The Delhi High Court on Tuesday revived a batch of pleas by the
US company Crocs Inc against several Indian footwear companies for allegedly
copying the unique shape and design of its footwear. A division bench of the
Delhi High Court overturned a 2019 order of the single judge dismissing Crocs’
batch of pleas against Bata India, Relaxo, Liberty and others.
A bench of Justices Hari Shankar and Ajay Digpaul revived the US
company's claims concerning the recognisable design and form of its foam clogs
and ordered that the cases should now be sent to a single-judge bench for a
full hearing on their merits.
"We are constrained, therefore, to hold that, in declining
to do so, and dismissing Crocs' suits as not maintainable, the learned Single
Judge, in our respectful view, erred in law," the division bench of the
Delhi HC said.
Crocs had moved the Delhi High Court, arguing that several
Indian footwear companies had passed off their products by imitating the
distinct look of its foam clogs. The US company alleged that firms such as Bata
India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld
Merchandising copied the shape and perforated pattern of its clogs, which it
claimed qualifies as a shape trademark.
Crocs had filed several lawsuits asking the court to permanently
stop these companies from passing off their products as its own. Separate suits
for design infringement under the Designs Act, 2000 were also filed, based on
Crocs’ registered designs. These cases were heard together.
On 18
February 2019, a single judge dismissed all six passing-off suits at the
initial stage and held that the claims were not maintainable because Crocs was
trying to get ongoing trademark protection under common law for a design that
had already received temporary protection under the Designs Act.
On the issue of novelty and originality, the court had then said
that the designs registered by Crocs were neither original nor novel, as they
were not significantly distinguishable from products already existing in the
market, and were mere ‘trade variants’ of a sandal, which did not deserve any
exclusivity or monopoly.
Passing off in trademark law refers to the act of one party
misrepresenting its goods or services as those of another, leading to consumer
confusion and potential harm to the other party's reputation and business. It
primarily protects unregistered trademarks by preventing unfair competition.