In this instalment of “A View from Afar,” I analyse a recent decision by the European Union Intellectual Property Office (EUIPO) that highlights the fine like between innovation and iteration. This case, centred on a pair of “training shoes” involving sportswear giant PUMA SE (the “invalidity applicant”) against Trios (Dongguan) Technology Co., Ltd. and Beijing Xiaomi Mobile Software Co., Ltd., (the “design holders”) offers a compelling glimpse into the evolving landscape of design law. From this vantage point, I provide insights into how “distinctiveness” under the design law is assessed in consumer goods, particularly within the competitive footwear industry.
At its core, the dispute was a quintessential battle over “individual character” wherein new designs create a different overall impression on an “informed user” compared to existing designs. The invalidity applicant sought to invalidate the Registered European Union Design (REUD) No. 8 143 762-0001 for “training shoes,” filed and registered on August 24, 2020 (the “contested REUD”), with priority claimed from a Chinese design application filed on February 28, 2020 arguing it lacked the individual character from its own prior art, which included specific sole designs and complete shoe models amongst others.
The case commenced when the invalidity applicant initiated invalidity proceedings at the Invalidity Division of the EUIPO asserting that the contested REUD failed to meet the “individual character” requirement. However, the EUIPO’s Invalidity Division rejected the invalidity applicant’s application with the reasoning that the contested REUD presented a sufficiently different overall impression compared to the cited prior designs. Dissatisfied with this outcome, the invalidity applicant swiftly filed an appeal against this decision, bringing the case before the Third Board of Appeal.
The invalidity applicant in appeal vehemently argued that the contested REUD and its prior art shared similarities, particularly, the perceived prominence of the mid-sole, its unique form and texture akin to polystyrene (a synthetic resin), that an informed user would readily notice and associate across designs. They contended that, given the designer holder’s broad freedom in footwear aesthetics, the similarities pointed to a lack of individual character.
Conversely, the design holders espoused a more holistic view. They emphasized that their design was for the entire “training shoe,” not merely a sole, and highlighted numerous differentiating elements across the vamp (the upper front part of the shoe), heel, and under-sole. For instance, they pointed to the distinct patterns on the vamp and the overall unique shape of the upper itself, which diverged significantly from the invalidity applicant’s cited designs. Furthermore, they underscored the specific boundary and ridge lines visible on the lower portion of their shoe, particularly around the heel and sole interface, creating a visual articulation absent in the prior art. Lastly, they drew attention to the unique geometric elements prominently featured on the under-sole, forming a distinct pattern that clearly set their design apart from the simpler or absent patterns on the bottom of the invalidity applicant’s cited designs. They further argued that some shared features, like the textured mid-sole, were often dictated by technical material properties which are common in the industry, thus carrying less weight in the overall impression.
The Board of Appeal (Board) after perusing the arguments on record of the contesting parties, dismissed the invalidity applicant’s appeal, effectively upholding the contested REUD. The Board’s reasoning hinged on a more holistic assessment of the contested REUD’s “overall impression.” It held that, despite the invalidity applicant’s arguments regarding shared features like the mid-sole, the contested REUD, when viewed as a whole, did not produce the same overall impression on the informed user as the prior designs invoked. This finding underscored the subtle yet significant differences present in the complete shoe design, particularly concerning elements like the upper, heel, and under-sole, which collectively outweighed the asserted similarities.
The Board of Appeal’s decision formalized these findings by ordering the invalidity applicant to bear the costs incurred by the design holders in the appeal proceedings.
Author’s Note
While the present case was adjudicated before the EUIPO under European design law, a comparable dispute involving an industrial design of footwear would be addressed in India through design cancellation proceedings before the Indian Designs Registry, governed by the Designs Act, 2000. Indian design law provides robust mechanisms for protecting novel and original designs, ensuring they are capable of being visually appealing and applied to an article.
In such a parallel scenario, had the invalidity applicant sought to challenge a similarly contested design in India, it could have initiated cancellation proceedings under Section 19 of the Designs Act, 2000. Grounds for such cancellation could include:
- Section 19 (1) (b): arguing that the design has been published in India or in any other country prior to the date of registration, which mirrors the “prior art” concept discussed in the EUIPO case.
- Section 19 (1) (c): contending that the design is not a new or original design, which aligns with the “individual character” requirement in EU law, focusing on the distinctiveness of the overall visual appearance.
- Section 19 (1) (d): asserting that the design is not registrable under the Act, encompassing that the contested REUD does not meet the definition of a “design” as defined under section 2(d) of the Designs Act, 2000.
The cancellation process would require the invalidity applicant to present compelling evidence of prior publication or lack of originality, particularly in the form of pre-existing designs, market presence, or other relevant documents. If successful, the Indian Designs Registry could order the cancellation of the conflicting design, safeguarding the rights of a genuine innovator.
A recent example illustrating this interplay of design protection and cancellation in India can be found in Paresh Ajitkumar Kapoor v. Controller of Patents and Designs decided by the Calcutta High Court in 2024. The Appellant, Paresh Ajitkumar Kapoor, is engaged in the design, manufacture, sale, and export of industrial air coolers. His design, registered in India under Design No. 233559 on December 27, 2010, in Class 23-04, became the subject of a cancellation petition filed by Private Respondent No. 3. The Respondent relied on a prior Chinese design registered by Ningbo Chenwu Humidifying Equipment Factory (Design No. ZL200930131277.8, dated January 6, 2010), contending that the Appellant’s registered design lacked novelty and originality due to this earlier registration.
Accepting the Respondent’s arguments, the Deputy Controller of Patents and Designs, by an order dated April 12th, 2023 (the “impugned order”), cancelled the Appellant’s registration. The cancellation was based on the finding that the overall features of shape and configuration in the Appellant’s design were substantially similar and similarly arranged as those in the prior Chinese registration. Aggrieved, the Appellant challenged the impugned order by filing an appeal under Section 19(2) of the Designs Act, 2000 before the Calcutta High Court.
In appeal, the Calcutta High Court held that mere registration of a design in a foreign jurisdiction, such as China does not, by itself, constitute valid grounds for cancellation under Indian law. The Court emphasized that prior publication, and not foreign registration alone, determines invalidity of a design registered in India. Crucially, it found that the impugned order lacked adequate consideration of whether the Chinese design had actually been made publicly available in a manner that would constitute prior publication. Moreover, the Court noted deficiencies in the evidentiary record, such as the absence of verified translations and a failure to assess whether the Chinese registration had been disclosed in a form accessible to the public.
In essence, the decision reinforces that Indian design law offers substantive protection for registered industrial designs, while also clarifying the evidentiary threshold under Section 19 of the Designs Act, 2000. The Court’s judgment makes it clear that international design registrations do not automatically jeopardize Indian registrations unless actual prior disclosure is convincingly established.
At R K Dewan & Co., a Industrial Design Law Firm in India, we offer strategic counsel and representation in matters involving Design Cancellation under the Designs Act, 2000. Whether you’re defending a registered industrial design or seeking to invalidate one based on prior publication or lack of originality, our team combines deep legal expertise with technical insight. We handle every stage—from filing cancellation petitions before the Indian Designs Registry to representing clients in appellate proceedings. With a strong command of both Indian and international design law, we help businesses navigate the evolving landscape of industrial design protection. Partner with us to protect your design innovations with precision, experience, and strategic foresight.
Source: https://www.linkedin.com/pulse/view-from-afar-footnotes-innovation-euipos-judgment-shoe-dewan-2fmhf/