Croc has lost the community design protecting its famous rubber clogs. This time it was the General Court of the European Union (“GCEU”) that confirmed the European Union Intellectual Property Office (“EUIPO”) decision to refuse registration of the eminently famous Crocs designs considering that it was not a “new” design. We should recall that there are two requirements for a design to fulfil the conditions for obtaining protection, namely, novelty and individual character.
Regarding its novelty, the Crocs case serves to warn us yet again that the design protection strategy should be devised in advance with extreme care because, as has occurred in the case in question, the company itself can actually destroy the novelty of its own designs and as a result, the possibility of obtaining exclusive rights therein.
And this is what has happened to Crocs. The EUIPO had already held in favour of Gigi Diffusion in the invalidity procedure it filed against Crocs Inc. considering that the famous clog failed to comply with the need for novelty required of all industrial designs. The GCEU has now confirmed the EUIPO’s decision, focusing on the concept of “disclosure”. According to the Community Design Regulation, a design has been disclosed “if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing (or priority claimed), except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”.
When applying this precept, it is necessary to take into account that, in any case, disclosures made during the 12 months prior to the date of filing the design application do not infringe that novelty. The law’s purpose is clear, namely to grant applicants a margin within which to test the market, in order to decide whether it is worth investing in registration of their designs.
In this case, the evidence submitted appears to demonstrate that the Crocs design was disclosed long before it was filed (22 November 2004), having duly attested that Crocs had already placed the product on the market through its own website in 2002. As such, the previous disclosure meant that the product lacked novelty, and based on the failure to comply with this requirement, the EUIPO proceeded to declare cancellation of EU design no. 257.001, a decision which has now been confirmed by the GCEU. It remains to be seen whether Crocs will decide to take its case to the CJEU, or finally relinquish its claim.