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INTRODUCTION

On 1 July 2025, a Division Bench of the Delhi High Court in Crocs Inc. USA v. Bata India & Ors. considered whether a passing-off action can be maintained when the plaintiff’s product shape is also registered under the Designs Act, 2000. The Court disagreed with a Single Judge who had dismissed Crocs’ passing-off suits at the preliminary stage and held that the common-law remedy of passing off continues to be available even where the subject matter is also registered as a design. The suits were restored for adjudication on their merits.

FACT OF THE CASE

On 28 May 2004, Crocs obtained Design Registration No. 197685 for “footwear” under the Designs Act, 2000. The registration covered the distinctive configuration and shape of Crocs’ clogs. Crocs claimed that over the years, this configuration had become distinctive in the eyes of consumers and was associated exclusively with its products, thereby functioning as its “shape trademark” or trade dress.

In June 2015, Crocs became aware that several Indian footwear manufacturers, including Liberty, Bata, Aqualite, Bioworld, Relaxo, and Action, were manufacturing and marketing footwear closely imitating the shape and overall appearance of Crocs’ clogs. Crocs initially filed suits alleging both design infringement and passing off before the District Court at Patiala House. Following the Full Bench ruling in Mohan Lal v. Sona Paints & Hardwares, which held that actions for design infringement and passing off should be brought separately, Crocs instituted fresh suits before the Delhi High Court confined to the passing-off claim.

On 18 February 2019, a Single Judge of the Delhi High Court dismissed Crocs’ passing-off suits as not maintainable. The Judge relied on the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd., holding that where the subject matter is entirely covered by a registered design, a passing-off action would not lie unless the plaintiff demonstrated additional or “extra” features beyond the registered design. The Judge also indicated that use of a registered design as a trademark could invite cancellation of the design under Section 19(e) read with Section 2(d) of the Designs Act. A related case brought by Dart Industries was dismissed on the same basis.

Crocs challenged these orders by way of appeals. On 1 July 2025, the Division Bench allowed the appeals, set aside the orders of the Single Judge, and directed that the suits be proceeded with from the stage at which they had been dismissed.

ARGUMENTS IN FAVOUR APPEAL

The appellants contended that passing off is an independent, common-law remedy preserved by Section 27(2) of the Trade Marks Act, 1999. A passing-off action seeks to protect goodwill and prevent misrepresentation and is not displaced merely because the same subject matter enjoys design registration under the Designs Act.

It was further argued that the Single Judge had misconstrued the judgment in Carlsberg. According to the appellants, Carlsberg only overruled Mohan Lal on the procedural issue of whether composite suits are permissible, and in fact approved the broader proposition that passing off may be maintained on the basis of overall get-up or trade dress, including product shape. There is no rule of law that requires the plaintiff to show “something more” than the registered design to maintain a passing-off claim.

Crocs submitted that the configuration of its clogs had, through long and extensive use and promotion, acquired distinctiveness and came to identify the source of the goods. The defendants’ imitation of the essential and striking features of this configuration was calculated to mislead the public and cause injury to Crocs’ goodwill, thereby satisfying the established elements of passing off.

Finally, it was argued that the suits could not be dismissed at the preliminary stage. Issues such as whether the passing-off claim relied solely on the registered design or on wider elements of trade dress, and whether the shape had in fact acquired distinctiveness, were questions of fact requiring trial.

In support of their position, the appellants relied on Mohan Lal v. Sona Paints & Hardwares (200 (2013) DLT 322, FB), which recognised the possibility of shape-based trade dress claims, and on Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd. (256 (2019) DLT 1, FB), which confirmed that passing-off and design claims may rest on the same facts and evidence.

ARGUMENTS AGAINST APPEAL

The respondents submitted that Crocs’ design lacked novelty and was common in the trade, and therefore could not claim the distinctiveness required for protection as trade dress.

Liberty argued that its footwear bore its house mark “LIBERTY” and the sub-brand “GLIDER,” and that such prominent branding would prevent any likelihood of confusion, even if the footwear shape was similar.

A further objection was that recognising a passing-off claim based solely on a registered design would effectively transform a time-limited design right (maximum 15 years) into perpetual protection, which would be inconsistent with the scheme of the Designs Act. The respondents relied on Carlsberg to argue that a passing-off action would only lie if the plaintiff relied on additional features beyond the registered design.

The respondents also argued that if a registered design is used as a trademark, it could be cancelled under Section 19(e) of the Designs Act. On that basis, they claimed that Crocs’ reliance on its registered design on finding a passing-off claim was not permissible.

COURT’S DECISION

The Division Bench held that the Single Judge had erred in dismissing the suits as not maintainable. Passing off, it said, is a common-law remedy preserved by Section 27(2) of the Trade Marks Act, independent of statutory rights conferred under the Designs Act. The existence of a design registration does not extinguish the right to bring an action for passing off. The two causes of action are distinct, based on different legal principles and serving different purposes.

The Court clarified that Mohan Lal had recognised that product shape can serve as trade dress and support a passing-off action, while Carlsberg overruled Mohan Lal only on the issue of composite suits. Carlsberg did not create a requirement that passing off must involve features over and above the registered design. The Single Judge had read more into the judgment than it actually decided.

The Division Bench emphasised that the essential test of passing off remains the threefold requirement of goodwill, misrepresentation, and damage. It referred to the Supreme Court’s decision in Birhan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577, which reaffirmed this principle drawing from Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. (2004) 6 SCC 145 and the House of Lords decision in Reckitt & Colman v. Borden [1990] 1 WLR 491 (“Jif Lemon”). The focus in passing off is whether the defendant’s conduct misleads the public, not whether the plaintiff also holds a design registration.

With respect to Sections 2(d) and 19(e) of the Designs Act, the Court observed that while these provisions allow for cancellation of a design if it is used as a trademark, this is a separate matter to be decided in appropriate proceedings. It does not mean that a passing-off claim cannot be entertained.

Finally, the Court stated that whether Crocs’ shape had acquired distinctiveness and whether the defendants’ products caused deception were questions of fact requiring evidence. These issues could not be resolved at the stage of admitting the plaint. Accordingly, the Division Bench allowed the appeals, set aside the order of the Single Judge, and directed that Crocs’ and Dart’s suits be restored and tried on their merits.

CONCLUSION

The judgment establishes that passing off and design protection are not mutually exclusive. The owner of a product shape that is also a registered design may still maintain a passing-off action if the shape has become distinctive of its goods and if imitation by competitors misleads consumers. The Court rejected the notion that passing off requires features beyond the registered design.

This case also discusses that factual issues such as distinctiveness, consumer perception, and likelihood of confusion cannot be resolved without trial. They must be tested by evidence rather than disposed of at the preliminary stage.

By restoring the suits brought by Crocs and Dart, the Delhi High Court observed that the law continues to protect businesses against deception in the marketplace, even when their designs are registered. The decision analyses that the remedy of passing off retains its place alongside statutory design rights, safeguarding the integrity of trade and the interests of consumers.