April 2024 Newsletter

A bit of a soggy start to Spring for us in the UK, but I hope you all managed a good Easter break with your families regardless!

Welcome to the next KC newsletter. In this edition, we cover the latest IP developments affecting influencer marketing, practical tips to ensure the legal review process doesn’t unnecessarily slow down your sales teams, how to ensure compliance with anti-bribery legislation, details on new corporate transparency measures and corporate offences for failure to prevent fraud and finally tips on dispute avoidance.

We hope you enjoy! As always, please contact us should you wish to find out more on any of the featured topics.

For the last ten years, German multinational Puma have worked closely (and very successfully) with global megastar and businesswoman, Robyn Rihanna Fenty (professionally known as Rihanna), to promote the Puma brand, primarily through a range of trainers marketed under the “Fenty x Puma” banner. However, Puma’s attempts to capitalise on the pseudo-authentic, organic nature of influencer marketing has recently backfired in a design rights case heard on appeal by the EU General Court, following an earlier decision at the EU Intellectual Property Office.

Puma were arguably one of the first sportswear brands to tap into the crossover with pop culture fashion. Back in 1997, US rap-metal pioneers Korn, who had already taken to wearing Adidas clothing as their attire of choice, released a song titled A.D.I.D.A.S. Failing to appreciate the potential offered by a collaboration with a multi-platinum stadium rock band, Puma’s long-time arch-nemesis Adidas refused to engage with Korn on any formal basis (allegedly informing the band “Adidas is a sports company. We do sports, not music”). This provided Puma with the opportunity to swoop in and offer Korn an endorsement deal reportedly worth half a million dollars, in return for which the band would ditch their Adidas stripes in favour of the pouncing Puma.

Nowadays, the use of celebrity endorsement by way of “influencer marketing” is invariably a core element of any brand strategy. Not only is it an efficient way to reach a huge audience through limited channels, but recent studies have also suggested that 69% of the general population trust product recommendations from influencers. With social media providing users with unprecedented access to the lives of celebrities, the implied authenticity of a pop icon showing themselves enjoying a casual coffee with friends while sporting the latest high fashion handbag is worlds away from a heavily stylised, glossy image replete with branding, plastered on a billboard.
Puma continue to embrace the access to the broader market demographic afforded by working with high profile musicians and artists. Rihanna, widely regarded as one of the most prominent recording artists of the 21st century, with a global business empire and a reputation as a fashion trailblazer, boasting over 150million followers on Instagram alone, is the perfect ambassador.

In 2016, Puma submitted an application to register one of the Fenty x Puma shoes as a Community design. A prerequisite for registration of a Community design is that the design must not have been made public prior to submission of the application for registration. HOWEVER, there is a one year grace period which allows for public disclosures made by the designer (or their “successor in title”), to be disregarded as long as an application is filed within 12 months from the date of the first public disclosure. The rationale for this grace period is to allow designers to “test” a design on the market before investing in the costs of registering the designs.

A Dutch children’s shoe wholesaler, Handelsmaatschappij J. Van Hilst, made an application to invalidate Puma’s registration on the basis that the design was first made public in December 2014 (so more than one year prior to submission of the registration application) when Rihanna posted a photo to her official Instagram account of her wearing the shoe design, on the day she was appointed Puma’s Creative Director. This image was reproduced by several online news outlets reporting on the collaboration.

The EUIPO found that the images posted made it possible to identify all essential features of the design. Despite the very essence of Puma’s collaboration with Rihanna being mass exposure of their products through her platform, Puma attempted to argue that nobody took an interest in Rihanna’s shoes at that time and therefore no one perceived the prior design in December 2014. Unsurprisingly, the EUIPO rejected this rather disingenuous position and the invalidity application was upheld.

A key takeaway from this case for all rightsholders is to ensure that, when devising a product marketing strategy, specialist brand protection advice is sought from the legal experts.

Legal can be seen as a “hold-up” in the sales cycle and KC is often asked to provide guidance on how to build efficiencies in the legal review process. Here are a couple of practical tips:

At KC, we have worked, and continue to work, with many clients across multiple industries, supporting their sales efforts. If you wish to speak to us about how we can help your business, please contact us.

In today's global business environment, adherence to the Bribery Act is a cornerstone of ethical operations for both UK and international enterprises. This significance is magnified by the introduction of The Economic Crime and Corporate Transparency Act 2023, which enhances the legal framework against bribery by adding the offence of failing to prevent fraud (more on this in the article below!)

The Economic Crime and Transparency Act (ECCTA) received royal accent late last year (2023) and introduces new measures with the purpose of improving corporate transparency and tackling corporate crime. The ECCTA amends the Companies Act 2006 and other laws, which are being introduced on a piece-meal basis and will come into effect over the next year and a half, to improve the UKs broader response to economic crime.

In the dynamic business landscape, disputes are an inevitable part of business life. They can come with significant costs, not just financial but also in terms of management time and stress, impacting the overall wellbeing of your business. At KC, our mission is to safeguard your interests by helping you manage disputes effectively and making the right judgment call: steering you away from the pitfalls of unnecessary and risky litigation, resolving issues early and efficiently and (where necessary) working with appropriate law firms and/or barristers to enforce your rights effectively through the courts.