EVACOL S.A.S BANNED FROM SELLING SHOE REFERENCES REGISTERED UNDER CROCS INC THREE-DIMENSIONAL TRADEMARK. THREE-DIMENSIONAL TRADEMARK OR INDUSTRIAL DESIGN?

Posted March 29, 2019

The Colombian Superintendence of Industry and Commerce determined that EVACOL S.A.S’s use of three shoe references infringed CROCS INC’s industrial property rights of a three-dimensional trademark previously registered by the brand. The administrative agency stated, after an hour-long hearing where both parties were heard which took place on February 21st of 2019, that EVACOL S.A.S is in fact making use without authorization of CROCS INC’s three-dimensional trademark registered under the registration certificate Nº 534245 that identifies products of class 25 of the Nice Classification, protected by the Superintendence of Industry and Commerce. CROCS INC’s industrial property of their three-dimensional trademark is being infringed by the following EVACOL S.A.S’s specific references: Clog 084, Clog 78, and Clog 078-07.

Three-dimensional trademark of CROCS INC^[1]:

The Superintendence decision prohibited the sale and commercialization of the products identified by the references mentioned before. The decision also ordered EVACOL S.A.S to:

Cease all acts that infringes CROCS INC industrial property, rightful owner of the three-dimensional trademark with registration certificate Nº 534245 identifying products of the 25th class of the Nice Classification.
Remove from all EVACOL S.A.S’s commercial establishments nationwide the products identified by the references that infringed CROCS INC’s industrial property (Clog 084, Clog 78, and Clog 078-07) within thirty days.
Collect within thirty days all products identified by the infringing references (Clog 084, Clog 78, and Clog 078-07) from all of the commercial establishments nationwide of EVACOL S.A.S’s distributers.
Additionally, EVACOL S.A.S was ordered to destroy the products identified by the references Clog 084, Clog 78, and Clog 078-07 within the thirty days. The destruction process must guarantee environmental care.
Destroy the temples used in the fabrication of products identified by the references Clog 084, Clog 78, and Clog 078-07 within thirty days. Just as with the destruction of the products, the process must take into account environmental care.
Lastly EVACOL S.A.S was ordered the payment of SEVENTY-FOUR MILLIONS FIVE HUNDRED THIRTY THOUSAND FOUR HUNDRED FOURTY PERSOS ($74.530.440 pesos) to CROCS INC on account of damages compensation.

The decision has immediate effects after the proper notification of the sentence takes place. It was, on the other hand, appealed by EVACOL S.A.S and will be solved by Bogotá’s Civil Court.

This particular case shows how the registration and protection of a three-dimensional trademark for a specific product can be an alternative option for brand owners that seek exclusivity of a design when the industrial design (design patent) has been rejected. CROCS INC received a favorable Decision in Colombia with the registration of the three-dimensional trademark; however, on American and European tribunals the company has received during the past years multiple rejections for the I.P. protection of the design.

The U.S. Patent and Trademark Office (UPSTO) in mid 2017 issued a rejection for the design patent submitted by CROCS INC and gave a favorable ruling to its longtime competitor USA DAWGS for the similar clog design patent that was submitted to the UPSTO one year before. On the other hand, a Europe Union tribunal (Luxembourg) rejected, as well as in the American court, the petition made my CROCS INC to protect the product through a design patent due to the fact that the product was seen first on other locations (Florida, 2002) so there wasn’t the novelty needed for the patent registry.

Design patents and three-dimensional trademarks serve related but different purposes and have multiple differences. Trademarks on one hand seek the distinction of a product from similar ones in the market and are not time-limited as long as they are renewed and use. Industrial designs, on the other, are protected if they are new and for a limited period of ten years^[2]. Even though the concepts may vary, the protection of a product can be, simultaneously though a three-dimensional trademark and a design patent if the product meets all of the requirements for both kind of protection.

“To be protected as an industrial design, the 3D shape must be new, though the standard of novelty is not the same in every country or territory, for instance some jurisdictions requiring worldwide novelty and others requiring only local novelty.

To be protected as a trademark, the 3D shape must be distinctive and not solely functional or necessary, and it must also satisfy other conditions generally applicable to trademarks.”^{^[3]}

Given the fact that there are multiple questions on whether a protection should be through a three-dimensional trademark or an industrial design or patent, every particular case should be analyzed in order to determine what kind of protection is applicable, jurisdiction should also be analyzed taking into account that the legislation varies between countries and there are countries that do not allow protection of 3d marks.CROCS INC’s product in the specific case did not comply with the requirements needed in different jurisdictions for its protection to be through the registration of a design patent. However it did complied with the necessary requirements to achieve a protection in Colombia against EVACOL S.A.S products through the registration and enforcement of a three-dimensional trademark.

^[1]Registration certificate Nº 534245

^[2]Process 099-IP-2012 Court of Justice of the Andean Community

^[3]AIPPI – Question 148: Three-dimensional marks: the borderline between trademarks and industrial designs. Yearbook 2000/II, pages 261 – 262 Q148Executive Committee of Sorrento, April 8 – 15, 2000