Our Indian judiciary recently delivered a landmark development in intellectual property law by reviving passing-off suits filed by Crocs Inc. USA against major Indian footwear companies including Bata India, Liberty Shoes, Relaxo Footwears, Action Shoes, Aqualite Industries and Bioworld Merchandising. The case highlights evolving judicial thinking on the interplay between registered designs and common-law trademark rights in India, particularly for distinctive product shapes and trade dress.
Crocs, an American footwear company, is globally known for its unique foam clog design, characterised by its distinctive moulded shape and perforations. This design has gained strong consumer recognition and goodwill over years of marketing and sales. In 2015, Crocs discovered several Indian companies (such as Bata India, Liberty Shoes, Relaxo Footwears, Action Shoes, Aqualite Industries and Bioworld Merchandising) allegedly selling footwear that mimicked this distinctive shape and appearance. In response, Crocs initiated multiple suits asserting passing-off claims, in which it alleged that these products were causing consumer confusion and diluting its brand goodwill. Although Crocs held a registered design in India for the clog shape, it had not obtained a separate trademark registration for that shape. Its legal strategy relied on common-law rights to protect its trade dress, the overall visual impression that indicates product origin.
On 18th February 2019, a Single Judge of the Delhi High Court dismissed Crocs’ passing-off suits, holding that one could not enforce common-law passing-off rights for product features already protected as a registered design. In addition, the court stated that one cannot seek trademark-style protection for something covered by a design registration without showing “something extra.”
However, on 1st of July 2025, a Division Bench of the Delhi High Court reversed the said decision. The bench, comprising Justices C. Hari Shankar and Ajay Digpaul, held that the earlier dismissal was in error and that Crocs should be allowed to proceed with its passing-off claims. The court emphasised that Passing off is a common law remedy aimed at protecting goodwill and preventing misrepresentation. Such claims can coexist alongside statutory design rights, as the elements to prove passing off, like goodwill, misrepresentation, and damage are distinct from those required for design infringement. Whether Crocs’ trade dress had truly acquired distinctiveness and whether consumers were likely to be misled were questions of fact needing full trial consideration rather than dismissal at an early stage. Thus, the High Court restored Crocs’ suits sending them back to the trial court for merit-based evaluation.
Aggrieved by the High Court’s decision, Bata India and Liberty Shoes challenged the revival in the Supreme Court of India. They argued that allowing passing-off claims based on a registered design would effectively extend protection beyond the limited statutory monopoly offered by the Designs Act, potentially creating a dual monopoly akin to trademark rights.
However, on 14th November 2025, the Supreme Court declined to interfere with the Division Bench’s decision, upholding the High Court’s order and allowing Crocs’ passing-off suits to continue. While the apex court left broader legal questions open, it directed that the trial court should hear the matters afresh, uninfluenced by earlier rulings.
This case is significant for several reasons:
- It reinforces that common law passing-off actions are not barred merely because a product’s shape is already protected under the Designs Act.
- Crocs’ ability to pursue passing off even without a registered trademark for its clog shape highlights the importance of distinctiveness and consumer recognition in establishing trade dress rights.
- The courts acknowledged that consumer confusion and goodwill impact brand value, and these considerations can be critical in design-heavy industries like footwear and fashion.
The ruling in Crocs Inc. v. Bata & Liberty offers important guidance on enforcement strategy confirming that passing-off claims based on trade dress and product shape can survive independent of design registrations and should not be dismissed instantly. The decision further reinforces that statutory IP rights are not exhaustive and do not operate to the exclusion of common-law protections, particularly where goodwill, consumer association, and misrepresentation are at stake. For brand owners, especially in design-driven industries like footwear, fashion, and consumer goods, the case underscores the commercial value of trade dress and acquired distinctiveness, even in the absence of a registered shape mark.
By Amrita Chowdhury
