Delhi High Court Revives Crocs’ Passing Off Suits Against Bata, Liberty Over Shape Trademark

A lineup of various footwear styles including sneakers, loafers, and a distinctive green clog resembling a Crocs shoe with cartoonish crocodile teeth, symbolizing Crocs amid competitor brands. Featured image for article: Delhi High Court Revives Crocs’ Passing Off Suits Against Bata, Liberty Over Shape Trademark

Summary

In a landmark ruling, the Delhi High Court Division Bench reinstated Crocs Inc.'s passing off suits against Indian footwear companies like Bata and Liberty. The court upheld that common law rights under passing off coexist with statutory design protections.

In a significant ruling, the Delhi High Court’s Division Bench on July 1, 2025, revived the passing off suits filed by Crocs Inc. USA against Indian footwear firms like Bata India and Liberty Shoes in M/S Crocs Inc USA vs M/S Bata India & Ors. Overturning a 2019 Single Judge dismissal, the Bench held the suits maintainable, stating that common law passing off protections coexist with registered design rights under the Designs Act, 2000.

Background

Crocs Inc., the American footwear giant famous for its colorful, clog-style shoes, has long relied on its distinctive shape and trade dress to dominate the market. Registered under Design No. 197685 in India, Crocs’ design features a unique molded shape with ventilation holes and a strap.

In 2015, Crocs discovered that several Indian companies, including Bata, Liberty Shoes, Relaxo, Action Shoes, and others, were allegedly manufacturing and selling footwear that mimicked this exact shape. Crocs filed multiple suits (e.g., CS (Comm) 415/2016) alleging passing off, claiming the defendants were deceiving consumers by passing off their products as Crocs originals. These actions were based on Crocs’ common law rights in its “CROCS SHAPE TRADEMARK/TRADE DRESS,” which they argued had acquired immense goodwill through extensive marketing and sales.

Initially, Crocs had also pursued design infringement claims in separate suits, but following a Full Bench ruling in Mohan Lal v Sona Paints (2013), they filed standalone passing off actions to comply with the law prohibiting composite suits for infringement and passing off.

A Single Judge of the Delhi High Court (“Court”)eventually dismissed these passing off suits on February 18, 2019, deeming them non-maintainable. The court interpreted prior rulings to mean that a registered design couldn’t form the basis of a passing off claim without “something extra” beyond the design itself. Aggrieved by this decision of the Court, Crocs appealed, leading to the Division Bench’s verdict on July 1, 2025.

Key issues before the Division Bench

      1. Whether the suits filed by Crocs Inc. USA (e.g., CS (Comm) 415/2016 and connected matters) were maintainable as actions for passing off under common law principles.
      2. Whether the Single Judge had accurately applied the Full Bench decisions in Mohan Lal (three-Judge Bench) and Carlsberg Breweries (five-Judge Bench).
      3. The implication of the present appeal on the Dart Industries case, if the present appeal is held maintainable.

Sub-issues

In order to determine the maintainability of the suits, the division bench had to also determine:

      1. Whether a passing off action could lie based on a shape or trade dress that is also the subject of a registered design, even during the design’s validity period; and
      2. Whether proof of goodwill in the design (as a source identifier) suffices for passing off, independent of statutory design rights.

Understanding Passing Off in India

Passing off is a common law tort protecting unregistered trademarks or trade dress from misrepresentation. As per Section 27(2) of the Trade Marks Act, 1999, it doesn’t require registration; plaintiffs must prove:

      1. Goodwill/Reputation: The mark or dress is associated with their goods.
      2. Misrepresentation: The defendant’s use deceives consumers.
      3. Damage: Actual or likely harm to the plaintiff’s business.

In contrast, design infringement (under Section 22 of the Designs Act) is a statutory right limited to 10-15 years, focusing on novelty and originality without needing proof of goodwill.

