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The last snap for Crocs

Written by Samuel O'Toole on 15 March 2018

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The General Court of the European Union has confirmed that Crocs’ registered community design is to be cancelled because it was available to the public before registration.

A registered community design is only to be protected on the basis that it is new and has individual character.  Therefore, if a design has been made available to the public during the 12 months preceding the priority filing date the design will not be regarded as new and will not be afforded protection. Certain exceptions do apply, in that if the design was made available, but could not have become known to those specialised in the sector, the design will be afforded protection.

Western Brands LLC (Western) filed a design application at the European Union Intellectual Property Office (EUIPO) on 22 November 2004, for the design of a Crocs clog. The important bit is that the application claimed the priority filing date of a US design patent of 28 May 2004. This date is particularly important as if there was a material disclosure of the design 12 months prior to this date the design should not be granted protection.

On 08 February 2005, Western was granted a registered community design for the application. Subsequently the registered design was transferred over to Crocs, Inc.

In 2013, things began to go south for the registered design.  A French company, Gifi Diffusion (Gifi), filed an application to have the Crocs design registration declared invalid. Gifi claimed that the Crocs design registration lacked novelty, in that it had been disclosed before 28 May 2003 i.e. before the 12 month priority period of the US design patent from which the priority filing date of the EU design application was claimed.

The EUIPO went on to hear the application of invalidity and on 06 June 2016 a decision was made. The EUIPO found that the design should be declared invalid on the basis that the design had been disclosed before 28 May 2003, therefore the design could not be said to be ‘novel’.

The EUIPO has stated that there were a number of different disclosures, namely on the Crocs website, at a boat show in Florida, and the Crocs clogs were also on sale before 28 May 2003.

Crocs went on to appeal the decision. It was claimed in the appeal that the disclosure via the Crocs website related to events that could not have reasonably become known to those specialised in the sector. Interestingly, Crocs did not dispute the disclosures of the designs.

The General Court went on to dismiss Crocs appeal, meaning that the EUIPO’s decision to declare the design invalid still stands.

However, things may not be over for Crocs quite yet.

Crocs is also the proprietor of EU trade mark number: 006543516. The mark “The mark consists of the shape of an article of footwear incorporating a logo featuring a stylised crocodile. The representations (6 in total) show and article as worn on the right foot.” I.e. the trade mark is a 3D image of a Crocs clog.

But, this trade mark, much like the design is subject to invalidity proceedings too. Whilst these proceedings are ongoing and in fact the status is: registration cancellation pending, there may be a chance that this trade mark is the saving grace for Crocs. In that if the registration is saved from the invalidity proceedings Crocs may be able to use the trade mark to prevent third parties from using the Crocs clog design.

Trade marks are not subject to many of the strict requirements that designs are subjected to. There is no requirement for a trade mark to be novel, meaning that issues regarding disclosure are not a threat for Crocs. However, shapes that consist exclusively of the shape, or another characteristic, which results from the nature of goods themselves are not to be registered trade marks.

Meaning that there is probably a good chance that there may be an imminent influx of knock of Crocs coming your way. No doubt, some people (ihatecrocsblog.com) will be happy.

If you'd like to know more about this article please send an email to Michael Coyle quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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