The Glitz That Turns Hate Into Love and the Invention That Binds Them
By Blair Beven | Principal Partner
When you think of fashion footwear and intellectual property rights, you probably think of Louboutin’s red sole and Adidas’s three stripes, both of which are registered as trade marks around the world. Although they might not be considered as part of “fashion footwear”, you might also think of Crocs sandals, the polarising foam footwear that consumers seem to love to hate.
Crocs, Inc, the maker of the Crocs sandals, is a US company that launched its first model of Crocs sandals in 2002. The creators’ mission was to “bring profound comfort, fun and innovation to the world’s feet”. The fact that Crocs, Inc has done so well, including diversifying its product offerings in the global market, means that the sandals are no doubt comfortable and they were an innovation.
As for the fun?
This seems to come from something called a Jibbitz shoe charm. Like many of the greatest inventions, it was created by a mother, trying to keep her children occupied while sitting around their kitchen table. It was about 2005 and the mother was Sheri Schmelzer. She started sticking silk flowers through the holes in her kids’ Croc sandals. Ms Schmelzer’s husband, Rich, came up with the name, which was based on Ms Schmelzer’s nickname, Flibbity-Jibbets.
How to protect the charms?
The Schmelzers were quick off the mark with securing intellectual property rights for the charms. On 20 April 2006, they filed a US patent application for an invention titled “System and method for securing accessories to wearable items”. Seven days later they filed a design patent application for the design of the shoe accessory. Both were granted and the Schmelzers went on to secure patents in a number of other jurisdictions.
In Australia, Jibbitz, Inc is the owner of standard patent no. 2006269292 titled “System and method for securing accessories to wearable items”. This patent is due to expire in 2026. It had a number of registered designs for the shape and configuration of the shoe charm, but these have all expired. There are also a number of JIBBITZ marks on the Register for a range of goods including the charms, leather goods, and clothing, footwear and headgear in general.
There is no doubt that the Jibbitz charms were a success. Who wouldn’t want flowers, shells and donuts, or characters from Peanuts, Winnie the Pooh or the Simpsons on their Crocs sandals? Plus, the price point which is today around AU$30.00 for five small charms, makes them great value. It took only three years to sell one hundred million charms. Jibbitz were so successful that, by a combination of hard work and a bit of luck, in October 2006, Crocs, Inc acquired the Schmelzer’s company, Jibbitz, Inc.
Unfortunately, with such success, it is not long before the lookalikes follow and the headache of trying to stop them. In this case, it was only the charms that were being copied. This meant that a claim for trade mark infringement was not possible, however, Jibbitz, Inc had more ammunition.
Remember the patent?
In Australia, Jibbitz, Inc has used its patent to claim infringement against certain importers and/or sellers of shoe charms where the mechanism for fixing them to a shoe (or anything else) is covered by the claims of the Australian patent. A search of the Federal Court cases portal shows that starting on 21 October 2024, Jibbitz, Inc has filed three applications in the Federal Court of Australia for patent infringement.
Two of these proceedings have now settled with the Court making orders including to restrain the respondents, during the term of Australian patent from infringing the patent in Australia, delivery up of all remaining stock of the infringing shoe charms, payment of costs to Jibbitz, Inc and for the filing of an affidavit setting out the identities and full details of the wholesalers and distributors of the infringing shoe charms in Australia. In one of the proceedings, the respondents will also have to pay to Jibbitz, Inc, 8% of the amount they received in sales of the infringing products. The third proceeding is still ongoing.
What else has Jibbitz, Inc done?
To try and stop the infringing products before they even hit the Australian market, Jibbitz, Inc has also lodged a Notice of Objection with the Australian Border Force. It expires on 18 July 2028.
So, they are small and fun and appealing to both children and adults, and they make an otherwise ugly sandal, attractive. However, they are also serious business and as long as the patent is valid, Jibbetz, Inc looks serious at protecting its rights.
The Jibbitz story is a useful reminder that small ideas can grow, and securing intellectual property rights from the start means all the hard work of growing a business is not in vain.
For more intellectual property insights, follow us at XVII Degrees.
References:
Schmelzer, R., & Schmelzer, S. (2012). System and method for securing accessories to wearable items (U.S. Patent No. US8122519B2). United States Patent and Trade mark Office. Filed May 5, 2006. Issued February 28, 2012. Retrieved from https://patents.google.com/patent/US8122519B2/en
Jibbitz, Inc. (2006). System and method for securing accessories to wearable items (Australian Standard Patent No. 2006269292). IP Australia. Filed 2006. Retrieved from https://ipsearch.ipaustralia.gov.au/patents/
Featured Image by ManuelTheLensman on Unsplash
