21 March 2018
In a ruling by the General Court of the European Union, the EU Registered Design directed to the (in)famous Crocs shoe design has been found invalid following an appeal to Gifi Diffusion’s successful invalidation action.
For an EU Registered Design to be valid, it is required that the design is new and sufficiently different to existing designs.
However, EU Registered Design law allows public self-disclosures of a design to be disregarded from prejudicing the validity of a Registered Design if it was filed within 12 months from the earliest such public self-disclosure. As pointed out by Gifi Diffusion, the Crocs’ design had in fact been disclosed (at least on Crocs’ website and at an exhibition in the US) well before this 12-month self-disclosure “grace period”.
In a further aspect of European Design law, a design can still be considered new over a prior disclosure (no matter when the disclosure took place) if the disclosure could not reasonably have become known to the circles specialised in the sector concerned operating within the EU; this provision effectively allows the most obscure disclosures to be disregarded from prejudicing validity.
Crocs had argued that their earliest self-disclosures were not relevant because of their obscurity; however, the General Court of the European Union was unconvinced by Crocs’ arguments on this point. As a result, the earliest self-disclosures of Crocs’ design were admissible and therefore rendered the EU Registered Design not new.
This decision highlights the paramount importance of seeking registered design protection before any public disclosure of a design, and at the very latest within the self-disclosure grace period that is available in some – but not all – territories. It is also confirmed in this decision that there is a high bar for a disclosure to be disregarded on the grounds of obscurity.
To discuss protecting the IP in your designs, reach out to to our Designs team.
Sign up to our mailing list to receive Mathys Matters, our monthly newsletter covering the latest IP news, industry insights, events and case law.
If you are interested in receiving quarterly newsletters relevant to our core sector groups - IT & engineering ('Inside Wires') and life sciences & chemistry ('Under the Microscope') - please select your preference(s) below:
Please select your practice area(s) of interest: