Crocs decision: the importance of being ‘snappy’ about protecting your designs

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Crocs decision: the importance of being ‘snappy’ about protecting your designs

22 Mar 2018

A recent decision from the EU General Court has once again highlighted the serious consequences of disclosing designs before you apply for a Registered Community Design.       

Last week, the well-known Crocs shoe design (you either love them or hate them!) was found to be invalid by the General Court. The Court agreed with the earlier decision of the EUIPO Board of Appeal that there were prior disclosures made before the date of the design application that invalidate the registered design.  This must be a blow to Crocs, Inc., the owner of the design, because prior to this decision it would have been able to prevent other companies copying what is clearly a distinctive shoe design.

The grace period

Under both UK and EU legislation, there is a 12-month grace period preceding the date of application for a UK Registered Design or Registered Community Design, in which you may disclose your design to the public, without affecting the validity of a registration.

If priority is claimed from a registered design elsewhere in the world, the grace period is 12 months before the date of priority. The purpose of this grace period is to allow a designer to test the popularity of the product on the market and to decide whether a registration would be worthwhile.

What amounts to a prior disclosure?

In relation to Registered Community Designs, there is a two-step analysis the Court undertakes in deciding whether a design has been disclosed outside the grace period:

1. Whether the evidence produced shows that the design had been disclosed before the grace period; and
2. Whether the owner of the design can shows that the disclosure events could not have reasonably become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU.

Previously, exhibitions, trade shows, actual sales, advertising and marketing have been found to amount to prior disclosures.

In the present case, the Crocs shoe design had been:

1. Displayed on the owner’s website;
2. Exhibited at a boat show in Florida; and
3. Available for sale through a distributor in several retailers in the US.

All of these disclosures had taken place before the grace period had started.

But the disclosure was outside the EU…..

The question as to whether disclosure events taking place outside the EU could satisfy the second part of the test will depend very much on the circumstances of each individual case.  The General Court suggested that the burden is generally on the owner of the design to show that, as a result of a disclosure, the design would not have become known to the relevant persons in the EU, which in this case Crocs, Inc. failed to do. In particular, the Court said that the website was technically accessible worldwide and that the Florida boat show was of international importance.

Key takeaways

It is imperative that companies and designers are very careful as to how, when and to whom they disclose designs that are not yet registered.  Obtaining legal advice on protecting your intellectual property rights at an early stage could therefore make all the difference, especially in terms of validity.

To speak to an intellectual property expert about protecting an existing or future design, please call 0161 832 3434.

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