Crocs Snap Back in EUIPO Invalidity Proceedings

In a recent decision from the EUIPO Board of Appeal, Crocs, Inc. (Crocs) have successfully defended an EU design registration protecting one of its clog-style shoes. A German shoe company, HSM Schuhmarketing GmbH (HSM) filed an invalidity action at the EUIPO and subsequently appealed the rejection of their claim.

The Invalidity Action Before the EUIPO

During the initial invalidity proceedings, HSM argued that the design (1) had lacked novelty because the shoe had appeared on the Amazon marketplace prior to its filing date on the 21st October 2009, and (2) that it lacked individual character. HSM referenced several Amazon Standard Identification Numbers (ASINs) to support these claims.

The contested design included the following representations:

The strap and the outsole of the contested design were depicted using broken lines and as a result protection was not sought for those parts.

In the invalidity proceedings, HSM submitted evidence showing offers on the Amazon website for a Crocs Kid’s Crocband clog with publication dates ranging from 2004 to 2008 (before the filing date of the contested registration), which it said constituted proof of disclosure of the contested design, which as a result should be found to lack novelty. Left: The four prior designs HSM relied upon.

HSM also argued that the Crocs design lacked individual character and submitted a list of 111 registered EU designs in support of this argument.

Crocs countered by saying that the dates shown on the Amazon website had been modified and were therefore unreliable and that HSM had failed to provide any reasons as to why the Crocs design would produce the same overall impression as any of the 111 designs submitted as evidence, each of which must be assessed separately.

The Board of Appeal’s Findings

The EUIPO found that HSM’s appeal was “not well founded” but accepted that printouts of Amazon sales pages could be considered to show disclosure of the design. The Board of Appeal rejected HSM’s arguments based on lack of novelty noting that the prior art evidenced by the Amazon pictures differed sufficiently from the contested design.

The Board said that the designs shown on Amazon “differ in several features, particularly in the shape and orientation of the upper cover”. Registration confers protection upon the holder of a design for the design features of a product, in whole or in part, that are shown visibly in an application and made available to the public by way of publication. Features of a contested EU design registration that are disclaimed are disregarded when comparing designs and in this case the strap and the outsole of the contested design are depicted using a visual disclaimer.

The contested design is the point of reference, with novelty and individual character addressed in comparison with a prior design solely based on the features disclosed in the contested design. Therefore, any colours, materials or decoration in the prior designs which are not common to the claimed features of the contested design will not be taken into account.

The Appeals Board noted that HSM had broadly claimed that the Crocs’ shoe created a similar overall impression to previously known designs and submitted a list of 111 designs in support of this claim, but had failed to specify which of them should be compared for similarity.

The Board dismissed HSM’s Appeal.

Practical Guidance for Invalidity Proceedings

In proceedings relating to a declaration of invalidity, the EUIPO is restricted to examination to the facts, evidence and arguments submitted by the parties. In an invalidity action therefore, the Office will not go beyond the scope of the claim and will assess the contested design only to the extent defined by the applicant for invalidity, in this case the novelty based on the prior designs D1 to D4 and individual character on the 111 prior designs indicated by HSM.

The contested design is the point of reference, with novelty and individual character addressed in comparison with a prior design solely based on the features disclosed in the contested design. Therefore, any colours, materials or decoration in the prior designs which are not common to the claimed features of the contested design will not be taken into account.

Article 52(2) CDR provides that the application for a declaration of invalidity must be filed in a written reasoned statement of ground referencing facts, evidence and arguments in support of those grounds. The facts, evidence and arguments must be related to the prior design(s) reproduced in the application and so each design invoked should be reproduced and commented upon separately.

It is vitally important therefore that, if an application for invalidity of a community design (or elsewhere) is to be filed, the statement of grounds is supported by facts, evidence and arguments showing that prior designs relied upon are identical to the design shown in the registration (even to the extent where if there is a pair of shoes and the registration shows a right foot version as it did in this case, the prior designs you rely on also show at least the right foot variation) or that any differences are immaterial. Do not expect the Office to do this for you with only generic arguments put forward in the statement of grounds.

Photo credit

Adwaid Nk via Unsplash

Nathan Dumlao via Unsplash

Case decision from EUIPO