The General Court of the EU confirmed the cancellation of the registration for the famous design of Crocs clogs on the ground that it was disclosed to the public more than twelve months preceding the priority date.
The facts
The predecessor to the Crocs company filed a Community design for shoes on 22 November 2004. It claimed priority as from 28 May 2004, application date for a US patent by Crocs.
In 2013, the French company Gifi brought invalidity proceedings before EUIPO, claiming that the design was not novel as it had been disclosed to the public before 28 May 2003, i.e. more than twelve months preceding the priority date. Gifi cited three facts in support of its claim: (i) exhibition at an international boat show in Fort Lauderdale, Florida, (ii) the sale of 10,000 pairs of Crocs clogs in the United States, and (iii) disclosure of the model on Crocs' website (www.crocs.com).
EUIPO's Board of Appeal upheld the claim for revocation, and its decision was confirmed by the General Court of the EU.
The judgment: disclosure to the public
Crocs did not contest the existence of the three events of disclosure, but maintained that these were acts which, in the ordinary course of business, could not reasonably have been known to specialised circles in the sector concerned operating within the EU.
The General Court noted first of all that events constituting disclosure and destroying novelty can very well take place outside the territory of the EU. It suffices that the design have been “exposed, used in trade or rendered public in any other way”.
The General Court ruled that, in the present case, professionals in the sale and manufacture of shoes in the EU could reasonably have learned of the events that took place outside the EU. Even if prior to May 2003, it was not possible to access Crocs’ website using key words such as "shoe" or "clog", this site could indeed have been brought to the attention of the European public at the international boat show in Fort Lauderdale which, as Crocs itself admitted, was a "resounding success", or during the distribution or resale of the products in many US states. Indeed, it is “unlikely, given the importance for the EU market of commercial trends on the US market, that it went unnoticed by specialised circles in the sector concerned operating within the EU”.
Commentary
This decision recalls the care that should be taken when first disclosing a design or model anywhere in the world. The initial disclosure should be quickly followed by the filing of an application if the holder subsequently wishes to benefit from the protection afforded by a registered design.
General Court of the EU, 14 March 2018, T-651/16, EU:T:2018:137, Crocs v EUIPO – Gifi
