Crocs’ EU Design Loss and the Challenge of Protecting Product Shape
A recent decision of the General Court of the European Union dismissed Croc’s appeal from a decision invalidating its EU design registration for its highly recognized clog. Crocs, Inc. v EUIPO, General Court, Case T-228/25.
The Facts
A third party filed an application with the European Intellectual Property Office (EUIPO) for a declaration of invalidity of the EU design registered by Crocs, Inc. for a design for footwear. The initial drawing of the design is set out below:
The third party relied on a design disclosed by a search conducted through the use of the Wayback Machine from April 13, 2003.
The Invalidity Division granted a declaration of invalidity. Crocs appealed that decision to the Third Board of Appeal, which dismissed the appeal. The Board found that the prior design had been made available to the public on April 13 and 14, 2003, before the date of priority claimed in respect of the Crocs design, namely May 28, 2004.
The Decision of the General Court
Crocs then appealed to the General Court, which also dismissed the appeal. The primary issue was whether the Croc’s design had sufficient individual character that the overall impression it produced on the informed user was different from the overall impression produced by the Holey Soles design.
Differences are insignificant in the overall impression produced by the designs when they are not sufficiently pronounced to distinguish the goods at issue in the perception of an informed user or to offset the similarities found between those designs. In the assessment of the individual character of a design, the point of view of an informed user is considered. An informed user is particularly observant and has some awareness of the state of the previous designs relating to the product in question that have been disclosed.
In the present case the Board of Appeal found that the designs in issue depicted a clog with exactly the same shape, featuring a thick sole and a rounded closed toe cap. In addition, the designs featured the identical arrangement of circular holes on the upper surface of the upper cover and the trapezoidal cutouts on the front and side. In the Board of Appeal’s view, the designs produced, to an informed user, the same overall impression.
Crocs argued the Board of Appeal failed to take into account the presence of the heel strap in their design. The Court said that the Board made no error by finding that, while an informed user would certainly notice that strap, it was an element of lesser importance given the overall identical shape of the designs. An informed user might regard the Croc’s design as an alternative version of the prior design and, consequently, that the strap was a minor variation of the same clog depicted by Holey Soles design.
The presence of the strap was classified as a minor difference. The main feature of the clogs, which explains the incorporation of a robust sole and upper cover, is to ensure, among other things, firmness, postural stability, comfort and protection for the toes and the foot. A heel strap attached to the upper cover of a clog was incorporated in an incidental manner.
The Canadian Position
Under the Canadian Act the relevant criteria is novelty. A design is novel if the same design, or a design not differing substantially from it, applied to a finished article that is the same as or analogous to the finished article in respect of which the design is registered, has not been disclosed by any other person, before the priority date, in such a manner that it became available to the public in Canada or elsewhere.
As the concept of novely is relatively new there is no specific decisions on point but a visual examination of the designs should be made looking at the designs as a whole. Features that appeal to the user not because of their visual appeal but only because of their functional advantage should be ignored.
Comment
An industrial design registration may be initially obtained, subject to filing it within one year of the disclosure of the design, to protect product shape or appearance but the term of protection is limited to 10 years. After the shape or appearance has become distinctive, a trademark, consisting of a three dimensional shape, may be registered. Crocs has obtained such a registration in Canada for its design. One important advantage of obtaining an industrial design registration is that it can be protected through an action for infringement without having to show secondary meaning associated with the design.
The requirement for novelty adds some uncertainty to protecting industrial designs because the existence of a “ design not differing substantially from” the applied design, which can result in invalidity, can exist anywhere in the world.
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John McKeown
Loopstra Nixon LLP.
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This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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