Image: Crocs

The latest stage in this long-running dispute concerning the validity of the iconic clog design has found that Crocs’ prior disclosure of its clog product (through its own sales and marketing activities) had led to its EU design registration being invalid. Crocs had applied for registered protection for its clog design in the US and EU after the 12-month grace period (during which self-disclosure is permitted and does not affect the novelty of the design) had expired. As Crocs was too late to benefit from the grace period, and had not shown that its design would not have come to the attention of the sector concerned in the EU, its EU registered design was found to be invalid. This highlights the importance of filing for design protection when the design in question is still new, and has not been made publicly available for an extended period of time beforehand.  

Enthusiasts of Registered Designs and Crocs will be know that, back in December 2007, the Design Invalidity Division of the EUIPO had issued a decision finding that the Crocs design was invalid.

Western Brands (the entity that later transferred its rights to Crocs in 2005) had filed an application for an EU registered design on 22 November 2004, claiming the priority of a US design patent it had filed in May 2004. The validity of the EU design depended upon whether Western Brands had made a prior disclosure of its own designs before May 2003 (i.e. outside the 12 month grace period in which self-disclosure is permitted) by selling 10,000 pairs, disclosure on its own website and the marketing presence of Crocs and its clogs at the Florida International Boat Show. The Board of Appeal upheld the invalidity decision in 2010 but an appeal to the General Court abruptly ended following bankruptcy of the invalidity applicant.

These new invalidity proceedings were brought by a different party in 2013. Despite relying on the same facts to support invalidity, the Invalidity Division this time found the design to be valid.  However, on appeal, where better quality documents were provided, the decision was overturned, leading to this further appeal to the General Court.

Prior disclosure and burden of proof

An EU design will not meet the statutory requirement for novelty if it has been made available to the public prior to the 12-month period before the application for the design registration (the grace period), except where that disclosure could not reasonably have become known to the circles specialised in the sector concerned operating in the EU.

The central question was whether Crocs’ prior disclosures would not have come to the attention of the sector concerned in the EU. The General Court said that this was something that Crocs had to establish. It could appear Crocs was therefore effectively required to prove a negative. However, the Court suggested that relevant evidence could be, for example, that there was little or no actual internet traffic from EU users to the Crocs website, or that the Florida International Boat Show was not attended by exhibitors or participants from the EU, or that there was no operational distribution or retail network for Crocs’ clogs.

Although an appeal to the CJEU remains possible on this point, this seems relatively unlikely to succeed as Crocs would need to again argue that the burden of proof be reversed so that prior disclosure must be shown to have become known in the relevant circles in the EU.

Priority and the grace period

The decision highlights the importance of prompt filing of design applications, while the design is still new and within the relevant grace period, to prevent a designer’s prior disclosure of its own design. Care should always be taken when making designs public because, in many circumstances, this would qualify as a prior disclosure that is sufficient to destroy the novelty of a design in an overseas territory. It is particularly important to note that grace periods vary in different territories (and do not exist in all territories) and should be considered when determining an appropriate global filing strategy.

Emmy Hunt is a Partner at Clarkson Potter, specializing in trademark law.