A recent high-profile case about Crocs before the General Court of the European Union shows that those who wish to apply for design registration in the EU have to be on their guard. Previous own publications of the design, in this case outside of the EU (in the US), could be fatal to the design registration itself lateron.
(In)validity of the design registration
The design registration of the Crocs clog was performed in February 2005 and applied for in November 2004. However, the design registration is contested on the basis of Article 6 in conjunction with Article 7 of the Community Designs Regulation (GDR). According to Article 7 paragraph 2 of the GDR, a design registration can be declared invalid (void) if the product was made available to the public more than twelve months before the date of filing of the application for registration as a design. See also Article 25 paragraph 1 opening lines and under b GDR.
It was argued that the model had been published previously and was therefore not new. According to the EUIPO, the European Union Intellectual Property Office, publication of the Crocs took place by means of (i) representation on the Crocs website (ii) display at a boat show in Fort Lauderdale, Florida (United States of America); and (iii) the fact that the clogs to which the design had been applied were available for sale.
The Court concluded on the basis of those grounds that the design registration is invalid, because those facts occurred 12 months before the application for design registration.
The GDR mentions an escape for design owners. The abovementioned invalidity regime does not apply in principle if certain facts (concerning publication of a design) could not within reason have become known to “insiders” in the relevant sector operating in the Community in the normal course of business (the text of the GDR reads as follows: where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community).
This escape is invoked by Crocs. That invocation is rejected, however. According to the Court, Crocs did not demonstrate sufficiently that shoe manufacturers that operate in the EU were unable to find the US website of Crocs. It was also unlikely that the Fort Lauderdale Boat Show was unknown to aforementioned circles within the EU in view of the fact that it was an international convention and that the display of the relevant clogs was a great success. Moreover, the Court points out that the clogs were put up for sale in a large number of American states and that it is therefore unlikely that the clogs remained unnoticed in view of the importance of commercial trends in the American market for the EU market.
Design law is a fairly complex field of law with formal rules that must be observed. One of the most important rules is that publication of a design that precedes a design registration has the potential to entail the nullity of the registration. If the design is published before the design registration, it must always be determined when this happened and whether “insiders” in the relevant sector in the EU could have become aware of this even if publication takes place outside the EU.
By Joost Becker, lawyer specialising in design law