Trademark Caselaw | Peru | Crocs’ 3D Trademark Overcomes Opposition
Earlier this year, the Specialized Chamber on Intellectual Property at INDECOPI’s Competition and Intellectual Court (the Chamber) confirmed the grant of a 3D Trademark application filed by Crocs, Inc. (Crocs), in class 25, after it was opposed by local company, Industrias Humarsa E.I.R.L. (Humarsa).
Croc’s 3D Trademark
The Trademark Commission at INDECOPI had rejected Humarsa’s opposition which lead to an appeal, where Humarsa argued that there was likelihood of confusion between the proposed mark and its registered mark, BIG FOOT (3D), and that Crocs had filed the application in bad faith.
In its decision of January 15, The Chamber ruled against Humarsa and found that where the proposed mark consisted of singular tridimensional details applied to the shape of a clog, trademark BIG FOOT (3D) consisted of the words “BIG FOOT” and a figurative elements also applied to the shape of a clog. It also found that the configuration of elements in both marks were different enough to further rule out any likelihood of confusion, especially considering that the shape of a clog itself could not be subject to appropriation.
Industrias Humarsa E.I.R.L.’S registered trademark
Humarsa had based its bad faith argument on the fact that Crocs had repeatedly opposed trademark applications including the shape of a clog and that it was imitating its previously registered and filed models, yet The Chamber pointed out to Humarsa not producing any piece of evidence supporting its claims and that whether Crocs had acted in good or bad faith within other administrative proceedings was irrelevant for the purpose of determining whether the application had been filed in bad faith.
The Chamber further stated that the grant did not give Crocs exclusive rights to the shape of the clog itself, but to the specific combination and arrangement of graphic elements, i.e. the singular tridimensional details applied to the tridimensional shape of the clog, as specified in the application.
Interestingly enough, there was a dissenting vote from one of the members of The Chamber, who considered the right decision would have been to declare the annulment of the whole proceeding and refer it back the formal examination stage, so that Crocs specified what was being claimed in its application, which she found was not accurately described.
Click here to request a copy of the Chamber’s decision or in case you wish to receive any additional information.
