When even icons fall: design lessons from the Crocs saga

The story so far

The Crocs design has come under legal scrutiny before. In 2018, the GC declared it invalid for lack of novelty, finding that Crocs had disclosed the clog itself before the relevant grace period through presentations at a boat show, sales of 10,000 pairs across numerous US states, and publications on its own website (T-651/16). Crocs even described the boat show as a "smashing success" on its website – a statement the Court used as evidence of the breadth of the disclosure.

Crocs appealed to the Court of Justice, but the case was declared devoid of purpose by order of 10 September 2020 (C-320/18 P) and no decision on the merits was ever rendered. The design registration apparently remained on the register.

Round two: invalid for lack of individual character

In October 2022, the Spanish company Gor Factory filed a fresh invalidity application. This time, the application was based on a lack of individual character compared with the "Holey Soles" clog, which had been disclosed in April 2003, before the priority date of the Crocs design.

The EUIPO's Invalidity Division and Board of Appeal upheld the application and the GC dismissed Crocs' appeal. Here is what the Court found:

·      High design freedom: Crocs argued that design freedom for clogs was limited because certain basic features (round shape, open heel, flat sole) are predetermined. The GC disagreed: design freedom is high because designers are free to choose material, colour, pattern, decorative elements, and the number, size, shape and position of holes.

·      The strap is not enough: The two designs share the same basic shape: a thick sole, closed rounded toe cap, identical arrangement of round holes on the upper, and trapezoidal cut-outs on the front and sides. They differ only in the heel strap featured on the Crocs design. While noticeable, the strap is a secondary feature that does not outweigh the overall similarities between the designs.

·       Fame and commercial success are irrelevant: Crocs' inclusion in Fifty Shoes That Changed the World, its commercial success and worldwide recognition are not relevant criteria for assessing individual character under the EU Design Regulation. Equally, a reference to a decision by the USPTO could not alter the assessment, as EU design law is an autonomous system.

What this means for your business

This case holds important lessons for anyone developing, launching or protecting product designs, particularly in the fashion, luxury and consumer goods sectors:

·       Do not rely solely on the grace period. The 12-month grace period protects against the consequences of your own prior disclosures, but it does not shield you from third-party disclosures or from invalidity attacks based on older third-party designs. Filing early therefore remains the safest strategy.

·       Register product variants together with the core design. If a variant merely adds a single feature to an otherwise identical design, that addition may not be enough to establish individual character, especially if the feature is secondary. Register all key variants at the same time to avoid your own earlier design becoming prior art.

·       Search the prior art before filing. The Crocs design was ultimately invalidated because of a pre-existing third-party design – the Holey Soles clog – that was publicly available before the priority date. A thorough search of existing designs before filing can help identify such risks early.

·       Do not count on commercial success to save your design. Whether a product has sold one pair or one hundred million pairs makes no difference under EU design law. Individual character is assessed objectively: fame, awards, and cultural significance carry no weight.

Conclusion

A design can survive the first storm and still fall years later. The Crocs saga is a reminder that protecting a design requires a proactive, strategic approach – regardless of how successful the product is in the market. Businesses should build their design protection strategy early, comprehensively and independently of commercial success.