Introduction

The world of intellectual property law is often fraught with confusion and legal complexities, particularly when it comes to the nuanced interplay between trademark rights and design rights. One case that highlights these complexities is “Crocs Inc USA & Dart Industries Inc v Bata India Ltd & Ors RFA (OS) (Comm) 22/2019,” which was pronounced by the Division Bench of the Delhi High Court on July 1, 2025. This landmark case examined the protectability of product shape and design under Indian law, specifically focusing on passing off actions concerning products that possess registered designs. Understanding the nuances of this case is essential for businesses that rely on unique product designs for brand identity and market presence.

Background: The Parties and Disputes

“Crocs Inc.,” the well-known footwear brand, holds several design registrations under the Designs Act, 2000, including Design Registration No. 197685, which pertains to their distinctive clog-like footwear shape. Crocs argued that their design has acquired considerable goodwill worldwide, functioning likewise as a trade dress or shape trademark that identifies the source of the goods. However, upon discovering competitors, including “Bata India Ltd” and “Liberty Shoes Ltd”, producing allegedly similar footwear, Crocs launched multiple suits alleging passing off based on their registered design. The plaintiffs, Dart Industries, also faced disputes regarding a design-based issue but were intertwined with the broader implications of Crocs' actions, making this case a comprehensive examination of legal principles guiding both passing off and design infringements. The matter moved through various courts, including previous judgments emphasizing the challenges in sustaining passing off claims when designs are registered under dedicated acts.

Procedural Posture: From Lower Courts to the Division Bench

The case arose from a common judgment delivered by a Single Judge on February 18, 2019, who dismissed Crocs' lawsuits on the grounds of maintainability, following a significant interpretation of intellectual property law outlined in earlier precedents. These judicial interpretations hinged on the premise that once a design is registered under the “Designs Act, 2000”, it could not simultaneously be the basis for a passing off action. This dismissal initiated a further legal review as Crocs appealed to the “Division Bench” to clarify the legal relationship between trademark rights and registered designs regarding passing off actions. At the heart of the dispute was whether a registered design could be cited as the basis for a passing off claim, complicating the legal landscape for plaintiffs seeking to enforce their rights in both design and trademark contexts.

The Core Issues: Maintainability of Passing Off Claims

The core question that the Division Bench needed to address was whether suits for passing off based on product shape could be maintained if that same shape was protected by a registered design. The Single Judge's ruling emphasized the idea that, to qualify for a passing off claim, there must be additional distinguishing features beyond the registered design that serve to identify the product's source. This reasoning aligns with earlier precedent established in cases like “Mohan Lal v Sona Paint & Hardwares” and “Carlsberg Breweries A/S v Som Distilleries and Breweries Ltd”, which posited that protection comes only for “extra” features that have acquired distinctiveness separate from the registered design. Thus, the challenge for Crocs lay in proving that their passing off claims could proceed without simply relying on the protectability of the design already registered.

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Court's Reasoning: Navigating Legal Precedents

The Division Bench examined the implications of the previous judgments carefully, along with the statutory provisions of the “Designs Act, 2000”. Notably, the court reiterated the observation that protections available under the Designs Act are distinct and largely segregated from claims for passing off under trademark law. The court upheld the rationale that merely alleging that other parties have copied a product shape registered as a design does not suffice to maintain a passing off claim. For passing off to hold, it observed that there must exist some additional characteristic that has emerged from the product's marketing or presentation. The dismissal of Crocs' claims underscored the legal framework governing design registrations: a strong caution to brands that they cannot solely rely on design protection to guard against market competition without deeper branding elements.

Implications for Businesses and Legal Practice

The outcome of this case carries significant implications for businesses that operate in design-centric industries. Companies must recognize the limitations imposed by the registration of designs; merely owning the rights does not shield them from competition in the form of passing off unless the features have penetrated public perception as being associated specifically with that brand. Moreover, brands need to invest in their branding strategy, ensuring that they do not solely rely on design registrations but also maintain distinct trademarks and trade dress elements that resonate with consumers. This case serves as an important reminder to engage with comprehensive intellectual property strategies that encompass trademarks, designs, and trade dress protections.

Conclusion

The “Crocs Inc v Bata India Ltd RFA (OS) (Comm) 22/2019”, case is a pivotal legal dispute that elucidates the intricate relationship between registered designs and trademark law within the context of passing off in India. The court's ruling sheds light on the necessity for businesses to adopt a multi-faceted approach to protect their intellectual property, recognizing the statutory boundaries set forth by existing laws. As companies navigate their strategies in fiercely competitive markets, this case reinforces the idea that a proactive and holistic intellectual property strategy—one that marries branding, distinctiveness, and legal protection mechanisms—will be crucial for sustaining market presence and differentiation. The decision serves as a critical touchpoint for understanding how legal interpretation shapes the landscape of innovation and competition in the commercial world. As such, businesses must remain vigilant and informed as they forge ahead in the ever-evolving domain of intellectual property law.