Delhi High Court revives Crocs Inc.’s passing off suits against major Indian shoe brands for allegedly copying its iconic foam clog design. The court has ordered a full trial to proceed.
New Delhi: Today, on July 01, in a significant development, a Division Bench of the Delhi High Court on Tuesday reversed a 2019 ruling by a single judge which had earlier dismissed a group of lawsuits filed by Crocs Inc. USA.
These suits were against several Indian footwear companies, which Crocs accused of copying the unique design and appearance of its popular foam clogs.
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The Bench comprising Justices C Hari Shankar and Ajay Digpaul restored Crocs’ legal claims concerning “passing off” and directed that the matter be returned to the single judge for a full trial.
The dispute revolves around the iconic shape, configuration, and perforated design of Crocs’ foam clogs, which the US-based company considers to be its signature identity or “trade dress.”
Crocs had initiated multiple lawsuits before the Delhi High Court, seeking permanent injunctions against companies like Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising.
Crocs claimed these companies had copied its clog design, thereby confusing customers and unfairly benefiting from the reputation Crocs has built globally.
Crocs contended that the copied design elements – especially the shape and holes – function not merely as design features but as a distinctive trademark or brand identifier, which is protected under common law trademark principles.
In addition to the passing off suits, Crocs had also filed separate lawsuits for design infringement under the Designs Act, 2000, based on its registered designs.
The passing off lawsuits, often referred to as the Shape Trademark Suits (STSs), were clubbed and heard together.
However, in a decision dated February 18, 2019, the single judge dismissed all six passing off suits at a preliminary stage. The judge held that such suits were not legally maintainable.
The reasoning behind the dismissal was rooted in the belief that Crocs was seeking a form of “dual monopoly.”
According to the Court, Crocs was attempting to enjoy perpetual protection under trademark law for the same product configuration that was already granted limited-time protection under design law.
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The single judge noted that the Designs Act provides for a maximum of 15 years of protection, and this protection ends after the expiry of the term.
Hence, allowing trademark protection for the same design would essentially grant Crocs an indefinite monopoly, defeating the very intention of the Designs Act.
The Court said that such actions would
“undermine the legislative intent of the Designs Act,” as the Act “deliberately excludes trademarks from the definition of a protectable design.”
The ruling relied heavily on two previous important decisions – a full bench ruling in Mohan Lal v. Sona Paint and a five-judge bench decision in Carlsberg Breweries v. Som Distilleries.
These cases were interpreted by the Court to mean that companies cannot bring passing off suits solely based on features that are already protected under design law.
In short, the single judge had concluded that Crocs was not allowed to seek trademark-style protection for a registered design.
However, the Division Bench has now overturned that decision, reviving Crocs’ passing off claims and giving the company another chance to argue its case on merits.
The Bench made it clear that the earlier dismissal was not legally sustainable and therefore ordered that the matter be sent back to the single judge who will now conduct a full trial and hear all arguments before deciding the issue.
A detailed copy of the Division Bench’s order has not yet been released to the public.
Crocs was represented in court by Senior Advocate J Sai Deepak, along with a legal team comprising advocates Shravan Kumar Bansal, Ajay Amitabh Suman, Rishi Bansal, and Avinash Kumar Sharma from the law firm United & United.
On the other hand, Bata India was represented by advocates Neeraj Grover, Angad Deep Singh, Mohona Sarkar, and Kashish Vij. Liberty Shoes was represented by advocates Saikrishna Rajagopal, Julien George, Arjun Gadhoke, Deepika Pokharia, and N Parvati.
Case Title:
Crocs Inc. USA v. Bata India Ltd. & Ors.
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