Crocs’ well-known design declared invalid: novelty and individual character in designs

While they may not be to everyone’s taste, it is undeniable that the shoes made by Crocs are highly recognisable due to their distinctive features and style. Indeed, their clog-like shape, ventilated holes and lightweight material have made them amongst the most famous and successful pieces of clothing or footwear to appear on the consumer market in the past decades. 

Considering the position which their signature clogs occupy on the market, it is not surprising that Crocs Inc, the US-based company which manufactures and commercialises these shoes would take steps to protect their intellectual property in these shoes, in the form of industrial design protection. This they did, filing design applications across the world for several of their models, including in Europe with the European Union Intellectual Property Office in the 2000’s. Examples of such designs can be found here, here, and here.

Nevertheless, earlier this month the EUIPO Board of Appeal handed down a decision declaring the invalidity of one of its designs. Indeed, in 2022, a Spanish company GOR FACTORY filed an application with the EUIPO for a declaration of invalidity of one of its designs (design 000257001-001 to be exact) which it had filed all the way back in 2004. Note that while it shares some common traits with the designs listed above, this is the design which specifically covers the clog with holes for which Crocs is arguably the most famous.

the contested design

The arguments supporting GOR’s claim was that, quite simply put, the design when it was filed with EUIPO, was not new or possessed any individual character when compared to products which were already available or had been disclosed previously.

There are two fundamental criteria for the protection of designs: they must be new in that they must not have been disclosed to the public at the time of the filing of the application, and they must possess individual character in the sense that a design must create an overall impression to the informed user which differs from that created by pre-existing designs, stemming from the designer exercising its creative freedom in making it.

The issue here is that GOR had identified a website (using the Wayback Machine, an online archive of internet pages) on which one could find the following product already in 2003, therefore predating Croc’s filing of the design application:

the design on which the invalidity claim was based

In light of this earlier product, while the Crocs design could be considered new (in the sense that the exact same design had not been disclosed before filing of the application), GOR claimed that it lacked the individual character necessary to benefit from protection. 

The similarity between the two designs is evident: these are rounded, non-wooden clogs with a thick sole, low heels, and holes on their upper surface arranged in the same way. Nevertheless, similarity is not enough, and simply providing a list of similar aspects does not in itself lead to a finding of invalidity of a design due to lack of distinctive character. What is important is whether the overall impression is the same due to the combination of these features and taking into account their differences. The decision here is a good example to understand how this individual character is assessed:

• Are the two designs applied to similar or identical product? 

Here yes: we are dealing with footwear in both cases.

• What is the designer’s degree of freedom when developing the design? 

The higher the designer’s degree of freedom, the more impactful the similarities between two designs, and the less likely the later design will be eligible for protection. The options for a design are limited by the constraints imposed by the technical function of the product in question. When it comes to clogs, the product must follow foot ergonomics and incorporate a robust sole and upper cover to ensure firmness. Outside of these limitations, the designer is free to develop as wished. 

• Does the new design generate a different overall impression to the informed user?

In the eyes of someone who understands the product in question, are the differences enough, or the similarities too great, to generate a different overall impression? In the case of clogs, the informed user is the general consumer who is looking to buy clogs and has looked into several options, thereby having the capacity to differentiate between the different types of clog designs available on the market. 

In this case, it was found that the only significant difference between the Crocs design and the pre-existing design was the presence of a strap. Given the overall similarity between the two designs, the Board of Appeal held that the informed user may actually consider that the Crocs version with the strap could simply be an alternative version of the same product. In other words, the similarities were such, and the overall look so similar, that this difference was not considered enough to separate the two esins sufficiently in the eyes of the consumers to determine that Crocs design did indeed possess individual character. 

The Board of Appeal therefore agreed with GOR and declared Crocs’ design invalid.

What does this decision mean?

Crocs has therefore lost the design in question, but it is important that this does not mean that its others designs are not valid. These other designs, while having a similar “feel” to them, have distinctive features which allow them to fulfil the “individual character” criteria. Furthermore, losing design protection does not mean that it no longer has the right to use the design. Designs, like other intellectual property rights are exclusive and exclusionary rights, in the sense that they give their owner the right to stop others from using them. In other words, you do not need to protect a design to use it, but you need to protect it to stop others from using it. 

As such, Crocs will continue to commercialise its well-known Crocs under this design. The effect of this decision is that they will not be able to stop others from copying it… under industrial design laws. Because like most companies who create highly recognisable consumer goods, Crocs has followed several options for the protection of tis products, and the Crocs shoe is not just a design, but also a trade mark!

Protection of consumer products as 3D trade marks is not a rare occurrence (the most famous example probably being the Coca Cola bottle), and provides an extra layer of protection. Keep in mind that trade mark and designs do not have the same requirements for protection, and do not have the same effects. Unlike designs, trade marks do not need to be new or have an individual character. All they need is the capacity to act as a sign of the origin of a product. If the shape of the Crocs shoe is deemed distinctive enough so as to act as a sign of origin of the product in itself, then Crocs can stop others from imitating it, not because that would infringe on their industrial design, but because it could lead to confusion in the eye of the consumers as to the origin of a product.