The General Court has confirmed the cancellation of the above EU registered design ("RCD") for Crocs casual shoes because the design was disclosed to the public earlier than the 12-month period preceding the date of priority and therefore lacked novelty. The disclosure of the design took place: (i) on Crocs' website; (ii) at a boat show in the US; and (iii) through the sale of 10,000 pairs of clogs.
An RCD can be protected to the extent it is new and has individual character. A design will not be regarded as new where it is made available to the public prior to the 12 month priority period before registering the design.
In 2013, Gifi Diffusion filed an application for a declaration of invalidity on the basis that the design lacked novelty. They produced printouts from Crocs' website showing evidence of the three disclosure events. The application was eventually upheld by a decision of the EUIPO on 6 June 2016. Crocs lodged an appeal against the decision with the General Court on the basis that the events Gifi had argued had led to disclosure could not have reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.
Whilst Crocs did not dispute the three disclosure events, they argued that the website had only just been created at the time of the alleged disclosure and it was only searchable by customers from Florida and Colorado and not via search engines. Crocs also argued that it was impossible to prove a negative fact i.e. that the website had not become known to the relevant circles. The General Court considered this point but it was dismissed on the basis that Crocs could have shown that there was very little or no traffic to the website from users originating in the European Union, or that the boat show had not been attended by exhibitors or participants from the European Union, or that the retail network for the clogs was not actually operational.
The General Court held that there was no requirement for the disclosure to have taken place within the European Union in order for a design to be deemed to have been made available to the public and that it was for Crocs to rebut the presumption that the facts of the case could reasonably prevent those events becoming known in the relevant circles.
Crocs did not dispute that its website was technically accessible worldwide. It was apparent from the expert reports that Crocs' website was not included in the results of a search of 'Crocs'. The General Court found that the website could also have become known by other means, such as the exhibition at the boat show which in Crocs' own words on their website had been a "smashing success".
With regard to the boat show, the General Court agreed with EUIPO's assertion that it was an important international event in the nautical sector, which was likely to be attended by EU professionals from the footwear industry, as shown by Crocs' own attendance.
Further, it was considered that in relation to the third disclosure event, the clogs had been put on sale in numerous US states and thus, given the importance for the EU market of commercial trends in the US market, it is unlikely that the design went unnoticed by the relevant circles.
Accordingly, the application by Crocs to overturn the declaration of invalidity was dismissed.
Case Ref. T-651/16