Delhi High Court reopens Crocs’ legal battle over foam clogs design

The Delhi High Court has reinstated a series of commercial suits filed by Crocs Inc. USA against several Indian footwear manufacturers, reversing a 2019 decision that had dismissed the company's claims of passing off based on the design and shape of its foam clogs.

According to a report by Bar & Bench, a Division Bench comprising Justices C Hari Shankar and Ajay Digpaul set aside the earlier ruling by a single judge, which had held that the suits were not maintainable on grounds that Crocs was seeking protection under both trademark and design law for the same product configuration. The court has now directed that the suits be restored for adjudication on merits by a single judge.

Crocs had initiated multiple suits against companies including Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising, alleging that they had copied the shape, configuration, and perforated design of its clogs. The company claimed these features served as a form of trade dress or shape trademark, misleading consumers and capitalising on Crocs' brand recognition.

In February 2019, the single judge dismissed the passing off suits, termed the Shape Trademark Suits, holding that Crocs could not pursue common law protection under trademark law for the same features already registered under the Designs Act, 2000. The judge ruled this amounted to a "dual monopoly" and could undermine the legislative framework of the Designs Act, which grants limited-term protection for registered designs and excludes trademarks from its scope.

However, the Division Bench has rejected that reasoning, stating that passing off is an independent common law remedy that does not conflict with protections under the Designs Act. "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," the court observed.

The bench also clarified that the precedent set in Carlsberg Breweries v. Som Distilleries does not impose a requirement for passing off claims to involve features beyond those protected by a registered design. "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 ruling stated.

The court found no statutory basis for barring passing off actions based on registered designs, concluding 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."

As a result, the 2019 judgment has been quashed and the suits restored for trial.

 

News