Design enforcement could be a challenging task. Despite the similarity to trademark enforcement, enforcing intellectual property (IP) rights in designs often involves much more nuances and legal barriers to overcome. The recent multiple lawsuits filed by the footwear giant, Crocs, can set as a good example of these barriers. In this article, an IP attorney from our firm will discuss this important topic.
Our IP law firm, based in Tel Aviv and Jerusalem, Israel, specializes in design law and intellectual property (IP). The firm represents international and local clients in various IP-related legal matters. Our services include design and IP enforcement, registration of IP rights in Israel and abroad, portfolio management, etc.
Crocs’ Multiple Lawsuits – Significant Court Cases
Not every day we get to hear about a major court case from the world of design law. Often, designs tend to be overlooked, as other subfields of IP law (such as trademark law, copyright law and patent law) get the spotlight. Moreover, the field of design law is currently less developed when it comes to international registration and enforcement of design rights, compared to the enforcement of trademarks and copyrighted works.
The recent lawsuits filed in US district courts by Crocs are therefore significant court cases in this regard. According to the reports, Crocs filed multiple lawsuits against 21 companies that allegedly distributed footwear designed in a similar or identical fashion as the well-known iconic brand. Among the companies that are being sued, one could find retail giants such as Walmart.
Although the lawsuits are currently held in the US alone, Crocs owns registered designs in various countries, including Israel. Similar cases by other companies can be brought to courts around the world. It is therefore a good chance to discuss the current legal tools available for this rather challenging task of design enforcement.
Design International Law – Does it Exist?
Like other IP fields, designs are mostly territorial when it comes to registration and enforcement of rights. It means that rights in a design need to be granted in each country and territory in order to be valid and enforceable. In recent years we can see some noteworthy developments in this regard, as the Hague Agreement created a system that enables the registration of designs in more than 70 countries and territories. Recently, Israel joined the agreement, and this important step could help designers with registering their designs locally and internationally.
However, compared to trademarks, the field of designs generally lacks a legal framework that enables the recognition of designs as well-known. In Israel and other countries, we can see some major recent developments when it comes to the recognition of unregistered designs. However, this protection is more limited in time, compared to registered designs’ term of protection. The legal requirements that need to be met for this recognition also make it more challenging to handle.
How to Enforce Design Rights Properly?
Often, companies and IP rights owners attempt to protect both registered trademarks and designs. Be it the case of a combined enforcement or design enforcement alone, the task would not be easy. Each country has a different legal framework in this regard, and it makes the process challenging to handle.
Moreover, the tools and legal actions that could be used for the task of enforcement (including legal letters, lawsuits, ADR, etc.) vary from one case to another. Thus, it is always recommended to consult an expert IP attorney with specialization in design law, before taking the necessary legal actions to protect your designs.
In this short article we discussed the legal challenges in the enforcement of design rights. If you have more inquiries about the topic and IP enforcement in general, our attorneys will be happy to assist you. Our law firm is well experienced with representing international and local clients in various design and IP matters, in Israel and abroad.