Following an application by competitor DAWGS, the footwear manufacturer Crocs was recently hit with a decision by the US Patent & Trademark Office (USPTO) to cancel the design patent for the shape of its classic clog design on the basis that this was anticipated by Crocs' own earlier marketing of the product. In the summer of 2016 Crocs was on the receiving end of a similar decision from the EU Intellectual Property Office's (EUIPO) Board of Appeal involving its corresponding EU design registration, brought by the French budget homewares brand GIFI.
Crocs sought protection for its design in the US and EU in May 2004, some 18 months after its initial marketing of the product. In assessing the validity of the US registration, the examiner refused to recognise a claimed priority right dating back to June 2003. This date would have been within the 12-month grace period allowed for registration following disclosure, so its recognition could have led to a finding that the registration was valid. Instead, as the product marketed by Crocs was identical to the protected design, the rejection of the priority claim effectively sealed Crocs' fate.
In the EU case, Crocs had argued that its disclosures in the US were sufficiently obscure that they could not destroy the novelty of, and so invalidate, the EU design. Under EU law a disclosure can only be disregarded for novelty purposes if it "could not reasonably have become known to the circles specialising in the sector concerned, operating within the [EU]."
The evidence showed that Crocs first disclosed the design at a boat show in Florida in November 2002. Around that time it also sold ca. 10,000 pairs of clogs to customers in Colorado and Florida and publicised the design on its website www.crocs.com, which was then targeted only at US customers.
The EUIPO's Board of Appeal disagreed with Crocs' argument that these disclosures were obscure, noting that the use was for a commercial purpose, the volume of sales was significant and the fact that the show at which Crocs disclosed its design was a boat show, not a footwear show, was not relevant. After all, the evidence showed Crocs' launch had been a 'smashing success'. In the Board's judgment Crocs' US marketing of the design in late 2012 could readily have become known to footwear specialists in the EU. The disclosures could therefore not be disregarded for novelty purposes and the EU design was invalid.
Crocs' difficulties highlight the importance of applying to register a design while it is still new. In the EU, registered designs are quick and inexpensive to obtain, but they are enforceable only if the application is filed less than 12 months following first disclosure to the public. In some non-EU territories there is no grace period for disclosure at all. It is essential to consider your IP protection strategy at an early stage, and preferably before launching the product on to the market or otherwise publicising details of the design anywhere in the world.
Note: Both the EUIPO Board of Appeal and the USPTO's decisions have been appealed, and the designs remain valid and enforceable during the respective appeal procedures.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
