Crocs Inc has recently lost its EU design protection for its clog as a result of a ruling from the oddly named Office for Harmonisation in the Internal Market (OHIM) which is the body that registers designs and trade marks in the European Union.
A third party challenged Crocs Inc’s Community Registered Design for its clog on the basis that it was not novel and that it lacked individual character.
Under the design law of the European Union there is a 12 month grace period prior to filing an application, during which use can be made of the design without destroying its novelty or individual character. However, Crocs got its sums wrong.
Crocs had been selling the clog since July 2002, a fact that was apparent from its website and that had been stated in a US trade mark application. In addition to this, Crocs had exhibited its clogs at the Fort Lauderdale International Boat Show (a nautical exhibition in Fort Lauderdale, Florida, USA) between 31 October and 3 November 2002. Crocs then filed its Community Design application on 22 November 2004, claiming priority from a US application dated 28 May 2004. The 12 month grace period was therefore calculated as 28 May 2003.
Crocs put forward various arguments as to why the novelty had not been destroyed based on the fact that use of the design had not taken place within the EU. However, OHIM stated that with a fast moving industry such as the fashion industry and in the age of the Internet, a product which proves successful in one part of the world will undoubtedly come to the attention of people in the relevant industry within the EU.
OHIM also found that the design lacked individual character because it created the same overall impression as other clogs already on the market at the time the design application was filed.
The main lesson which should be taken from this case is that the 12 month grace period cannot be relied upon to save applicants, particularly those from outside of the European Union, if they have been using their designs elsewhere in the world. An application for Community Registered Design protection should be filed as close to the initial launch date wherever in the world it may be and even if entry into the European Union market is only a future possibility.
This article was written by Anna Szpek, a Trade Mark Attorney in the Commerce and Technology Department and a member of Fox Williams Fashion Law Group.
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