Is it ok to share new product photos before filing a registered design application?

Posting new product images on social media too early could cost your business its design rights.

A design right protects the shape, configuration or appearance of a product to prevent others from making products that look alike.

To obtain registered design protection in the UK, the design or product must be new and have individual character. It won’t be considered new if the design – or a similar one – has already been disclosed to the relevant market.

Example case: Rihanna and Puma

In 2014, Rihanna partnered with Puma as creative director and brand ambassador. In her Instagram post announcing this collaboration, she wore a pair of Puma’s new trainers. In 2016, Puma filed a registration for a community design for the same style trainer.

Note: when the UK’s Brexit transition period ended on 1 January 2021, registered community designs (RCDs) and unregistered community designs (UCDs) were no longer valid in the UK. These rights were automatically replaced by UK equivalents. Post-Brexit, brands seeking to protect designs in both the UK and EU must register them separately – a UK registered design via the IPO, and an RDC via the EUIPO. This example discusses RCDs, but the same principles apply to UK registered designs.

In 2019, Handelsmaatschappij J. Van Hilst BV filed an invalidity action against Puma’s registered design, arguing it lacked individual character due to earlier disclosure. The Invalidity Division agreed in 2021 and cancelled the registration.

Rihanna’s Instagram posts were heavily relied upon in the proceedings. Three posts showed enough detail for the shoe’s design and features to be recognised, including different profile views, the thick sole with vertical lines and the seven-hole thick laces, which were all included in the registration.

The Registered Designs Act 1949 provides a 12-month grace period from self-disclosure to file an application for registration, which did not occur. Under this act (and the corresponding EU regulation), the court had to assess whether the design was published or used in trade in a way that it could have become known in the relevant sector.

In this instance, Rihanna is a well-known artist and the general public would notice what she wears, especially when announcing a Puma partnership. The design features were recognisable in her photos, therefore become known in the relevant market – the fashion industry.

It’s a strictly objective test. Was the new design disclosed to the relevant industry outside the grace period? If yes, you lose the right to register the design.

So, is it ok?

No. This case shows that disclosure of new products must be carefully monitored. The timing of this disclosure matters and the actions of celebrity influencers, employees or collaborators are not excluded from the grace period rules.

Ensure your company’s IP policy includes clear instructions on what can or cannot be disclosed. Best practice is to keep new products secret until registration is filed. However, if disclosure is permitted under your intellectual property (IP) policy – or happens without your permission – you should have a reporting system supervised by legal advisors. This is vital to protect your position and act on registrations accordingly.

As this case highlights, it’s the fact of disclosure that matters – not whether the individual was authorised to make it.