Marks & Clerk’s Inès Garlantezec was featured in both World Trademark Review and World IP Review following a significant EU General Court decision involving PUMA, which failed in its attempt to invalidate a competitor’s trainer sole design. The ruling confirmed that a design’s commercial success or trend-setting status does not entitle it to broader legal protection, with the court finding that the competing design created a sufficiently different overall impression despite sharing certain design features.
Commenting on the decision, Inès highlighted that the judgment serves as an important reminder that brands cannot rely on their status as market leaders or trendsetters to secure enhanced protection for design rights. She explained that the legal assessment of a design’s individual character is independent of its popularity or commercial success, and instead turns on whether the overall impression created by the design differs from prior designs. As Ines noted, competitors remain free to draw inspiration from broader design trends provided their products create a sufficiently different overall impression.
Inès also explored the practical challenges the decision creates for brand owners. While courts may identify sufficient differences between designs from the perspective of an informed user, those distinctions can feel far less significant to brands seeking to protect key design elements. She observed that achieving the right balance between protecting distinctive brand features and preserving freedom for competitors to innovate around existing trends is often "deeply frustrating" in practice, particularly where features regarded by a rights holder as minor alterations are sufficient to avoid infringement or invalidity.
Across both publications, Inès emphasised the importance of a broader IP protection strategy. Rather than relying on market influence or trend leadership, businesses seeking to enforce design rights should focus on identifying specific visual similarities between competing products and consider how different forms of IP protection can work together to safeguard valuable brand identifiers. The coverage highlights the growing complexity of design protection in fast-moving sectors such as fashion and footwear, where the distinction between protecting innovation and allowing competition remains a key challenge for businesses and rights holders alike.
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