A recent decision by judges in Luxembourg has seen Crocs, the manufacturer of plastic shoes, lose its battle to protect its design from copycats.
Judges backed a decision by the EU Intellectual Property Office in 2016, which stated the registration was invalidated based on prior disclosure on Crocs’ US website; at the Fort Lauderdale Boat Show in the US; and by means of sales of the shoes in the US.
First, there was no requirement for prior disclosures to have taken place in the EU in order to provide a basis for invalidity.
Secondly, the Court rejected Crocs’ argument that the EU trade would not have been aware of the disclosures in the US.
Although a prior disclosure is only relevant if it could reasonably have become known in the EU in the normal course of business in the specific sector, the Court found that the EU shoe trade would have become well aware of Crocs’ emergence and ‘smashing success’ in the US.
Crocs applied to register their design in the US in May 2004 and in the EU in November 2004, where it was registered in February 2005 with an expiry date of 2029.
In 2013, a competitor, Gifi Diffusion, filed an invalidity action on grounds of lack of novelty, claiming that the design had been disclosed by Crocs more than 12 months before the original US filing date.
The case highlights the importance of taking advice on EU protection at an early stage, to avoid the risk of losing rights.
In particular, both registered and unregistered EU rights can be lost if products are first exhibited or sold outside the EU. It also highlights that competitors restricted by IP registrations in the EU can seek invalidation at any time if grounds emerge.