Citation: M/S Crocs Inc USA v. M/S Bata India & Ors., 2025 (India July 1, 2025).

Court: Delhi High Court

Coram:  Justice C. Hari Shankar and Justice Ajay Digpaul

Abstract

A Division Bench of Delhi High Court, on 1 July 2025, reversed the dismissal of a Single Judge of passing-off of six suits filed by Crocs Inc, holding that the registering a footwear shape as a design under the Designs Act,2000 will not preclude its proprietor from suing separately for passing off which would be based on the same shape as unregistered trade dress. The Division Bench clarified and resolved the conflict between Mohan Lal and Carlsberg Breweries and added that no “additional feature” beyond the design that is registered is required to sustain a passing-off claim.

Introduction

A Division Bench of the Delhi High Court which comprised of Justices C. Hari Shankar and Ajay Digpaul, on 1 July 2025, had set aside a dismissal made by a single Judge of six passing-off suits which was filed by Crocs Inc, restored a significant question that has remained unanswered and never been fully settled, whether the same shape that earns a plaintiff a registered design under the Designs Act,2000 can also function as a protectable trade dress under the common law. The Single Judge’s interpretation of the decision of the five-judge bench in Carlsberg Breweri meant that having merely a registered design isn’t enough to bring on a passing-off claim. It was required by the plaintiff to show some additional element beyond the design before a passing-off action could have succeeded. This appeal has arisen from an order that dismissed the suits and was then reviewed by the Division Bench in its original capacity. Thus, this reversal is a correction within the same court’s appellate hierarchy rather than being a fresh view of a coordinated bench, and this matter has now returned to the Single Judge for trial on merits.

 Facts

Crocs Inc had held a Design Registration 197685 (2004) for its distinctive footwear shape and had separately claimed that this shape had over time acquired a goodwill of its own as an unregistered “CROCS SHAPE TRADE DRESS.” Crocs Inc had filed individual passing-off suits against companies like Bata, Liberty, Aqualite, Bioworld, Relaxo, after the requirement of filing separate suits of design infringement and passing-off as held in Mohan Lal’s case. Crocs Inc had alleged all the companies that they had copied the shape and they were misrepresenting its goods as Crocs. There was a parallel suit by Dart Industries which had raised the identical legal question. A Single Judge Bench, on 18 February 2019 dismissed all six suits filed by Crocs Inc that they are not maintainable, holding that Crocs had not pleading anything different from its registered design and thus reading Carlsberg Breweries as barring the claim outright. Crocs and Dart Industries, appealed to this dismissal, and it was this batch of appeals that the Division Bench decided on 1 July 2025, and set aside the Single Judge’s order and restored the suits for trial. 

Issues:

1. Whether a proprietor of a registered-design maintains a passing-off over the identical shape without pleading any additional distinguishing features.
2. What did Carlsberg Breweries’ “larger legal formulation” (approving Mohan Lal) actually hold, versus the “smaller” formulation it called “inaccurate”?

Reasoning

On issue 1:
The Division Bench had held that the passing-off requires only the classical trinity, like the goodwill, misrepresentation and resulting damage, out of which none is dependent on showing any features that are beyond the design that is registered. Justice Mehta’s opinion in the case of Carlsberg (relevant paragraphs:65-69) had accepted that the passing-off can be rested upon the features like shape or color combination which are used as the trademarks, and these are the same elements that comprise the designs. Since, both the causes of action arises from the same transaction, which is defendant’s sale of imitative product, the Bench reasoned that there is no requirement of a statute or a precedent that demands an additional “extra” ingredient. The requirement set by the Single Judge had no textual basis in Mohan Lal or Carlsberg itself.

On issue 2:
The Division Bench had closely examined Justice Bhat’s opinion and had explained that “smaller” formulation, meaning that the post-registration trademark that uses design faces no cancellation risk and called it “inaccurate”, just because it had ignored Section 19(e) of the Designs Act. The Court then explained that the “larger” formulation which was approved in Carlsberg was a broader principle of Mohan Lal that says that the passing-off is not confined to the trademark use alone but it extends to trade dress, packaging and overall presentation. Since, there exists no requirement of “something extra” beyond the design in the case of Mohan Lal, approving its larger formulation would not import one. The Single Judge had treated the narrower, criticized observation mistakenly as governing the whole inquiry.

Critique

This judgment’s strength lies in separating correctly the passing-off’s common law and goodwill-based character from design law’s time-bound statutory monopoly, preventing the Design Act’s fifteen-year cap from extinguishing silently an independent perpetual right. The careful textual observation of Justice Bhat’s “larger v. smaller formulation” resolves a genuine ambiguity rather than picking off one precedent over another by fiat. However, the gap is functionality, the liberty’s defence of clog shape being pre-existing, functional design in public domain going unaddressed, as the Bench had confined itself to maintainability rather than of merits. This reasoning was left untested and it risked letting the design proprietors extend the protection indefinitely through the passing-off once the term of registration lapses, without establishing first that the shape is even capable of serving as a source identifier rather that of a functional form.

Impact

This ruling restores all of the six suits of Crocs Inc and the connected Dart suit for adjudication on merits, ending the period of six years of suspended litigation. Additionally, it gives the proprietors of the registered-design a clearer route to invoke the passing-off once there is an expiry of design protection’s terms which is relevant across footwear, packaging, and FMCG sectors, which is built around distinctive product shapes. This judgment helps to understand that when two Full Bench decisions are seen in conflict, the courts shall not assume that the later Bench has completely overruled the earlier decision, but they must examine what the later Bench has approved and what they have rejected.

Conclusion

The Division Bench through this judgment restores that a company can simultaneously have a registered design and an unregistered trade dress claim over the same shape that are not mutually exclusive. The Court preserved passing off claims. Crocs must still prove goodwill and non-functionality.

References

M/S Crocs Inc USA v. M/S Bata India & Ors. (2025) RFA (OS) (Comm) 22/2019, Delhi High Court

Mohan Lal v. Sona Paint & Hardwares (2013) SCC OnLine Del 1980

Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd. (2019) SCC OnLine Del 7145

The Designs Act, 2000

The Trade Marks Act, 1999