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Crocs, previously known as Western Brands, filed an application for a footwear design in November 2004 at the European Union Intellectual Property Office (EUIPO). Crocs claimed priority of the US design patent application filed on May 28, 2004.
Under EU council regulation (EC) no 6/2002, a design cannot be regarded as new if it has been made available to the public during the 12-month period preceding the priority claimed, except when the disclosure could not be known to the relevant industry in the EU.
The footwear design was registered as a Community design in February 2005 and was transferred to Crocs in November 2005.
In 2013, France-based Gifi Diffusion claimed that the design lacked novelty, and filed an application for a declaration of invalidity at the EUIPO.
Gifi argued that the design had been disclosed before May 28, 2003.
The EUIPO declared the design invalid in June 2016. It said that the design had been disclosed before the May 28, 2003 date and therefore lacked novelty.
The disclosure was regarded in three aspects: the display of the design on Crocs’ website; an exhibition at a boat show in Florida; and the fact that the footwear to which the design had been applied was available for sale.
Crocs appealed against the decision to the General Court, claiming that the website disclosures of the design “concerned events which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU”.
The General Court dismissed the appeal, noting that with regard to whether the design had been disclosed before the May 28, 2003 date, Crocs did not dispute the correctness of the three disclosure events established by the EUIPO.
The General Court found that there is no requirement for the events in the disclosure to have taken place within the EU. “Accordingly, the General Court rules that the EUIPO made no error in finding that with the three disclosure events, at least taken as a whole, the contested design had been made available to the public prior to May 28, 2003.”
In particular, the General Court highlighted that Crocs failed to establish that it was not possible for shoe manufacturers operating outside of the US to find the website.
Crocs must bear its own costs and those incurred by the EUIPO and Gifi.
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Crocs, shoes, footwear, fashion, Gifi Diffusion, EU General Court, EUIPO, community design