to that produced by D1 to D5.
Does the contested design have individual character of the shoes shown in D6 and D7?
The Board then moved on to assessing whether the contested design has individual character over the prior designs of D6 and D7.
The Board accepted that there are some similarities between the contested design and D6 and D7. The designs are all similar in colour and material. The shoes all have a textured sole and a heel/side structure. However, the Board also identified many differences between the contested design and D6 and D7, including in the heel, the sole, the toe cap, the overall shape, and the lacing:
- the contested design has a “pronounced heel counter formed by a separate segment that extends into the midsole”, while D6 and D7 have a very different shape and size structure;
- the sole of the contested design is thick and “tapers towards both the toe and the heel, creating a pronounced curvature in the midfoot”, whereas D6 and D7 have “flatter soles with a more consistent height tapering only towards the toe”;
- the toe cap of the contested design “lifts noticeably, incorporating a distinct toe spring which is less pronounced in the prior designs”;
- the overall shape of the contested design “features a sock-like constructions with no tongue tab”, while “D6 includes a front-facing tab bearing the PUMA logo”, and D7 “features a tongue that is less prominent”; and
- the laces of the contested design are “threaded through fabric loops into the upper, whereas the prior designs show laces threaded through external eyelet supports that rise above the midsole”.
The Board said that these differences are prominent and alter the appearance of the shoes in a way that would be noticed by the informed user. Consequently, the Board decided that the overall impression produced by the contested design on the informed user is different to that produced by D6 and D7.
Are favourable national decisions persuasive in EUIPO invalidity proceedings?
No. The Board of Appeal said the EUIPO is autonomous and is not bound by decisions of national courts in the EU. Each case is assessed on its merits. Furthermore, in this case, the invalidity applicant submitted court decisions which were in German and then failed to provide a translation into the language of the proceedings, as is required.
Outcome
The Board of Appeal dismissed the appeal and confirmed the validity of the contested design.
R&G Comments
- The point of reference when comparing a prior design with a contested design for the purpose of assessing individual character is the contested design.
- All additional features shown in the contested design should be taken into account. It does not matter whether the prior design shows or claims equivalent features.
- Invalidity proceedings are not infringement proceedings.
- As with patents, a registered design with a very broad scope may be useful for infringement purposes, but it can be less helpful in acting as prior art for subsequent registered designs, because the subsequent registered designs may include additional features which produce a different overall impression.
- Similarly, a registered design which is valid over a prior design, but which falls within the scope of protection of the prior design, may not be commercially useful.
- In this case, it seems the invalidity applicant was successful with infringement proceeds in Germany, but has been unsuccessful in invalidity proceedings before the EUIPO.
- National court decisions may not be persuasive in proceedings before the EUIPO.
Practice note:
- When filing registered designs for a product, consider a filing series of applications, building from broad to specific—e.g., to a sole, to a partial upper, to a full shoe. This layered approach strengthens your hand in both enforcement and invalidity scenarios, when having to defend the validity of your design and when acting as prior art.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
