The Supreme Court on Friday declined to entertain challenges
brought by Bata India, Liberty Shoes and several other footwear
makers against a Delhi High Court ruling that revived Crocs Inc’s passing
off suits over its signature footwear design. A Bench of Justices Sanjay Kumar
and Alok Aradhe upheld the High Court’s view that a passing off action can
proceed even when the underlying trade dress is protected as a registered
design under the Designs Act.
With
this, the apex court left undisturbed the Division Bench ruling of July 1 that
had restored Crocs’ suits against multiple domestic manufacturers.
While
refusing to interfere, the court directed the single judge of the trial court
before whom the suits are pending to decide them independently and without
being influenced by observations made by the High Court or the Supreme Court.
It also left the broader legal question open.
Senior Advocate Neeraj Kishan Kaul,
representing Bata India, Aqualite Industries, Bioworld Merchandising, Relaxo
Footwears and Action Footwear entities, argued that a passing off claim cannot
stand when the grievance concerns alleged design infringement. He contended
that the Designs Act provides only a limited statutory monopoly, and allowing
passing off actions in such circumstances would effectively extend that
protection.
The Bench, however, noted that a
Full Bench of the Delhi High Court in Carlsberg Breweries v Som Distilleries
had already held that claims for design infringement and passing off can be
pursued in a single proceeding. Kaul maintained that Carlsberg, in fact,
implied that a standalone passing off claim is impermissible when the dispute
centres exclusively on a registered design.
Appearing
for Liberty Shoes, Senior Advocate Saikrishna Rajagopal submitted that Carlsberg
requires something more than the ingredients of design infringement to sustain
a passing off action, additional elements that, according to him, Crocs had not
pleaded. He warned that permitting such suits would enable rights holders to
prolong a monopoly beyond the 15-year limit prescribed under Section 11 of the
Designs Act by resorting to the trademark route.
The Bench observed that Crocs’ design was not registered as a
trademark in India.