Delhi HC Revives Passing Off Claims Against Top Indian Shoe Companies
- A Division Bench restored Crocs Inc.’s passing off suits against several Indian footwear companies, allowing the case to proceed on merits.
- The Court ruled that common law passing off claims can be pursued independently of registered design rights under the Designs Act.
- The judgment confirms that product design elements like shape and configuration can qualify as trade dress and be protected under trademark law.
In a significant development in the realm of intellectual property law, a Division Bench of the Delhi High Court on Tuesday reinstated a batch of commercial suits filed by Crocs Inc. USA against several prominent Indian footwear manufacturers. The ruling overturned a 2019 judgment by a single judge, which had dismissed Crocs’ claims of passing off concerning the distinctive design of its iconic foam clogs.
The Division Bench comprising Justices C. Hari Shankar and Ajay Digpaul held that the single judge had erred in law by dismissing the suits at the preliminary stage. 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 suits, originally filed by Crocs against companies including Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising, alleged that these manufacturers had copied the shape, configuration, and perforated design of Crocs’ clogs. The U.S.-based footwear giant claimed that these visual elements functioned as a shape trademark or trade dress, and that the defendants were engaged in passing off, thereby misleading consumers and unfairly capitalizing on Crocs’ global reputation.
The litigation included both design infringement suits under the Designs Act, 2000, and passing off suits under common law collectively referred to as the Shape Trademark Suits (STSs). All six STSs were dismissed in 2019 by a single judge, who held that the claims were not maintainable.
The 2019 ruling had reasoned that Crocs was seeking to establish a ‘dual monopoly’ claiming perpetual trademark protection through common law for features already protected under the Designs Act for a limited 15-year term. The judge concluded that permitting such a passing off claim would run contrary to the legislative intent of the Designs Act, which expressly excludes trademarks from the definition of protectable design features.
This conclusion was based on interpretations of landmark decisions in Mohan Lal v. Sona Paint and Carlsberg Breweries v. Som Distilleries, with the court taking the view that features protected as designs cannot simultaneously be enforced as trademarks through a passing off action unless they offer 'something more' than the registered design itself.
However, the Division Bench rejected this restrictive interpretation, clarifying that neither the Designs Act nor the Carlsberg ruling imposes a legal bar on bringing a passing off claim in respect of a registered design. The Bench observed: “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 Bench reinforced the principle that passing off is a standalone common law remedy, independent of statutory rights under intellectual property laws. “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,” the court held.
After closely examining relevant statutes and judicial precedents, the court concluded that there is no legal prohibition on maintaining a passing off action involving a product feature that is also a registered design. “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 Bench observed.
Accordingly, the impugned judgment dated February 18, 2019, was quashed and all six commercial suits filed by Crocs were restored to be heard on merits. The Court ordered that the matter be placed before the original single judge for trial and adjudication.
Senior Advocate J Sai Deepak appeared on behalf of Crocs, assisted by advocates Shravan Kumar Bansal, Ajay Amitabh Suman, Rishi Bansal, and Avinash Kumar Sharma from United & United.
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Bata India was represented by Neeraj Grover, Angad Deep Singh, Mohona Sarkar, and Kashish Vij, while Liberty Footwear was represented by Saikrishna Rajagopal, Julien George, Arjun Gadhoke, Deepika Pokharia, and N Parvati.
The ruling is expected to have far-reaching implications in design and trademark law, especially concerning the overlap between statutory and common law rights and the evolving recognition of product configuration as protectable intellectual property in India.
