Crocs lost its EU design for…. Crocs
We all know those shoes in plastic which come in all colours and are easily recognisable: the Crocs.
But they lost their EU design after five years of proceedings.
In 2004, the company Western Brands LLC filed an EU application to protect their design. On 8 February 2005, the EUIPO accepted the registration of this design. Later this year, the design was sold to the company we know: Crocs.
Several years later, the French company Gifi Diffusion filed an application for a declaration of invalidity of the design. To win this type of proceedings, the claimant has to prove that at least one of the conditions to have a design granted was not fulfilled.
To be granted protection, a design has to be new and has to have individual character at the time of filing. A design will still be considered as new only if it was disclosed not more than a year before the filing of the application.
Gifi, the claimant, claimed that the design at the time of filing in 2004 was not new because it was disclosed more than a year before the filing of the application, i.e. before 2003. The claimant provided proof that the disclosure took place at an international exhibition in Florida, the shoes were also for sale on Crocs’ website. This evidence dated back to 2002.
In 2014, the Invalidity Division dismissed the application for a declaration of invalidity considering that the proof was not sufficient.
The claimant appealed, provided further evidence which was accepted and won the proceedings.
Crocs, which lost its EU design appealed to the EU General Court and lost. The Court considered that the design was disclosed before the grace period. The Court has explained that the disclosure does not have to be in the EU to be relevant. Moreover, Crocs did not contest that those three disclosures happened.
Therefore, as the condition of novelty was not fulfilled at the time of filing, the design has been declared invalid.
If you would like further advice in respect of protecting your design in the UK and the EU, please contact our patent team at Dolleymores.