The company Crocs, Inc. is the holder of a registered Community design (hereinafter RCD) regarding a footwear design, which was registered on 22 November 2004.

On 24 October 2022, Gor Factory, S.A. filed an application for a declaration of invalidity against the contested RCD claiming that it lacks novelty and individual character, as the RCD merely consisted in a representation of clogs. In addition the invalidity applicant submitted excerpts from the Internet Archive of a website from 2003 that showed a prior design of a red clog which was almost identical to the RCD.

The design holder claimed that the prior design was significantly different from the RCD, as it did not include a distinctive heel strap which altered the overall impression produced by the design. On consideration of the arguments submitted by both parties, the Invalidity Division declared the contested RCD invalid on account of its lack of individual character in relation to the prior design. The reason behind this decision was that the Invalidity Division did not appreciate a distinctive overall impression.

The design holder filed a notice of appeal against the contested decision arguing that the conflicted designs produced a different overall impression on the informed users. Moreover, it considered that the heel strap was a noticeable difference, as its absence or presence was  an obvious and conscious factor in the consumers’ purchase decision, resulting in different overall impressions. Crocs, Inc. also claimed that the Cancellation Division conducted an erroneous comparison of the prior and contested designs by adopting an incorrect application of the overall impression test, carrying out an analytical comparison of a list of similarities and differences, instead of a synthetic comparison, concluding that there are more similarities than differences.

In reply, the invalidity applicant argued that the Invalidity Division examination and analytical comparison was fully in line with the established case-law. Moreover it claimed that the contested RCD and the prior design produced similar overall impressions, as the heel strap in the contested RCD had an accessory nature and redundant function in the overall impression. The invalidity applicant classifies the heel strap as a perceptible but insufficient difference.

The Board of Appeal upholds the contested decision on the grounds that the contested RCD lacks individual character as its overall impression does not differ from the prior design. The typology of the products at issue (footwear, specifically clogs), the high degree of knowledge and attention of the consumer, the designer’s high degree of freedom and the overall impression were taken into account in order to establish a comparison between the designs.

Both designs consisted of a clog with the exact same shape featuring a thick sole, a rounded closed toe cap with multiple circular holes on its upper surface, and an identical arrangement of the holes and cutouts, therefore the overall impression produced on the informed user is the same. The heel strap is insufficient to counterbalance the similarities in both designs, as it is a minor variation of the same clog.

In conclusion, the difference on the heel strap is insignificant. Therefore, the contested RCD lacks individual character (Art.6 CDR) and produces the same overall impression that the prior design. The decision of the Invalidity Division is upheld and the appeal is dismissed. Crocs, Inc. is ordered to pay the costs of the proceedings.

Decision of the Third Board of Appeal (EUIPO) from 5 February 2025 in case R590/2024-3