Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.
The intellectual property rights victory in Canada for the footwear company Crocs is a timely reminder to keep fleece clogs in mind for your winter wardrobe. Famous for its easily-recognizable design of breathable and water-friendly clogs, Crocs was founded in 2002 in the US by three college friends who enjoyed sailing. Though it started out as comfortable boat shoes, Crocs now boasts 850 million pairs of shoes sold in 85 countries. Crocs are popular in part because they walk the fine line between functionality and fashion. The clogs appeal to both the practical public with their comfortability, as well as those who see them as a fashion statement, including celebrities. With Crocs’ level of global popularity, knock-offs are inevitable.
The Battle Over Fleeced Clogs
As early as 2006, Crocs has been in numerous intellectual property battles against companies Crocs claims are selling knock-offs. While most of Crocs’ lawsuits are in the US, the battles have also crossed the border into Canada, such as Crocs’ October 21, 2022 victory in Crocs Canada, Inc. v. Double Diamond Distribution Ltd (“Crocs v Dawgs”). Crocs Canada is a licensed distributor of the US company, and Double Diamond Distribution Ltd is a direct competitor for clog-style footwear operating under Dawgs and Canada Dawgs.
Released on October 21, 2022, this case decision concerned the validity of the industrial design rights for Crocs’ MAMMOTH line of fleece clogs (“939 Design”). Industrial design rights protect the visual features of an article, including its design, shape, pattern or ornament, or any combination of these features. Crocs targeted the Fleece Dawgs footwear, claiming that they were unlawful imitations of the 939 Design. One of the issues the judge examined in this case was whether the design of Fleece Dawgs footwear differed substantially from the 939 Design under s. 11(1)(a) of the Industrial Designs Act. Notably, the judge recognized the originality of the fleece clogs design that Crocs developed and commented that there was nothing like it previously in the market, which entitled the design to a broad scope of protection under industrial design rights. In finding that there was an infringement, the judge determined that the two designs in question were not substantially different in their key features. The features mentioned included the overall shape, the fold over the fleece collar, the decorative discs, and the inner lining of the fleece clogs. In addition to a declaration that Dawgs has infringed the 939 Design, the judge also awarded Crocs around $700,000 from Dawgs’ profits and pre-judgment interest.
A Look at Crocs’ Other Battles
Beyond the industrial design victory in Canada, Crocs has other wins in its long battle to protect its intellectual property rights from copycats. The US Patent and Trademark Office’s Patent and Trial and Appeal Board, after three rejections, held that the Class Crocs clog design patent was valid in 2019. In a mass intellectual property protection effort, Crocs filed lawsuits against 21 companies in 2021 for trademark infringements. Among these lawsuits was one against a wholesaler for Walmart. Crocs has since settled claims with Walmart and a few other companies. Crocs filed a claim against Daiso this past June 2022, a Japanese dollar store in California, for selling lined casual clogs that are virtually identical to Crocs’ clogs for $3 to $3.50. In its claim, Crocs argued that the design infringement has led Daiso to enjoy unfair gains and profits in misleading consumers. As Crocs continues cracking down on copycats, the accumulation of legal victories like Crocs v Dawgs will strengthen the company’s argument for ownership over its registered designs, patents, and trademarks.
