- in European Union
- in European Union
- in European Union
- in European Union
- in European Union
- within Immigration topic(s)
The shoe is on the other foot for Crocs following a recent Board of Appeal decision in which it was determined that prior designs showing only a left shoe did not take away the novelty of the registered design showing only a right shoe.
This appeal case followed an invalidity action brought by HSM Schuhmarketing Gmbh against Crocs Inc, in which the validity of EU Registered Design no. 001626300-0001 was contested on the grounds of:
- novelty in view of 4 prior designs each offered for sale on Amazon, and
- individual character in view of a list of over 100 other prior designs (which, notably, did not include the 4 prior designs cited with regard to novelty).
On the point of novelty, the Board of Appeal determined that the registered design is novel due to a number of factors, most notably including the aforementioned discrepancy between the evidence of the prior designs showing only left shoes and the registered design relating to a right shoe.
Although on the face of it, this seems like a somewhat extreme stance, some rationale does prevail. The Board of Appeal went on to comment that, had the 4 prior art documents been cited in respect of individual character, then they would have found that the left shoes gave the same overall impression as the right shoe of the design, and the design would then have been deemed to lack individual character.
As it was, only the other 111 designs were cited in respect of individual character.
It was held that this ground for invalidity was not sufficiently substantiated because the invalidity applicant had not pointed to features of specific ones of the 111 designs. They had only made a general statement that the designs shown in the documents gave the same overall impression as the registered design.
Going back to the matter of rights and lefts, the other question that arises is whether a left shoe would infringe the right shoe design. Perhaps this question is redundant if shoes are always made and sold in pairs. Nonetheless, the Board of Appeal's comments regarding the same overall impression will come as a relief to Crocs and any other Registered Design owners for only a left shoe or right shoe. An EU Registered Design is infringed by any product that does not produce a different overall impression on the informed user. This test is generally considered to be somewhat akin to the individual character test due to the "overall impression" terminology. Thus, it can reasonably be extrapolated that a left shoe may infringe a design for a right shoe and vice versa.
The learning point from this case seems to be that when contesting third party Registered Designs at the EUIPO, you should be specific and precise with your arguments. Merely providing reams of similar designs will not be enough to prove invalidity even if, on the face of it, this might present a compelling case.
...the designs differed in several features, particularly in the shape and orientation of the upper cover which result from the fact that the prior designs depict a left shoe, while the contested REUD shows a right shoe. The Board could not presume that the counterpart of either design would mirror the features of the compared designs...
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
