Crocs loses RCD invalidity appeal before EUIPO
US-based shoemaker Crocs has lost an appeal before the European Intellectual Property Office (EUIPO) after it opposed a Czech competitor’s registered community design (RCD).
In a decision on June 6, the EUIPO’s Third Board of Appeal sided with Coqui and found there was no likelihood of confusion between an earlier Crocs trademark and Coqui’s RCD.
After Coqui was granted its RCD in 2016, Crocs filed an application of invalidity claiming that Coqui’s RCD would infringe one of its earlier 3D trademarks which is registered in Sweden.
Coqui’s RCD covers a design of a clog-style shoe with the word ‘Coqui’ written on its sole, an image of a smiling frog on the upper part of the shoe and images of little frogs on the buttons of the shoe-strap.
Crocs’ trademark is for a black and white image of a clog-style shoe with various vents on the upper-part of the shoe and a trap that is fixed with buttons.
In December 2017, EUIPO’s Invalidity Division upheld Crocs’ application and declared Coqui’s RCD invalid.
In February 2018, Coqui appealed against the decision, arguing that Crocs’ earlier mark simply shows the shape of the registered goods and is of very low distinctiveness.
In its decision, the Third Board of Appeal said that while visually, the earlier mark and RCD coincide in the shape of a clog, they differ in that Coqui’s RCD has several images of a stylised frog and the word ‘Coqui’ written twice on the sole.
The board of appeal said that “taking into account that consumers are not used to perceive the shape of a product as distinctive but will rather focus on the verbal elements … and the image of a frog”, the degree of visual similarity between the earlier mark and the RCD is low.
Additionally, it said that phonetically there was no similarity between the earlier mark and the RCD, as the RCD will be pronounced as ‘Coqui’ and the Crocs mark has no verbal element.
It also found that the Crocs’ mark “depicts the basic features of a clog with a strap” and that consumers will perceive these features as a “mere variant of the basic shape and not as an indication of commercial origin”. Therefore, it said Crocs had failed to prove enhanced distinctiveness.
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