February 1, 2019
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EL SALVADOR: Ruling Recognizes Crocs’ 3D Trademark Designs
On December 10, 2018, the Second Sentence Criminal Court of Sonsonate, a city located near the Port of Acajutla, El Salvador’s most important seaport in terms of maritime commerce, issued an important decision related to enforcement in a case involving Crocs’ 3D trademark designs.
Crocs initiated the matter in June 2017, after an alert to the possible importation of merchandise from China that purportedly infringed Crocs’ well-known 3D trademark designs. Border measures were initiated by Crocs before the Customs Authority through a request to the Acajutla Criminal Court. At the same time, Crocs filed a criminal claim for distinctive signs infringement before the Sonsonate City Division of the Attorney General’s Office.
From the beginning of these two actions, and similarly to other enforcement actions conducted by Crocs in the last two years, there was good coordination between the authorities involved—the Customs Office, the Attorney General’s Office, and the criminal courts—enabling the border measures to be successfully applied. Consequently, merchandise consisting of more than 14,000 pairs of sandals infringing Crocs’ 3D trademark designs were seized.
After the three hearings—initial, preliminary, and public—that make up the Salvadoran criminal process, a historic condemnatory sentence favorable to Crocs was finally obtained. It recognizes the infringement against Crocs’ 3D trademark designs and establishes important considerations regarding the possibility of conducting criminal infringement action based on a 3D trademark registration. Moreover, the Second Sentence Criminal Court’s judgment highlighted the right to claim damages as a civil liability, pending the judge’s final decision over the 14,000 pairs of sandals that were blocked through the border measures and seized during the criminal process.
The Chief of Prosecutors of Sonsonate noted that the decision is historic since “this is the first criminal prosecution based on Distinctive Signs Infringement that is achieved in the city of Sonsonate” and is even more relevant because the mark involved was a 3D mark.
According to information provided by Crocs’ local counsel, the company has been successfully enforcing its intellectual property rights based on its 3D trademark rights in El Salvador. To date, approximately 50,000 pairs of sandals have been destroyed pursuant to border measures and criminal actions.
These recent cases illustrate that El Salvador can be a good focal point for the coordination of similar enforcement actions throughout the Central American region.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
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