Invalidity of Community design of the Crocs shoes based on disclosure in the US
17.10.2018
Judgement T 651/16 dated 14/03/2018 of the General Court
EU Regulation provides that a Community design is to be protected to the extent that it is new and has individual character.A design will not be regarded as new if, inter alia, it has been made available to the public during the 12-month period preceding the period of priority claimed,except where the disclosure could not reasonably have become known to the circles specialised in the sector concerned, operating within the EU.
According to Article 7 of Regulation No 6/2002, relating to disclosure of a Community design :
1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.2. A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 and if a design for which protection is claimed under a registered Community design has been made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and (b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority. 3
The Crocs shoes were filed as Community design in 2004. During a cancellation action, the intervener filed evidence showing that first disclosure of the shoes took place in 2002, in particular on the owner website and during an exhibition at a boat show in Fort Lauderdale in the US.
It follows from the case-law that a design is deemed to have been made available within the
meaning of Article 7 of Regulation No 6/2002 once the party relying thereon has proven the events constituting disclosure. In order to refute that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned the circles specialised in the relevant sector to be taken into account in the present case were professionals in the trade and manufacture of footwear.
In that respect, with regard to the Fort Lauderdale Boat Show, EUIPO asserts that it is an
important international event in the nautical sector and that it is therefore unlikely that EU
professionals from the footwear industry could not have become aware of the new clog designed for boating.
The <link http: curia.europa.eu juris document external-link-new-window internal link in current>General Court finds that Crocs failed to demonstrate that the three disclosure events established by EUIPO could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU (that is to say professionals in the trade and manufacture of footwear).
