When are clogs design clones?
Crocs Inc has won an EUIPO appeal against an invalidity decision concerning a registered Community design (RCD) held by Li/Fuzhou Tanglong Electronic Commerce (09/01/2023, R 68/2022-3, Shoes).
The RCD was filed in November 2020 (above). Crocs filed an application for a declaration of invalidity in June 2021. Cros claimed that the RCD lacked novelty and individual character as it was identical to and produced the same overall impression as its earlier design of a clog, available in the EU since 2012 (pictured bottom).
In November 2021, the Invalidity Division rejected the application for a declaration of invalidity.
Before the Board of Appeal, Crocs provided additional evidence including a printout from its website listing the prior design for sale, together with customer reviews dating back eight to 10 years; extracts from amazon.de and amazon.it with customer reviews dating back to 18 August 2018; and a witness statement confirming that the prior design was first available in the EU in December 2011.
The Board decided to take this additional evidence into account, saying it supplemented and complemented the evidence produced before the Invalidity Division. In light of this, it considered that the prior design had been disclosed on the internet prior to the filing date of the contested RCD.
The Board found that the informed user shows a “relatively high degree of attention” and the designers’ degree of freedom in developing clogs is high: it is only restricted by ergonomics, comfort and safety and the designer can choose material, colour, patterns and decorative elements. The evidence of several images of clogs in a variety of designs supported this finding.
Assessing the overall impression, the Board said:
“The designs under comparison show a clog with a black rounded upper, white thick sole, black and white undersole pattern and a black heel strap. The differences are limited to the thickness of the sole, the dimensions of the black treads, the groove down the middle of the undersole (two grooves in the contested RCD vs one continuous groove in the prior design) and the presence of a figurative element on the strap button of the prior design. These are, however, insufficient to produce different overall impressions on the informed user.”
Accordingly, the prior design destroyed the individual character of the contested RCD, which had to be declared invalid.
What does this mean?
This case demonstrates the value of perseverance! The possibility to adduce additional evidence is an important feature of EUIPO proceedings. In this case (as in the recent BIG MAC trade mark case where the Cancellation Division’s finding of lack of genuine use was reversed by the Board of Appeal), the new evidence was critical.
The Board has discretion as to whether to accept the additional evidence, but in this case it was clear that it supplemented the evidence originally produced and addressed deficiencies identified by the Invalidity Division. Moreover, the RCD holder was given the opportunity to respond but did not reply and was not represented.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org