Evacol continues the fight with Crocs for the sale of clogs

The Civil Chamber of the Court of Bogotá must now decide a new round that has at the center of the debate the clog-type shoes known for being undercut and comfortable, produced and marketed by the Valle del Cauca company Evacol as well as the multinational Crocs.

A process of at least 8 months is expected there, as confirmed by Evacol's attorney and associated with Muñoz Abogados, Camilo Hernán Cortés Prieto, after the latest decision of the Superintendence of Industry and Commerce (SIC).

For now, the fight is lost for the national brand because the SIC prohibited the sale of three references among other determinations that remained firm except for the payment of a fine of 74 million pesos for the damages caused.

Among the drastic measures are included the withdrawal of the own trade establishments and their distributors from the selected references, destroying the manufacturing molds of these shoes as well as "all the products identified with the references" in a maximum term of 30 days , guaranteeing care for the environment.

The foregoing would imply that in the event of a ruling in favor of Evacol in the Civil Chamber, the company could not only return to production, but also "exercise the legal mechanisms it considers for the purpose of requesting compensation for the damages caused," the company clarified. Delegate Superintendent for Jurisdictional Affairs, Carolina Estrella.

But how did the dispute start? The lawsuit in the SIC was realized because Crocs felt that Evacol's designs infringed its three-dimensional registered trademark (not only names and brands can be registered in the SIC, but also objects with volume and specific shapes that identify a business origin) .

In this case, the three-dimensional mark "implies that it is not related to its technical functionality, nor to the usual shape of the shoe, nor to its external appearance, but rather it has a specific mechanism for identifying goods and services," the specialist lawyer clarified. in marks, Juan Carlos Martínez.

Thus, an exclusive monopoly right was consolidated through trademark registration,” he added.

What did Evacol defend?

According to Cortés Prieto, there were seven most relevant issues that they tried to put on the table.

In the first instance, "the usual and generic form that the shoe has", taking into account that since 2011 different companies in the country were manufacturing this product "long before Crocs registered its brand in Colombia", stressed the attorney.

From here another issue emerges and that is that the national company "used this product long before the existence of the Crocs registry," said Cortés. What also implied that the multinational entered into a dispute and made requirements to other 30 national companies "this market was already consolidated," said the attorney while arguing that Evacol has industrial property over the gaps and bands, and there is a precedent fundamental: the Valle del Cauca company tried to register the shoe as an "industrial design, in 2012, and the SIC denied this possibility due to lack of novelty", and later, in 2016, Crocs registered it as a three-dimensional trademark.

A relevant point for the attorney is that there are criticisms about why in Colombia the registration of the three-dimensional trademark includes aspects that give an advantage of use to that shoe (such as the holes for the cooling of the foot and the band to fix it), when it should not have be part of the argument to the record.

Conclusions of the SIC

At the hearing, the advisor appointed to the Delegation for Jurisdictional Affairs, José Fernando Sandoval, dismissed Evacol's arguments and maintained that the products of both companies are similar “(...) conclusion reached on the basis of the evidence contributed and even, with the simple observation that this judge makes of the products”, he stressed.

Sandoval ruled out the ownership of other brands presented by Evacol, since they do not coincide with the infringed brands, according to Crocs, as well as the coexistence in the market of both brands for the clogs in question, for five years.

“It is not true that since 2011 the three-dimensional Crocs sign has been coexisting with Evacol (...) it must be analyzed between the registered trademark and the products that are alleged to be infringing, and given that the trademark was granted in March 2016 and the precautionary measures they were requested in March 2016 it cannot be said that Crocs has been tolerant with the use”.

And he stressed that the law does not start from the use of a form, in this case, but from the existing record in the authority.

The debate, Sandoval clarified, is not whether or not the Crocs sign is distinctive or if there were shortcomings in its granting, since a process such as the one that was carried out and part of the right of use and in the infringement was evaluated is the use unauthorized third party.

Who are they?

Evacol is a brand that it argues is distinguished by aspects such as its use of the brand on the shoe and even the price at which it is sold, differentiating the luxury audience from Crocs and its distribution.

In this case, the bid is not equal. Taking into account the latest results that rest in the Superintendence of 2017, the national company reported revenues of 22 billion pesos, that is, 7.4 million dollars at the exchange rate of that year of 2,951.15 pesos , while the multinational had a result that same period of 1,023 million dollars, it has a business history that dates back to 2002 and is backed by the sale of at least 600 million pairs since then in 90 countries