Third parties have every right to request the cancellation of the regis­tration of a design when the latter was made available to the public before its regis­tration, the EU’s General Court has recently affirmed.

The appearance of the whole or part of a product resulting from the features of, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation is considered by EU law to be a design. Any industrial or handicraft item, including packaging, graphic symbols and typefaces, qualifies as a design. On the other hand, colours per se, mere verbal elements and sounds do not quali­fy as they do not constitute the appearance of a product.

The proprietor of a design can choose one of two routes when seeking to protect his or her design on an EU level. He can either seek to register it with the European Union Intellectual Property Office (EUIPO) before it is commercialised (RCD) or alternatively, he/she can commercialise it directly without registration by relying on what is known as the unregistered Community design right (UCD).

Although both routes offer protection from third parties, the rights conferred on the proprietor are different both insofar as scope of protection is concerned as well as insofar as duration of such protection is concerned.

The registration of a Community design is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years. An unregistered Community design is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the EU. After three years, the protection cannot be extended.

A registered Community design grants its owner exclusive rights to use, make, offer, put on the market, import, export or stock products incorporating the protected design and to prevent others from doing so. Hence, the proprietor of a re­gistered design enjoys certainty as to the extent of his rights. On the other hand, the owner of an unre­gistered Community design can only prevent others from using the design for commercial reasons if the use results from copying.

Therefore, there would be no infringement if the design has been created independently by another designer who can prove that he or she was not aware of the existence of the protected design.

To be protected, both RCDs and UCDs have to meet the same conditions as to novelty and individual character. If the proprietor of a design makes it available to the public and then decides that he/she wants to apply for a design registration, he/she can still do so within a grace period of one year from disclosure. Registration after this period will expose the registration to claims for cancellation by third parties unless the owner can prove that people in the relevant circles could not have possibly been aware of the disclosure.

Design is crucial for the successful marketing of any product

In this particular case, the General Court examined the following facts. On November 22, 2004, Western Brands LLC filed an application for registration of the Crocs footwear design with the EUIPO, claiming the priority of a US design patent application filed on May 28, 2004. On February 8, 2005, the design was registered as Community design. On November 3, 2005, the Community design was transferred to Crocs.

In 2013, a French company filed an application for a declaration of invalidity of the registration of the design with EUIPO, claiming that it lacked novelty. It maintained that the design had been disclosed prior to May 28, 2003, that is, prior to the 12-month period preceding the date of filing of the application for a US design patent. The EUIPO declared the registration invalid, finding that it had been so disclosed and, therefore, lacked novelty.

According to the EUIPO, disclosure had taken place in three ways: by means of a display on Crocs’ website, an exhibition at a boat show in the US, and the fact that the clogs to which the design had been applied were available for sale. Crocs lodged an appeal against the decision before the General Court of the EU, claiming that the disclosure of the design concerned events which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU.

The General Court noted that there is no requirement for the events constituting disclosure to have taken place within the EU. Hence, the court concluded that, with the three disclosure events, the contested design had been made available to the public prior to May 28, 2003. Furthermore, the court observed 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 professionals in the trade and manufacture of foot­wear operating within the EU.

Crocs failed to establish, to the court’s satisfaction, that it was not possible for shoe manufacturers operating outside the US to find its website and that the boat show was not known to such professionals.

Furthermore, the clogs were put on sale in a large number of Ameri­can states and it was therefore unlikely, given the importance for the EU market of commercial trends on the US market, that it went unnoticed by the circles specialised in the sector concerned, operating within the EU. The General Court hence dismissed the action brought by Crocs and confirmed EUIPO’s decision.

Design is crucial for the successful marketing of any product. It registration of provides value-added protection to its proprietor, who can then reap the success of creating an innovative product.

As evidenced by this ruling, however, proprietors must ensure to abide carefully by the rules, if  they wish to enjoy the fruit of their success without the risk of being exposed to third party claims.

Mariosa Vella Cardona is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property. E-mail law.mariosa@vellacardona.com.

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