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Image: Crocs

Crocs has been handed yet another loss in its fight to protect the design of its plastic clog footwear. The European Union General Court has dismissed Crocs’ appeal against the European Union Intellectual Property Office (“EUIPO”) to cancel legal protection of its shoe design. In doing so, the court has upheld a 2016 decision from the EUIPO that declared that Crocs’ design registration is invalid because the footwear lacks the requisite level of novelty.

The case got its start back in 2013 when French footwear company Gifi Diffusion filed a formal opposition with the EUIPO contesting Crocs’ EU design registration, arguing that EU law states that a design cannot be made public more than one year before filing. According to Gifi, Crocs first showed the design at issue in 2002 — two years before filing its design mark in the United States, and thereby, ruining its chances of filing for protections after 2003.

In a decision in 2014, the EUIPO’s Invalidity Division dismissed Gifi Diffusion’s request, asserting that the company had failed to present sufficient proof that Crocs had released the designs prior to the one-year time period. Responding to the EUIPO’s pushback, Gifi Diffusion ultimately provided more evidence, and in 2016, the Crocs design was ruled invalid by the EU’s trademark body, prompting Crocs to lodge an appeal.

Fast forward to this month and the EU General Court has sided with Gifi on the basis that Crocs’ footwear lacks the requisite level of novelty. In a statement responding to the ruling, a rep for Crocs stated, “The decisions are not final and Crocs is considering further appeal options where appropriate. One decision relates to the decision-making procedures of the EUIPO and does not call into question the Registered Community Design at issue. The second decision relates to validity challenges against a legacy Registered Community Design which have been ongoing for the last ten years.”

“Crocs’ business has not been significantly impacted by this ongoing issue during that period and it is not expected that the latest decision will have any immediate material adverse consequences for Crocs,” the spokesman asserted, also noting that Crocs’ Registered Community Designs are valid and enforceable during the appeals process.

In other Crocs-related intellectual property news, in its largest anti-counterfeiting effort ever, the Ecuadorian IP Office recently seized nearly 40,000 imitation Crocs items, including shoes and packaging. The action followed Crocs’ filing of an administrative infringement action in Ecuador, which sought and won an injunction against infringement of its registered marks there.