The price of Banksy’s anonymity
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Crocs have amassed an army of loyal fans since the shoes were first shown at a Florida boat show in 2002. Crocs (under the name Western Brands) originally filed for a registered design to protect the iconic shoe in 2004. In 2005, Gifi Diffusion (Diffusion) filed an invalidation action against the design claiming that it lacked novelty. The General Court has now ruled that Crocs’ registered design is invalid.
Registered designs must be novel. An owner of a registered design has a 12-month window before filing for protection to share their design with the world. Diffusion claimed that Crocs’ shoe design was invalid because it had been disclosed over a year before the filing of the registered design.
Central to this case is the fact that the shoe design was disclosed “in the normal course of business to people specialised in the sector concerned”. Crocs disclosed the design to professionals in the trade and manufacturers of footwear.
The evidence that was used against Crocs related to:
– Print-outs from Crocs’ website showing the products bearing the design for sale;
– Exhibits from the Fort Lauderdale International Boat Show where Crocs were displayed.
This case forces designers to consider the issue of disclosure globally. Disclosure of registered designs should not be assessed on the basis of location alone. Rather, it is necessary to consider the evidence as whole. If a website is accessible to people who specialise in the sector concerned then a design is likely to be considered to have been disclosed.
This case also highlights the pitfalls which brand owners can encounter in relation to registered designs. The internet and promotion of goods online exposes new designs globally, increasing the likelihood that the goods will be considered to have been disclosed.
‘Register first, act later’ should be the approach adopted in relation to registered designs, in order to ensure robust rights on the register which are not open to challenge. This is a key message for owners of global brands who may be staggering the global launch of new designs.
If you have a design you need to protect or for more information please contact us.