26th April 2018
The iconic Crocs footwear brand has suffered a blow, in the form of the General Court of the European Union’s ruling that the Registered Community Design (RCD) for its well-known shoe is invalid.
The court ruled that, due to prior disclosure by Crocs of its design, its RCD was invalid. In most jurisdictions, a designer can disclose its design to the public and it still carry the necessary criteria of novelty if the application for the RCD is made within 12 months of first disclosure.
In this instance, when making its European application for the RCD, Crocs had relied on a priority period of May 2004 from a US design. Unfortunately for Crocs, the court considered that Crocs had disclosed its design prior to May 2003 (the earliest it could have disclosed and remained within the 12-month grace period).
Crocs had sold the shoes in the US through distributors, published the design on its own website and displayed the shoes at a boat sale in the US in 2002. The company argued that this disclosure was limited to the US and this therefore meant it could still rely on the 12-month grace period.
The court did not agree, commenting that emerging fashion in the US was unlikely to escape the attention of EU designers and manufacturers and that Crocs' website was accessible worldwide, not just from the US. As such, there had been disclosure prior to the grace period and the RCD was invalid.
This case serves as a timely reminder to designers to keep their designs under wraps until an application for design rights protection has been made, and to never assume that limited disclosure in one jurisdiction will not constitute disclosure in another.
For further commentary on the General Court of the European Union’s decision, or to discuss any intellectual property issues, please contact Thrings’ commercial litigation and IP partner, Megan Jefferies.
You can also read our 'Guide to Protecting your Designs' for more information.