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In a significant ruling, the Delhi High Court has reinstated a series of lawsuits filed by Crocs USA against major Indian footwear brands, including Bata, Liberty, Relaxo, and Aqualite, over alleged imitation of its iconic clog design.
The division bench of Justices C. Hari Shankar and Ajay Digpaul overturned an earlier decision by a single judge who had dismissed the suits on the grounds that Crocs could not pursue a “passing off” claim since its design was already registered under the Designs Act. The new ruling clarifies that even with a registered design, a company retains the right to seek protection under common law if a competitor is misrepresenting a similar design in a way that misleads consumers.
“Passing off is a distinct right, which resides in its own common law space,” the bench noted, emphasizing that such claims are not confined to trademarks alone, but can also apply to visual designs, trade dress, and product presentation.
Crocs had originally accused the Indian companies of attempting to pass off lookalike products as their own, leveraging the popularity and distinctiveness of Crocs’ clog design. The court ruled that such passing off claims can proceed independently of registered design infringement cases, reaffirming legal precedent set by the 2013 Mohan Lal v. Sona Paints case.
Crucially, the judgment distinguishes passing off as a separate remedy, stating that companies can simultaneously pursue claims of design infringement and passing off based on the same visual elements. The court also clarified that the five-judge ruling in Carlsberg Breweries v. Som Distilleries (2019) does not restrict this dual approach.
The division bench has directed the single judge to now hear the revived lawsuits on their merits. With this ruling, Crocs’ legal battle against Indian shoemakers is officially back on track, potentially setting the stage for a high-profile showdown in India's footwear industry over design rights and brand identity.
