Footwear brand Crocs has lost design protection for its plastic clogs in Europe after a court ruling.
The General Court of the EU has ratified the EU Intellectual Property Office’s decision to revoke the EU-wide design protection Crocs obtained in 2005.
The decision has come after French retailer Gifi applied to invalidate the protection because Crocs was not quick enough to register the design.
Crocs was undone by making the design public more than 12 months prior to making its first application in Europe.
The General Court noted Crocs did not dispute that it had displayed the design on its website and at a trade fair in Florida prior to the 12-month ‘grace period’.
Crocs unsuccessfully argued the unveiling of its design could not have become public to rivals operating in the EU footwear industry.
The General Court stated “there is no requirement for the events constituting disclosure to have taken place within the EU”.
David Paton, senior associate and registered designs specialist at intellectual property firm Withers & Rogers, said: “This is a straightforward case of an early disclosure by Crocs invalidating their subsequent design registration, and it is being made to pay the price.
“It is significant that under EU law, the design owner is allowed a grace period of 12 months following first disclosure to file a registered design application. Crocs left it too long to seek protection.
“In the fashion world, catwalk copying is rife and it is not uncommon for high-end designs to be tweaked and mass produced by high-street retailers. If the designers have obtained registered design rights to protect the unique look and feel of their garments, they may have some right to redress in these circumstances.”
John Coldham, director at law firm Gowling WLG, added that losing design protection can be even easier outside of the EU.
“Europe is surprisingly lenient, giving you a year to register your design after your first disclosure, whereas other parts of the world do not give any leeway at all.”
A spokeswoman for 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.
“It’s important to remember that the Registered Community Designs at issue remain valid and enforceable during the further appeals process, which can take many years to complete. Throughout, Crocs will continue to be a world leader in innovative casual footwear, inspiring our customers to express their one-of-a-kindness and to be comfortable in their own shoes. We will continue to aggressively enforce our intellectual property portfolio against those who unfairly trade on Crocs’ goodwill and reputation, and we remain unapologetically optimistic about our present and future.”