Published promotional video lethal to Community Design Petsbelle scratching post

Petsbelle designs, produces and markets scratching posts. In order to protect the design of its products, the company applies for European design protection. There are two important requirements for a European design registration. A model must be novel and have its own character. Novelty is often a problem. Many companies first want to test the waters before incurring the costs to claim their rights. In the European Union it is therefore possible to claim design rights up to twelve months after first disclosure. However this grace term is hard.

When a competitor launches a similar scratching post, Petsbelle demands a ban based on a design registration, filed on March 30th 2018. However, the competitor argues invalidity of this model, as a promotional video of this product was posted on Facebook on 22 March 2017. The application was therefore submitted after twelve months and eight days of disclosure. Novelty is not about the date of first sale, but about the first disclosure. The ban order based on the registered community design is rejected, because the EU model is invalid due to the promotional video.

There’s a lesson to be learned here. No matter how enthusiastic one may be about a new product, beware of online publications before a product is brought to market. Premature publication can prove disastrous when the rights still have to be protected. (Source image: decision rechtspraak.nl)

design-law



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?