A Division Bench of the Delhi High Court on Tuesday set aside a 2019 single judge ruling that had dismissed a batch of suits filed by Crocs Inc. USA against several Indian footwear manufacturers over copying of its distinctive shape and design..A Bench of Justices Hari Shankar and Ajay Digpaul revived the US company's claims of passing off over the distinctive shape and design of its foam clogs.The Court ordered that the suit be restored to the file of a single judge, who is expected proceed with the trial. The Court ruled "We are constrained, therefore, to hold that, in declining to do so, and dismissing Crocs' suits as not maintainable, the learned Single Judge, in our respectful view, erred in law.".The litigation initiated by Crocs Inc. USA before the Delhi High Court concerns the alleged passing off of its distinctive foam clogs by several Indian footwear manufacturers. Crocs claimed that companies such as Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising copied the shape, configuration, and perforated design of its clogs—elements that Crocs argued function as a shape trademark or trade dress, thereby misleading consumers and riding on the reputation Crocs has built globally..Crocs filed multiple suits seeking permanent injunctions against these companies for passing off, in addition to separate suits for design infringement based on its registered designs under the Designs Act, 2000. The suits concerning passing off—referred to as the Shape Trademark Suits (STSs)—were heard together..In a judgment dated February 18, 2019, a single-judge of the Delhi High Court dismissed all six passing off suits at the preliminary stage, holding that they were not maintainable. The core reasoning was that Crocs could not claim passing off protection for the same product configuration that was already protected as a registered design. The Court held that Crocs was attempting to assert a “dual monopoly”—seeking perpetual common law protection under trademark law for what was already granted limited-term statutory protection under the Designs Act..The single-judge concluded that permitting a passing off action based entirely on a registered design would undermine the legislative intent of the Designs Act, which deliberately excludes trademarks from the definition of a protectable design and limits exclusive rights to a maximum of 15 years. The Court relied on the full-bench ruling in Mohan Lal v. Sona Paint and the five-judge bench decision in Carlsberg Breweries v. Som Distilleries, interpreting them to bar passing off suits that are based solely on features already protected as designs.This has now been overturned by the Division Bench which has asked the single-judge to hear the matter on merits..The Division Bench rejected the restrictive interpretation of the Carlsberg Breweries judgment that had been used to justify dismissing the suits, clarifying that no additional elements beyond the registered design are required for a passing off action. The Court stated: "We cannot, therefore, read, into para 43 of Carlsberg, any proposition that an action for passing off would lie only if the subject matter of the action is 'something more' than the subject matter of the design registration." .The Court emphasised the independent status of passing off as a common law remedy that operates separately from statutory intellectual property protections. The judgment established that "passing off is a distinct right, which resides in its own common law space, apart from and independent of, the confines and constraints of the Trade Marks Act, or the Designs Act, or, for that matter, any other statute.".After examining the relevant statutes and precedents, the Court determined there was no legal prohibition preventing passing off actions involving registered designs. The Court found that "no proscription against such a passing off action is to be found in the Trade Marks Act, or the Designs Act, or in Mohan Lal or Carlsberg.".The Division Bench set aside the impugned judgment and restored all the commercial suits for adjudication on merits. "As a result, the impugned judgment, dated 18 February 2019, of the learned Single Judge, is quashed and set aside," the Court concluded, allowing all appeals and restoring the suits for hearing on merits..Crocs was represented by Senior Advocate J Sai Deepak along with advocates Shravan Kumar Bansal, Ajay Amitabh Suman, Gaurav Gogia, Rishi Bansal from United & United along with Advocate Avinash Kumar Sharma. .Bata was represented by advocates Neeraj Grover, Angad Deep Singh, Mohona Sarkar and Kashish Vij. .Liberty Footwear was represented by advocates Saikrishna Rajagopal, Julien George, Arjun Gadhoke, Deepika Pokharia and N Parvati.
