Case Name: M/S Crocs Inc Usa vs M/S Bata India & Ors
Citation: M/S Crocs Inc USA v. M/S Bata India & Ors, RFA (OS) (Comm) 22/2019, Delhi High Court
Court: Delhi High Court
Coram: Hon’ble Mr Justice C. Hari Shankar, Hon’ble Mr Justice Ajay Digpaul

Abstract
This case comment analyses Delhi High Court’s decision in the Crocs Inc vs Bata and Others case. It explores use of precedents, differentiation between passing off and design infringement, and summarises the rationale for their decision.

Introduction
Passing off is a form of intellectual property enforcement utilised when a trademark is unregistered, or an infringement case is unlikely to be successful. It protects the “trade dress”, the appearance of a product along with its unique nature and general feel. An industrial design protects the visual elements of an object, like its shape, colour and pattern. A design is registered in law, and various statutory remedies exist for its enforcement.

Naturally, there’s substantial overlap in both. They both protect the visual elements of a product. The solution seems clear – when a design has been registered, no need for a passing off suit. When a design is unregistered, allow one. Right?

But that’s … not how it works. Sometimes, even in the event of blatant infringement, a design infringement suit won’t work.

An example of this is the Crocs v Bata case. Crocs registered its clogs in 2004, and had a monopoly on the design for 15 years, until 2019. When it saw multiple Indian companies making the very same shoes, it sued them for design infringement. The problem is that its design was on thin ice. The defendants found that the perforated clogs were in the public domain before their registration in India. Exclusivity is an essential element to register a design.

So their safer bet was to file a passing off suit. A single judge initially dismissed their case. If they already have a design registered, how could they simultaneously enjoy the benefits of a passing off case? They appealed this decision.

What followed was a discussion on whether it is appropriate to file a passing off suit while holding a design registration, and if so, when, by understanding and reinterpreting precedents. 

Facts

M/S Crocs Inc USA vs M/S Bata India & Ors was heard in the Delhi High Court. Crocs Inc USA held Indian Design Registration No. 197685 for the design of its shoes, particularly their unique shape. They alleged that the defendants, including Bata and Liberty Shoe, were selling footwear identical to their own design. Consequently, Crocs sued them for both passing off and design infringement.

 Because the shape had already been registered as a design, the dispute centred around whether Crocs could simultaneously claim a trade dress.

A single-judge bench initially dismissed the appellant’s various suits on the grounds of maintainability, ruling that since Crocs already held a design registration, they could not use the same shape as a trade dress to file for passing off. Aggrieved by this decision, Crocs subsequently appealed to a Division Bench.

Issues
The core issue was whether a passing off action can be maintained by a plaintiff for a product shape that is also registered as a design under the Designs Act.

Reasoning
After much deliberation on the nature of the Designs Act, the court ruled in the appellant’s favour, setting aside the single judge’s order.

They primarily referred to Mohan Lal v Sona Paints & Hardware, and Carlsberg v. Som Distilleries. In Mohan Lal, it was found that a composite suit for passing off and infringement of a registered design would not lie. But it was conceded that the holder of a design registration could file a passing off suit as long as the trade dress included “get up, presentation of the product by packaging”, not simply the same elements as the design.

The court corrected this interpretation. They clarified that as long as visual elements, even those overlapping with the design, are parts of the larger trade dress, a passing off action can be filed.

 In Mohan Lal v Sona Paints & Hardware, the court did not object to filing a passing off suit while having a registered design because they found nothing to the contrary in the Designs Act. However, Section 19(e) states that a registration can be cancelled if it is not defined as a design under Section 2(d). Section 2(d) explicitly excludes trademarks from its ambit. The court corrected this error of law.

This supported their conclusion – a passing off suit is a separate remedy from a design registration. Even if Crocs’ design registration could be cancelled, it could use a passing off remedy to protect its broader trade dress.

Critique
A counterargument against the court’s decision is the potential evergreening of design rights. Overlap between trade trade dress and design is commonplace. When a company’s design has expired, passing off remedies can be leveraged to protect roughly the same elements, differently described.  However, the purpose of the decision was to clarify a distinction. It reconciled the contradictions in previous judgements – a passing off suit and design infringement have fundamentally different goals, which is why they can be used in relation to a single product.  If adjudication in future cases rigorously emphasizes these differences, misuse can be minimized.  

Impact
In such cases,  defendants used the fact a design for the same product had already been registered, and a passing off suit was thus not maintainable. Even if there was a genuine argument for a larger trade dress, previous interpretations of Mohan Lal would have the case immediately dismissed.

The new interpretation allows the statutory remedies in the Designs Act and the common law remedy of passing off to harmoniously coexist. 

Conclusion
If you find the difference between passing off and design infringement confusing, don’t worry – clearly, the courts do too. Hopefully, the Delhi High Court’s distinction helps clear up confusion in cases involving the difference between trade dresses and designs and when appropriate to use either course of action.

References
M/S Crocs Inc Usa vs M/S Bata India & Ors (2025) , RFA (OS) (Comm) 22/2019, Delhi High Court
Mohan Lal v Sona Paints & Hardware (2013)  CS(OS) 384/2008