Delhi HC restores Crocs’ passing-off lawsuits against Bata, Liberty, Relaxo

On July 1, the Delhi High Court’s Division Bench, comprising Justices C. Hari Shankar and Ajay Digpaul, reinstated a series of passing-off suits filed by Crocs Inc. USA against prominent Indian manufacturers Bata, Liberty Shoes, Relaxo, Action Shoes, Aqualite, and Bioworld.

This decision overturns a single-judge ruling from February 18, 2019, which had dismissed the suits at the preliminary stage as untenable, but the High Court found that was a legal error, according to a Bar and Bench report.

The core of Crocs’ case lies in its claim that the distinct shape, contour, and perforated pattern of its foam clog qualify as a protectable ‘shape trademark’ or “trade dress.” The reinstated passing-off suits, also referred to as Shape Trademark Suits (STSs), argue that the Indian companies’ emulation of these design elements deceives consumers and leverages Crocs' well-established global brand identity.

Read more: From Foam to Fame: How Crocs is strutting its way into the India market

The single-judge dismissal had been grounded in the logic that Crocs was seeking “dual monopoly” attempting to extend perpetually common law trademark protection over product configurations already covered by limited-term statutory design registration under the Designs Act, 2000. The judge cited precedents like Mohan Lal v. Sona Paint and Carlsberg Breweries v. Som Distilleries, interpreting that design registration precludes passing-off claims.

But the division bench disagreed, clarifying that those holdings did not strip Crocs of its right to seek common law remedies. As the court noted, "passing off is a distinct right, which resides in its own common law space, apart from and independent of ... the Designs Act." The Bench directed the case be remanded to the original single judge for a full trial on the merits.