Delhi HC revives Crocs' lawsuits against Bata, Liberty, Relaxo over design infringement

New Delhi: The Delhi High Court has revived a series of passing off suits filed by Crocs, USA, against Indian footwear manufacturers, including Bata, Liberty, and Relaxo, over the alleged copying of its distinctive foam clog design.

According to news reports, Crocs had filed multiple suits alleging that Indian companies such as Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising had copied the shape, configuration, and perforated design of its clogs. 

The US-based footwear company argued that these design elements constitute a shape trademark or trade dress and that their imitation misleads consumers and leverages the global goodwill associated with Crocs.

In addition to claims of passing off, Crocs also filed design infringement suits under the Designs Act, 2000. The passing off suits, referred to as the Shape Trademark Suits (STSs), were dismissed by a single judge on February 18, 2019, because such claims were not maintainable.

This reasoning drew from the full-bench decision in Mohan Lal v. Sona Paint and the five-judge bench ruling in Carlsberg Breweries v. Som Distilleries, which were interpreted to bar passing off claims based solely on features protected as designs.

The court had held that Crocs was seeking a “dual monopoly” by attempting to claim perpetual protection under trademark law for a product configuration that was already granted time-bound protection under the Designs Act. It observed that allowing such a claim would undermine the legislative purpose of the Designs Act, which limits exclusive rights to a maximum of 15 years and excludes trademarks from its purview.

According to the report, a Division Bench comprising Justices Hari Shankar and Ajay Digpaul overturned a 2019 ruling by a single judge that had dismissed the suits. The court directed that the matters be restored to the single judge for trial on the merits. The detailed order is yet to be released.

The Division Bench has now reversed this view, enabling the suits to proceed to trial where the issue will be examined in detail.