12/03/2025
In a recent decision by the EUIPO’s Third Board of Appeal, Crocs, Inc., suffered a significant legal setback in its ongoing battle to defend the validity of its registered EU design protecting the well-known clog design.
This decision from the EUIPO’s Third Board of Appeal reinforces the position that:
1) not all features contribute to the same extent to the overall impression of a design; and
2) in sectors where the designer has a high degree of freedom, minor differences between a contested design and a prior design are not enough to produce a different overall impression on an informed user.
Background
Crocs has been battling for a number of years to defend the validity of its registered EU designs.
This latest decision, by the EUIPO’s Third Board of Appeal, invalidates a Crocs registered design directed to clog with a strap (R 590/2024-3).
R 590/2024-3 is an appeal against a decision of the Invalidity Division to invalidate registered Community design no. 257 001-0001 in view of an invalidity application filed by GOR FACTORY SA.
Registered Community design no. 257 001-0001, as shown below, is to a clog with a heel strap. The design was filed in May 2004.
GOR FACTORY, S.A. challenged the registration based on lack of individual character over a design that had been made public before the effective filing date of registered Community design no. 257 001-0001.
The prior design cited by GOR FACTORY SA, as shown below, shows an almost identical looking clog, but without the heel strap, or indeed any strap. The design had been made publicly available since at least April 2003.
The assessment the EUIPO had to do was whether the registered design, at its filing date, had individual character. This is found if the overall impression the design produces on an informed user is different to any other design made available to the public before the filing date. The designer’s degree of freedom is taken into account when assessing individual character. If a designer has a limited degree of freedom, the minor differences between two designs are deemed sufficient to produce a different overall impression.
Interestingly, this is not the first time this prior design has been used to question the validity of registered Community design no. 257 001-0001, see R0009/2008-3, whereby Holey Soles Holdings Ltd., who are the holder of the prior design in question, brought an invalidity action. However, it appears this case was withdrawn and settled.
Summary of Arguments
Crocs argued that the design was distinctive over the prior design because of the presence of the heel strap. Crocs alleged that this heel strap altered the overall impression of the clog to the informed user, in comparison to the prior design.
GOR FACTORY argued that the overall shapes, including the configuration of the holes, were nearly identical and that the strap was an accessory feature rather than a defining design element. As such, GOR FACTORY argued that the overall impression of the two designs was the same.
The Decision
The Board of Appeal sided with GOR FACTORY for the following reasons.
When comparing the clog with heel strap design to the prior design, the Board found that they are almost identical- “the exact same shape, featuring a thick sole, a rounded closed toe cap with multiple circular holes on its upper surface, and trapezoidal cutouts on the side and front” and “an identical arrangement of the holes and cutouts”. The only difference identified was the presence of heel strap.
The Board held that the designer’s degree of freedom when developing a new clog design is high. The Board stated that the design freedom “is only restricted insofar as their shape must follow foot ergonomics, incorporating a robust sole and an upper cover to ensure firmness, postural stability, comfort, safety and protection for the toes and the foot and, if applicable, a heel strap fixed to the upper cover”. This means that minor differences between a contested design and a prior design are not enough to produce a different overall impression.
So, the key question in this case was whether the presence of the heel strap is sufficient for the contested design to produce a different overall impression on informed user compared to the prior design?
The Board of Appeal said no- “The difference in the strap of the contested RCD will be noticed by the informed user but will be of lesser importance than the identical overall shape of the clogs and cannot on its own outweigh the similarities”. The Board held that the informed user may see the provision of a heel strap as an alternative version of the prior design and therefore as a minor variation.
Consequently, registered Community design no. 257 001-0001 was found to lack individual character and therefore declared to be invalid.
As touched on briefly above, this is not the first time registered Community design no. 257 001-0001 has faced an invalidity action – however, it appears all previous actions were settled with no decision being taken by the Office. Crocs still has the option to appeal against the ruling to the General Court, so we will have to see what happens next. Based on previous decisions, we do not expect Crocs to let this registration die without a fight. However, even if settled again, this does raise the question of how useful this design registration is, given the EUIPO clearly questions its validity.
What does this mean for the footwear industry
As Registered Community design no. 257 001-0001 is now deemed invalid, this may open up the market for ‘copycat’ products.
The decision supports the position that, according to EU design law, a variation in one minor aspect of a footwear design compared to a prior design is not sufficient to produce a different overall impression if the remainder of the design is almost identical to the prior design. In other words, when comparing a footwear registered design with the prior art, one should pay attention to how a difference changes the overall impression of the footwear, rather than focussing too much on the difference itself.
However, registered Community designs are not examined pre-registration, so this decision does not impact the ease with which a footwear company can obtain a registered Community design for their new design. Instead, it just impacts invalidity and also infringement actions.
Further, this decision implies that a valid registered design to a strapless Croc clog would enjoy a rather broad scope of protection, because the scope of protection conferred by a registered Community design covers all designs which do not have a different overall impression. Therefore, this might encourage owners of broad registered community design rights to reassess what falls within the scope of their design protection when assessing potential infringements.
What other protection is available
There may be another avenue for Crocs to protect the shape of their clog by registering it as a 3D trade mark.
3D shapes can also be protected as trade marks (which can offer indefinite protection beyond the term of a registered design). For a shape to be registrable as a trade mark, amongst other requirements, it must be an indicator of brand origin. This is where many applications for shape marks fall down; the shape is not sufficiently distinctive to act as a trade mark. The shape must differ from the norms and customs of the relevant sector – e.g. shoes – to be protectable as a trade mark. This is a different threshold than design validity.
Crocs has applied to register 3D shape marks in the past for its clogs. It has owned a registration in the EU and UK since 2008 for a 3D mark representing the shape of its clogs. However, this registered mark includes Crocs’ crocodile logo on the hinge of the heel strap. The inclusion of the logo may make it difficult for Crocs to enforce this registered 3D trade mark against others who copy the clog but do not copy the crocodile logo.
In the UK, Crocs, likely in an attempt to shore up protection for the appearance of its clogs, filed a trade mark application (see here) in March 2024, seeking protection for the shape of its clogs. This 3D shape mark did not include the crocodile logo, or any other traditional trade mark. The application is still in examination, which suggests that Crocs may have run into some difficulties in convincing the UKIPO that the shape of the clogs, without any other branding elements like the crocodile logo, communicates to consumers that the clogs are produced by Crocs, rather than any other business. Crocs struggled to register that same mark in the EU in 2014 and the application was withdrawn in 2015.
It is clear that Crocs is utilising the registered trade mark system, as well as the registered design system, as a way to protect its clogs and to help combat copycat products. If Crocs manages to obtain a trade mark registration in the UK for the shape of its clogs (without other branding elements), that will give it another tool that may be useful in the fight against copycats in the UK. We wait with interest to see if Crocs manages to obtain the registration. It may not be a smooth footpath ahead for any copycat clogs.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
