The General Court has now had its final say in the ongoing dispute between Crocs Inc and Gor Factory SA in respect of the latter filing to invalidate Crocs’ EU registered design for its iconic clog design.
Gor Factory’s invalidation was based on Crocs’ registered design allegedly lacking individual character at the time of the design application being filed in 2004. Gor Factory’s relied-upon prior art was dated from 2003 and gave such an overall impression on an informed user that the EUIPO initially declared Crocs’ registered design invalid. The Board of Appeal also reached the same conclusion. Crocs then appealed to the General Court.
Crocs sought to rely on the fact that the prior art raised did not feature a heel strap, which is a prominent part of the Crocs design. However, upon assessment, the General Court found that while an informed user would notice the heel strap, it would be of lesser importance when viewed in the context of the full prior art, which for all intents and purposes forms an otherwise identical overall impression to a Croc.
There have been opinions for and against the decision by observers, with some suggesting that the decision potentially narrows the designs that could be validly registered. There has also been discussion surrounding whether the General Court’s assessment of the heel strap as being incidental was correct, given that to some it forms an integral part (and often is a unique selling point) of Crocs. A key take away from this case is that where a new feature is added to an existing design, that feature must stand out significantly and not be incidental so as to be afforded valid protection in the EU.
If you have any questions on the above, or if you need any advice or support in respect of your own intellectual property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