Precedents in Play: Mohan Lal and Carlsberg Breweries

The Single Judge relied heavily on interpretations of two landmark Delhi High Court Full Bench decisions:

      • Mohan Lal (2013): A three-Judge Bench held that while a registered design can’t be used as a trademark during its validity (due to Section 2(d) of the Designs Act excluding trademarks), post-expiry, it could enter the public domain but still support passing off if goodwill exists. Importantly, it clarified that passing off requires “something extra” like overall trade dress, not just the design.
      • Carlsberg Breweries (2019): A five-Judge Bench overruled parts of Mohan Lal, affirming that composite suits (infringement + passing off) are maintainable if common facts exist. It stated that passing off can protect broader “trade dress” elements, even if tied to a design.

The Single Judge concluded that Crocs’ suits were invalid because they hinged purely on the registered design without additional elements.

Court’s Observations and Analysis

On the Maintainability of Crocs’ Passing Off Suits Under Common Law Principles

The Bench observed that passing off is a standalone common law tort, explicitly preserved under Section 27(2) of the Trade Marks Act, 1999, and independent of statutory regimes like the Designs Act, 2000. It requires proving goodwill, misrepresentation, and damage, rather than novelty or originality as in design infringement. The court emphasized that registration under the Designs Act does not extinguish common law rights, allowing Crocs to pursue passing off based on consumer deception from the imitation of its trade dress, provided goodwill is established. Dismissing the suits outright without a trial was erroneous, and crocs should have been afforded an opportunity to prove their claims.

On the Accuracy of the Single Judge’s Application of Mohan Lal and Carlsberg Breweries

The Bench scrutinized the Single Judge’s reliance on Mohan Lal v Sona Paints (2013, three-Judge Bench) and Carlsberg Breweries v Som Distilleries (2019, five-Judge Bench). It noted that Mohan Lal did not prohibit passing off for registered designs if goodwill exists, particularly post-expiry or through broader trade dress elements, and Carlsberg overruled restrictive aspects of Mohan Lal by permitting factual overlaps (e.g., in design presentation and consumer association).

The “larger legal formulation” in these precedents i.e., protecting overall get-up or trade dress, was affirmed as supporting maintainability. The Single Judge’s interpretation, requiring “something extra” beyond the design without exception, was inaccurate, as it overlooked the potential for the design itself to acquire secondary meaning as a source identifier.

On the Implication for the Dart Industries Case

The Bench observed that if Crocs’ suits were maintainable, the related Dart Industries suit (CS (Comm) 837/2016) would similarly survive, as it involved analogous passing off claims tied to a registered design. The Single Judge’s July 17, 2019, order denying interim injunction in Dart’s case (IA 15881/2011) would require re-evaluation on merits, assessing prima facie case, balance of convenience, and irreparable harm based on the same evidence of goodwill and deception.

On the sub-issue of Whether Passing Off Can Lie Based on a Registered Design’s Shape or Trade Dress During Validity

The court analyzed Sections 2(d), 4, 11, and 19 of the Designs Act, noting that while designs exclude trademarks from registration, this does not bar common law passing off during the design’s term. Imitation of shape, configuration, or features can ground a passing off claim if it misrepresents origin, as the Designs Act’s limited monopoly (10-15 years) does not override perpetual goodwill protection. Legislative intent, per the Bench, favors the coexistence of remedies to prevent deceptive practices.

On Whether Proof of Goodwill Suffices Independent of Statutory Design Rights

The Bench affirmed that goodwill in the design as a source identifier is sufficient for passing off, without needing statutory validation. Drawing from Supreme Court precedents like Laxmikant V. Patel v Chetanbhai Shah (2002), it held that consumer association and reputation trump design exclusivity. Policy considerations, including avoiding multiplicity of proceedings under Order II Rule 3 CPC, support this, ensuring fair competition and consumer protection.

Conclusion

The Division Bench allowed the appeals, holding the Crocs suits maintainable and setting aside the Single Judge’s dismissal. The matters were restored for merits adjudication. The Dart appeal was also allowed, remanding the interim injunction issue. No costs were awarded.

Category