CROCS SHOES: INVALIDITY OF THE DESIGN REGISTRATION
On 14 March, The General Court of the European Union has confirmed that the design registration of the Crocs’ footwear design is invalid due to a lack of novelty. Crocs failed to demonstrate to have not pre-disclosured the design.
On 22 November 2004, Western Brands filed an application to OHIM (now EUIPO) to register a footwear design, claiming the priority of the US application filed on 28 May 2004. The design was thus registered as Community design on 8 February 2005, and then transferred to Crocs on 3 November 2005.
In 2013, a French company called Gifi Diffusion requested EUIPO to invalidate Crocs’ design for a lack of novelty, stating that it was disclosed before the 12-month period preceding the priority date (that is, prior to 28 May 2013). In fact, a design can be protected in the EU if it wasn’t disclosed to the public before the 12-month period preceding the priority date.
On 13 February 2014, the Invalidity Division of EUIPO dismissed Gifi Diffusion’s application, because the prior disclosure had not been demonstrated.
On 27 March 2014, Gifi Diffusion filed a notice of appeal against decision of the Invalidity Division, demonstrating that the design was disclosed prior to 28 May 2013 on three occasions: on Crocs’ website; at a boat show in Florida and by putting on sale shoes with that design in a consistent number of American states. For these reasons, the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision, declaring the design invalid. Crocs appealed against the decision, stating that disclosure events could not reasonably have become known to the footwear industries in the EU, during their normal business.
With its decision, on 14 March 2018 the General Court has nevertheless assumed that Crocs failed to prove both that the website could not be found by footwear producers operating outside the USA and that they were not aware of the international boat show in Florida. The Court also affirmed the sale of footwear of that design was also carried out in a manner which could not have gone unnoticed by the Union’s specialised circles.
These three observations led the Court to consider EUIPO’s findings to be correct and, therefore, to dismiss Crocs‘ appeal.