M/S CROCS INC USA v. M/S BATA INDIA & ORS.

Recently, a Division Bench of the Delhi High Court allowed six appeals filed by Crocs Inc. against prominent footwear manufacturers in India viz Bata, Liberty, Relaxo, Aqualite, Action Shoes and Bioworld, in a passing-off action. The appeal overturned the single judge’s order which had dismissed Crocs’ suits on the ground that once a design is registered under the Designs Act, the entity cannot separately claim passing off. Essentially, the single judge had opined that Crocs was attempting to assert a “double monopoly” by invoking both statutory design rights and common law protection. Crocs appealed, arguing that registration under the Designs Act does not extinguish its common law goodwill in its clog’s trade dress.

The Division Bench stressed that passing-off is an independent common law remedy whose availability can be curtailed only by express statutory exclusion, something neither the Trade Marks Act nor the Designs Act provides. It found the single judge had misinterpreted the Carlsberg case which merely cautions that, at trial, a plaintiff must prove goodwill in more than the bare design, but it does not bar the suit at inception. Whether Crocs relies solely on the registered design or on broader get-up is a factual matter requiring evidence.

Accordingly, the division bench set aside the impugned judgment and allowed all six appeals with no order as to costs. The ruling revives Crocs’ passing-off claims, affirming that design registration does not, by itself, negate common law rights in a product’s trade dress, and that Indian IP law permits dual protection i.e., registration under the Designs Act and passing-off relief, provided the appellant/plaintiff proves reputation, misrepresentation, and likelihood of damages. The court further acknowledged that even if a design has some functional elements, it can still acquire distinctiveness over time. When consumers come to associate a particular shape or configuration with a specific brand, it merits protection that extends beyond mere technical design registration. The court stated that a passing off claim does not need extra or new features apart from the registered design. The design itself, once distinctive, is sufficient to establish misrepresentation.

The defendant footwear manufacturers will now face trial on allegations that their foam clogs misrepresent origin by imitating Crocs’ distinctive trade dress. M/S CROCS INC USA v. M/S BATA INDIA & ORS. (2025:DHC:5037:DB) Read the judgement copy here