Crocs, the informed user and the overall impression

Crocs, Inc. Vs Li and Fuzhou Tanglong Electronic Commerce (Case R 68/2022-3)

This month for our IP blog post, we decided to focus on an interesting design case that recently reached the EUIPO’s Third Board of Appeal (the Board).

In June 2021, Crocs, an American footwear company based in Colorado, that manufactures and markets the Crocs brand of foam clogs, filed an application for invalidity against a design registered in November 2020 by Li and Fuzhou Tanglong Electronic Commerce. In essence, Crocs was claiming that their design was being copied, and a lack of individual character of the contested design, based on Article 25 (1) (b) of the Community Design Regulation (CDR) with Article 4 (1) CDR.

The EUIPO’s Invalidity Division dismissed this application for invalidity, claiming the evidence provided by Crocs was not enough to show the disclosure of the prior design. This evidence included a comparative table of both designs and extracts of the online store.

In January 2022, Crocs filed an appeal against the contested decision, requesting it to be revoked, reiterating that the contested RCD was lacking novelty and individual character when comparing to their prior Croc design.

This time, Crocs provided additional evidence such as a printout from its website showing that it had offered the shoes for sale in the past 8-10 years, extracts from Amazon.it and Amazon.de; and a witness statement from the regional counsel of Crocs Europe, stating that the prior design was first available for purchase by consumers in the European Union in December 2011.

The Board decided to take this evidence into account since it would prove the disclosure of the prior design, pursuant to Article 63(2) CDR, in which “the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In stating that the Office ‘may’, in such a case, decide to disregard evidence, Article 63(2) CDR grants the Board a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account”.

Having accepted this new evidence and thus having found that Crocs’ earlier design was indeed disclosed to the public, the Board could proceed with Crocs’ invalidity claims and in particular with the question of knowing whether the newly registered design lacked individual character compared to Crocs’ design.

For this, the Board’s assessment relied on two main concepts: the concept of “informed user”, and the concept of “overall impression”. Indeed, according to Article 6 CDR, a design has to have individual character in order to be valid, meaning that “the overall impression it produces on the informed user [should differ] from the overall impression produced on such a user by any design which has been made available to the public [before the date of application for registration]”. Hence the question of knowing whether the contested design departed sufficiently, in terms of overall impression on informed users, from Crocs’ earlier design.

Thus, with regard to the informed user, the Board considered that users typically exercise a relatively high degree of attention when buying the shoes, as relevant searches on the Internet or browsing catalogues might be the usual pattern the informed user would follow.

Another aspect assessed by the Board is the designer’s degree of freedom when designing clogs. Indeed, this aspect is relevant to the case: the more freedom a designer has to design specific goods (here, clog shoes), the less likely it will be that minor differences in design (as is the case here, were the new design only departed from Crocs’ one in small ways) produce a different impression on the informed user. Here, the Board noted that a designer’s freedom when designing clogs is high. While certain ergonomic features are a must, a lot of freedom remains in the choice of materials, colours, patterns, and so forth. Hence, when stating this, the Board made a clear point that competitors to Crocs have a lot of freedom to develop different designs – a lot of the design choices made by Crocs could be departed from by other designers. 

The Board went on to assess the overall impression produced by the new design compared to Crocs’ designs and noted that both designs showed a lot of similarities. The differences between both were considered as just minor details that the informed user would not perceive (this user having a relatively high degree of attention, and the designer of this type of product having a lot of freedom to produce different designs – see above).

For this reason, the Board confirmed the fact that the prior design was destroying the individual character of the contested RCD, and that this contested RCD should be invalidated.

This case teaches us a few things: first, the importance of being cautious when submitting all relevant evidence at the first stage of enforcement proceedings (here, invalidity proceedings), even if Crocs was lucky enough to being able to submit new evidence at a later stage. Second, this case shows us that something which would look like a clear copy to many customers can still get registered as an industrial design (the EUIPO does not check novelty or individual character ex officio) – it is therefore the responsibility of the previous design holder to check possible future registrations and submit invalidity applications if relevant. Finally, this case is a good illustration of the application of the “individual character” concept by the Board. As we have seen above, in cases where the product’s designers have a high degree of freedom, small changes in design will be considered as invisible / insufficient to produce a different overall impression on informed users, hence insufficient to give a new design individual character.

Picture by Nathan Dumlao on Unsplash