Nike’s Design Setback As Its Own Earlier Patent Invalidates Its EU Design Registration

The Invalidity Division of the European Union Intellectual Property Office (EUIPO) ruled against Nike Innovate C.V. to invalidate one of its registered Community designs, following a challenge by Italian designer, Alfredo Langella. Langella argued that Nike’s design, which covered a lateral strap-like component of the Air Huarache Run Ultra sneaker, lacked individual character in light of Nike’s own earlier patent (US patent No. D330,452) for a similar strap-like component on the Air Flight Huarache. This decision reaffirms that a design must be sufficiently distinct from prior disclosures, even those originating from the same proprietor.

Langella claimed that the differences between the designs were minimal and amounted to mere technical adaptations to the base shoe model, rather than being novel creative elements. Nike countered that the design differed from the earlier patent, as it covered only the lateral strap-like element rather than an entire shoe upper, further arguing that the footwear industry is so highly saturated that even minor design variations (such as these) were sufficient to create a different overall impression on the informed user. However, the EUIPO ultimately concluded that Nike’s designers had significant creative freedom, and the core shape of the contested design was too similar to the prior patent. As a result, the contested design was invalidated under Article 6(1)(b) of the Community Design Regulation – for lack of individual character, as the EUIPO found that it failed to create a different overall impression on the informed user.

This decision aligns with the EUIPO’s broader objective of preventing the expansion of patent protection (which lasts 20 years) through design rights (offering protection for up to 25 years). It serves as a significant precedent for rights holders managing patent and design portfolios, highlighting the risk of self-collision, and the centrality of careful and strategic IP portfolio management (particularly in industries with extensive design histories). Nike’s failure to sufficiently differentiate the contested design from its earlier patent ultimately led to the invalidation of its design. The decision can be appealed at the EUIPO Board of Appeal but serves as a cautionary tale for fashion and footwear brands navigating design protection in a competitive and saturated market.

The Contested Design:

Image taken from the design registration:

Image of the Contested Design as embodied in Nike’s Air Huarache Run model:

The Earlier Patent:

Image taken from the patent document:

Image of the Earlier Patent embodied as Nike’s Air Flight Huarache model: