EU Court Rules Against Crocs Design Protection

  • Trademark Clearance

The EU General Court has dismissed US-based shoe company Crocs‘ appeal against the EUIPO to cancel legal protection of its shoe design. The court ruling upheld a 2016 EUIPO decision that had declared the Crocs’ design registration invalid because it lacked novelty.

In 2013, French company Gifi Diffusion filed an application with the EUIPO contesting Crocs’ EU design registration, basing it on the EU rule that a design cannot be made public more than one year before filing. Gifi claimed that Crocs first showed its design in 2002 — two years before filing its design mark in the United States.

The following year, EUIPO’s Invalidity Division dismissed Gifi Diffusion’s request due to lack of proof that Crocs had released the designs prior to the required time period. Gifi Diffusion went on to provide more evidence and in 2016 the Crocs design was ruled invalid.

In a statement to Footwear News responding to the ruling, Crocs said: “The decisions are not final and Crocs is considering further appeal options where appropriate. One decision relates to the decision-making procedures of the EU IP Office and does not call into question the Registered Community Design at issue. The second decision relates to validity challenges against a legacy Registered Community Design which have been ongoing for the last ten years. Crocs’ business has not been significantly impacted by this ongoing issue during that period and it is not expected that the latest decision will have any immediate material adverse consequences for Crocs.” The statement also noted that Crocs’ Registered Community Designs are valid and enforceable during the appeals process.

There’s other IP news related to Crocs coming out of Ecuador. In its largest anti-counterfeiting effort ever, the Ecuadorian IP Office recently seized nearly 40,000 imitation Crocs items, including shoes and packaging. The action followed Crocs’ filing of an administrative infringement action in Ecuador, which sought and won an injunction against infringement of its registered marks there.