In a key legal development, the Delhi High Court has restored a set of lawsuits filed by Crocs USA against major Indian footwear brands, including Bata, Liberty, Relaxo, and Aqualite, for allegedly copying its distinctive clog design.
The suits, which were dismissed earlier by a single judge, have now been reinstated by a division bench of Justices C. Hari Shankar and Ajay Digpaul. The court ruled that a company can pursue a passing off claim even if the disputed design is already registered under the Designs Act.
The High Court clarified that a registered design does not prevent a brand from seeking protection under common law rights if someone is using that design, or a similar one, to mislead consumers into thinking the product is theirs.
“Passing off is a distinct right, which resides in its own common law space… There appears to be no justifiable reason to limit passing off to the use of one’s trademark, or even trade dress,” the court observed.
What is this case about?
Crocs USA had sued multiple Indian brands, claiming they were passing off lookalike footwear using the design of Crocs’ signature clogs. The single judge had earlier dismissed the claims, saying once a design is registered under the Designs Act, a passing off claim cannot be made for the same design.
However, the division bench disagreed, citing the 2013 Mohan Lal v. Sona Paints judgment, which allows separate legal actions for design infringement and passing off, even if based on the same design.
What did the Court say? In its 70-page ruling, the court stated that:
A passing off claim doesn’t need “something more” beyond the design itself.
Design infringement and passing off can coexist, based on the same visual element.
If a company uses the design not just as a trademark, but as part of its overall product packaging, trade dress, or presentation, it could amount to passing off.
Carlsberg Breweries v. Som Distilleries (2019), which had a five-judge bench, does not bar passing off claims alongside design infringement.
“Commercial use of the registered design of the plaintiff by the defendant… so as to pass off its goods as the goods of the plaintiff, would certainly justify a claim for passing off,” the bench held.
What's next?
The court has directed the single judge to proceed with Crocs’ suits, which means the cases against Indian footwear makers are now back on track.
(With inputs from Live Law)
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