Supreme Court rejects pleas against revival of Crocs design suit

The Supreme Court has upheld a Delhi High Court order reviving Crocs' passing-off suits against Indian footwear makers, ruling that such claims can proceed even when trade dress is a registered design

The Supreme Court on Friday declined to entertain challenges brought by Bata India, Liberty Shoes and several other footwear makers against a Delhi High Court ruling that revived Crocs Inc’s passing off suits over its signature footwear design. A Bench of Justices Sanjay Kumar and Alok Aradhe upheld the High Court’s view that a passing off action can proceed even when the underlying trade dress is protected as a registered design under the Designs Act.

 

With this, the apex court left undisturbed the Division Bench ruling of July 1 that had restored Crocs’ suits against multiple domestic manufacturers.

 

While refusing to interfere, the court directed the single judge of the trial court before whom the suits are pending to decide them independently and without being influenced by observations made by the High Court or the Supreme Court. It also left the broader legal question open.

   

What did the footwear makers argue against Crocs’ passing off suits?

 

Senior Advocate Neeraj Kishan Kaul, representing Bata India, Aqualite Industries, Bioworld Merchandising, Relaxo Footwears and Action Footwear entities, argued that a passing off claim cannot stand when the grievance concerns alleged design infringement. He contended that the Designs Act provides only a limited statutory monopoly, and allowing passing off actions in such circumstances would effectively extend that protection.

 

The Bench, however, noted that a Full Bench of the Delhi High Court in Carlsberg Breweries v Som Distilleries had already held that claims for design infringement and passing off can be pursued in a single proceeding. Kaul maintained that Carlsberg, in fact, implied that a standalone passing off claim is impermissible when the dispute centres exclusively on a registered design.

 

What concerns were raised by Liberty Shoes?

 

Appearing for Liberty Shoes, Senior Advocate Saikrishna Rajagopal submitted that Carlsberg requires something more than the ingredients of design infringement to sustain a passing off action, additional elements that, according to him, Crocs had not pleaded. He warned that permitting such suits would enable rights holders to prolong a monopoly beyond the 15-year limit prescribed under Section 11 of the Designs Act by resorting to the trademark route.

 

The Bench observed that Crocs’ design was not registered as a trademark in India.

 

How did Crocs defend its claim?

 

Senior Advocate Akhil Sibal, representing Crocs, countered that passing off is a common law remedy distinct from the statutory action for infringement and is not excluded by the Designs Act. He stressed that Crocs’ suits, pending for more than a decade, seek only to protect the goodwill generated by its trade dress, which he described as instantly recognisable since 2004. The remedy, he argued, is rooted in user-based reputation, unlike design infringement, which depends on registration.

 

Sibal contended that the essentials of a passing off action — goodwill, misrepresentation and damage — are materially different from the elements of design infringement and that the High Court’s ruling merely applies settled first principles.