Court of Venice, Decision of 15 February 2012, Crocs, Inc. v. Supermarket Della Calzatura sas. and Progetti srl.

The Court of Venice dismissed Crocs' trademark infringement claims against two distributors of similar shoes. As the shape of Crocs' well-known shoes provided substantial value to them, they were not eligible for trademark protection.

Crocs had launched a proceeding before the Court of Venice against Supermarket Della Calzatura and Progetti, claiming that they sold shoes whose shapes infringed its Italian three-dimensional trademark for the "shape of a clog" (no. 1166137).

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Supermarket Della Calzatura and Progetti objected that the particular shape gave substantial value to Crocs' shoes and that the trademark was, therefore, void. Crocs' own marketing campaigns aimed at focusing the consumer's attention on the particular shape of the shoes, using slogans such as "ugly can be beautiful". Thus Crocs themselves induced the consumers to buy the shoes only for their particular shape.

Crocs replied that the substantial value of a shape could not be conferred by an advertising campaign but needed to be related to the product. Moreover, the "ugly" or "funny" shape of the shoes was not aesthetically attractive for the relevant consumer and therefore did not provide substantial value.

The Court of Venice agreed with Crocs that the substantial value of a shape was related to the product and did not depend on advertising campaigns. A substantial value was conferred by a shape if it determined the commercial success of a product by being the sole reason why the product was bought. A shape which gave substantial value to a product did not need to be beautiful. The only relevant element to consider, so the court, was the capability of the shape to attract consumers and influence their commercial choices.

The court found that the primary function of the particular shape of Crocs' shoes was not to enable the consumer to identify the product's origin but to add attractiveness. Accordingly, the unique shape conferred substantial value to Crocs' shoes. Therefore, the trademark had to be declared void. Consequently, the court rejected the claim for trademark infringement.

However, the court stated that the sale of the shoes by Supermarket Della Calzatura and Progetti amounted to an unfair competition practice as the shape of the shoes resembled entirely the shape of Crocs' shoes.

As a result, the court granted Crocs' injunction preventing Supermarket Della Calzatura and Progetti to sell the shoes.