Crocs design registration cancelled

Crocs’ EU design registration has been cancelled because it was made available to the public before its registration.

On 22 November 2004, Western Brands LLC applied for the registration of a footwear design with the European Union Intellectual Property Office (EUIPO), claiming the priority of a US design patent application filed on 28 May 2004. The design was registered as a Community design on 8 February 2005, and was transferred to Crocs on 3 November 2005.

In 2013, French company Gifi Diffusion filed for a declaration of invalidity of the design with EUIPO, claiming that it lacked novelty due to having been disclosed prior to 28 May 2003, that is to say prior to the 12-month period preceding the date of priority claimed.

EU law provides that a Community design is to be protected to the extent that it is new and has individual character. A design will not be regarded as new if, inter alia, it has been made available to the public during the 12-month period preceding the period of priority claimed, except where the disclosure could not reasonably have become known to the circles specialised in the sector concerned, operating within the EU.

The EUIPO agreed with Gifi and subsequently declared the design invalid. According to EUIPO, disclosure took place by means of (i) display on Crocs’ website (ii) exhibition at a boat show in Fort Lauderdale, Florida (United States); and (iii) the fact that the clogs to which the design had been applied were available for sale.

Crocs lodged an appeal against that decision before the General Court of the European Union, submitting that the website disclosures of the design concerned events which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU.

The General Court dismissed the action brought by Crocs, confirming that the EUIPO made no error in finding that with the three disclosure events, at least taken as a whole, the contested design had been made available to the public prior to 28 May 2003.

In addition, the General Court found that Crocs failed to demonstrate that the three disclosure events established by EUIPO could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU.