Overview
This case revolves around the pivotal question of whether a passing off action can be sustained in relation to a design that had earlier been protected under the Designs Act, 2000 but whose registration has since expired.
Crocs Inc. USA initiated suits against multiple footwear companies alleging passing off of its distinctive footwear shape, asserting that its design had acquired independent goodwill and recognition in the minds of consumers.
The learned Single Judge dismissed the suits on the ground that the shape in question was previously a registered design, and therefore, to claim trade dress rights in it, the plaintiff had to establish “something extra” beyond the registered design.
The Division Bench of the Delhi High Court examined the legal tenability of this reasoning and reversed the Single Judge’s decision, settling critical principles of intellectual property law.
Factual Background
Crocs Inc. USA was the registered proprietor of Design No. 197685 dated 28 May 2004 under the Designs Act, 2000. The design related to a specific configuration of footwear, which Crocs claimed had become globally recognized as a source identifier.
Upon expiry of the design’s statutory protection, Crocs filed multiple suits against companies such as Bata India, Liberty Shoes, Relaxo Footwear, Aqualite, Bioworld, and Action Shoes. Crocs alleged that these companies had copied its unique footwear configuration, thereby misrepresenting their goods as those of Crocs, amounting to common law passing off.
Crocs asserted that even though statutory protection had expired, the shape had, through extensive use and market presence, attained independent goodwill protectable under trademark law as trade dress.
Procedural Background
Crocs instituted a series of suits for passing off before the Delhi High Court: CS (Comm) 569/2017, 1415/2016, 903/2018, 906/2016, 571/2017, and 905/2016.
The learned Single Judge, by a common judgment dated 18 February 2019, dismissed all suits as not maintainable, holding that Crocs had failed to show any features beyond the registered design to support its claim of trade dress.
Crocs preferred Regular First Appeals (OS) (Comm) 22 to 27 of 2019 challenging the dismissal. Additionally, a related matter involving Dart Industries Inc. was also clubbed: FAO (OS) (Comm) 358/2019.
Legal Issue
The central legal issue was whether a passing off action based on trade dress could be maintained after the expiry of statutory design protection, and whether the claimant needed to demonstrate elements “in addition” to the registered design to sustain such a claim.
Discussion on Judgments
The learned Single Judge relied on the Five-Judge Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 256 (2019) DLT 1 (FB), and interpreted it to mean that once a shape was registered as a design, it could not later be protected as a trademark unless there was “something extra” beyond the registered design.
The Single Judge also referred to the Full Bench ruling in Mohan Lal v. Sona Paint & Hardware, 200 (2013) DLT 322 (FB), supporting the view that passing off and design infringement are conceptually distinct and should be based on different grounds.
The Division Bench, however, undertook an in-depth examination of both Mohan Lal and Carlsberg. It observed that the majority in Mohan Lal had permitted a passing off action for a previously registered design, so long as goodwill, misrepresentation, and likelihood of confusion were established.
The Bench clarified that Carlsberg did not override Mohan Lal, and the idea of requiring “something extra” was not an accurate representation of law. The Court emphasized that common law remedies survive post design expiry, and trade dress rights may be enforced based on consumer association and market goodwill.
Reasoning and Analysis of the Judge
The Division Bench held that the Single Judge misapplied Mohan Lal and over-interpreted certain paragraphs in Carlsberg, which were merely explanatory. The Court reaffirmed that passing off is an independent tort protecting goodwill and preventing consumer deception, irrespective of prior design registration.
The Court clarified that proving “something extra” is not a legal necessity for sustaining a passing off action. What matters is whether the product configuration has come to denote the source in the public’s mind.
If the public associates the shape with Crocs, it is sufficient to establish trade dress. The Court reiterated that design and trademark regimes can operate sequentially—design protection may end, but trade dress protection can begin based on market recognition.
Final Decision
The Division Bench allowed all appeals filed by Crocs. It set aside the judgment of the learned Single Judge dated 18 February 2019 and held that the passing off suits were maintainable. The matters were remanded back for adjudication on merits in accordance with law.
Law Settled in This Case
A trade dress claim can be validly founded on a design previously registered under the Designs Act, once the statutory protection has lapsed. There is no legal requirement to demonstrate “something extra” beyond the registered design. A shape that has acquired goodwill and functions as a source identifier may be protected under the common law of passing off.
Case Details
- Case Title: Crocs Inc. USA Vs. Bata India Ltd.
- Date of Order: 1 July 2025
- Case Numbers: RFA (OS) (Comm) 22/2019 to 27/2019; FAO (OS) (Comm) 358/2019
- Neutral Citation: 2025:DHC:5037-DB
- Name of Court: High Court of Delhi
- Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539
