[Guest post] 2004, 2007, 2014, 2024 – Four lives for the Crocs design?

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the most recent EUIPO decision relating to invalidity of RCD No 257001-0001 covering the appearance of the famous Crocs design. Here’s what Henning writes:

2004, 2007, 2014, 2024 – Four lives for the Crocs design?

by Henning Hartwig

Rumour has it that cats have nine lives to spare – for three they play, for three they stray, and for the last three they stay. Apparently, the famous-infamous Crocs design can claim three lives at least.

I.

RCD No 257001-0001, which has been registered on 22/11/2004 (claiming priority from U.S. application No 29/206,427 filed on 28/05/2004), covers and reproduces the appearance of Crocs’ iconic clog-style footwear, more precisely the model ‘Beach’. Despite derisive comments from media and critics, being the target of satire and listed as one of the world’s “50 Worst Inventions”, the financial and economic success of the Crocs leisure shoes remains unheard in modern times. Until 2017 alone, for instance, 300 million pairs of ‘Beach’ shoes have been sold.

II.

Consequently, following Oscar Wilde’s famous bon-mot (“Imitation is the sincerest form of flattery that mediocrity can pay to greatness”), the Crocs shoes became the subject of many copies world-wide and, subsequently, a variety of infringement and parallel/separate cancellation proceedings unfolded, for example here, here, and here.

In this context, when looking into their U.S. design patents (being examined on the merits prior to registration, different from EU design law), it is interesting to note that Crocs, Inc. appears to continue following an expansive portfolio strategy. For instance, on 4/6/2024, U.S. D1029474 S was issued as shown below:

III.

In the EU, the first attack (by the Canadian Holey Soles Holdings Ltd.) on the ‘Beach’ design, i.e., RCD No 257001-0001 resulted in the finding of invalidity due to lack of individual character (ICD 3010) on 12/12/2007, which, upon appeal, was confirmed on 26/3/2010 (R 9/2008-3). Interestingly, on their way to Luxembourg (where the General Court of the EU is domiciled for reviewing decisions of the EUIPO’s Board of Appeal), there must have been some kind of deal between the parties involved, resulting in a withdrawal of the initial request for a declaration of invalidity against RCD No 257001-0001, allowing the latter to escape from death.

This is true because, on 20/3/2013, the French Gifi Diffusion brought its own application for a declaration of invalidity. This time, on 13/2/2014, the EUIPO’s Invalidity Division found presence of validity due to lack of disclosure (ICD 9066). However, the EUIPO’s Board of Appeal reversed the decision and, again, confirmed invalidity on 6/6/2016, albeit already and only due to lack of novelty (R 853/2014-3). In this case, however, the dispute continued before the General Court of the EU. On 14/3/2018, that Court dismissed the action brought by Crocs, Inc., overall confirming the contested decision, which declared RCD No 257001-0001 invalid (T-651/16).

IV.

However, on 10/9/2020, the Court of Justice of the European Union (“CJEU”) issued an Order (C‑320/18 P) according to which there is no need to adjudicate on the appeal because Crocs, Inc., holder of RCD No 257001-0001, and Gifi Diffusion, the applicant in proceedings relating to invalidity of RCD No 257001-0001, had reached a settlement pursuant to which the latter has withdrawn its application for a declaration of invalidity of the Community design at issue. As that application had been withdrawn before the decision at issue (T-651/16) took effect and became final, the CJEU held that, on account of that withdrawal, that decision had become inoperative. Again, RCD No 257001-0001 had shown remarkable cat spirits.

V.

On 28/10/2022, the Spanish Gor Factory, S.A., brought the overall third request for a declaration of invalidity against RCD No 257001-0001, resulting, on 22/1/2024, in the finding of invalidity due to lack of individual character (ICD 120118). Crocs, Inc. brought an appeal (R 0590/2024-3) against that decision on 19/03/2024, with the grounds of appeal being due 27/05/2024 (not available).

It will be interesting to see whether the third challenge for life will eventually result in a quiet passing or whether RCD No 257001-0001 will resort to a fourth life (albeit only way too short given that the 25-year-protection will end on 22/11/2029 anyhow).