The invalidity of a Community design due to conflict with an earlier trademark: Crocs succeeds before the OHIM

Last December, the Invalidity Division of the Office for the Harmonization in the Internal Market (OHIM) declared the invalidity – with a decision still subject to appeal – of Community design (CD) no. 2222463-001, relating to footwear products, filed in April 2013 by a Portuguese holder (see first image below), upon application by US Crocs Inc., the manufacturer of the famous multi-coloured, holed shoes. The application was based on Crocs’ earlier Swedish trademark no. 400514, registered in January 2009 (see second image further below).

In particular, the applicant claimed the invalidity of the abovementioned design for lack of novelty under Article 25(1) (e) of the EU Regulation on Community designs (and, indirectly, of Swedish trademark laws): this provision states that the Office may declare the invalidity of a Community design that uses a distinctive sign , whose use is not allowed by the Community law or by the law of the Member States governing that sign (in this case, precisely Swedish Law).

The Division, in applying the principles of Swedish trademark laws, found that the design at issue was invalid due to the identity of goods and services for which, respectively, the earlier trademark and design were registered, the similarity between the earlier sign and the sign used in the design, and the resulting likelihood of confusion.

The Division observed that the notion of the “use” of third parties’ signs in a subsequent design does not necessarily entail that the design is a full and detailed reproduction of the earlier sign, particularly where the potential omitted or added features are of secondary importance and are unlikely to be concretely noticed by the relevant public: it is enough that trademark and design be similar. This is exactly what would happen in this case, the OHIM found, because the design at issue and the earlier trademark would present both a series of equal holes on the upper, an inner sole with a substantially identical dimpled surface and a strap and fasteners, once again, equivalent.

The Division finally noted, as an obiter dicta, that the applicant was the owner of a Community trademark corresponding to the invoked Swedish one that had not been used in the proceedings at issue since a cancellation action, rejected in the meantime, was pending against it, and by virtue of which the contested design would also be declared invalid.