Crocs free to pursue trademark passing off actions for its footwear shape for now

In the matters of M/s Crocs Inc USA v M/s Bata India & Ors [RFA(OS)(COMM) 22/2019] and 5 others[1], on May 29, 2019 the Delhi High Court Division Bench, in a common interim order, ruled in favour of the Appellants (‘Crocs’). The interim relief granted was to the effect that during the pendency of Crocs’ appeals against the Single Judge’s order dismissing as not maintainable its six trademark passing off lawsuits (which sought to restrain defendants from copying the shape of their footwear), the order would not constitute precedent such as would prevent them from filing similar suits against other parties.

Crocs had previously filed six trademark passing off lawsuits pertaining to the shape of its footwear as a trademark, and also six other suits against the same Defendants for infringement of its registered design in relation to its footwear. The Single Judge dismissed all six trademark suits as not being maintainable, taking the view that the alleged passing off pleaded in the plaints was with respect to subject matter that was registered as a design. The Single Judge concluded that this was not permissible, on account of a reading of the Full Bench ruling in Mohan Lal v. Sona Paint & Hardwares [(2013) 55 PTC 61 (Del) (FB)] and the subsequent Five Judge Bench ruling in Carlsberg Breweries v. Som Distilleries [256 (2019) DLT 1].

Crocs appealed, contending that the Single Judge had erred in holding that the majority view in Mohan Lal as modified by the Full Bench in Carlsberg was that no passing off action would lie in respect of a registered design used as a trademark, which was in fact the minority view. Crocs also sought a limited interim relief that during the pendency of the appeals, the Single Judge decision not constitute a precedent, so as to avert the imminent in limine dismissal of its pending and proposed suits against other parties.

The Court granted Crocs this interim relief, observing that “…learned Single Judge has…understood…that the majority in Mohan Lal did not recognize the protectability of a registered design when used as a trademark. Prima facie this understanding by the learned Single Judge…does not appear… to be correct.”


[1] M/s Crocs Inc USA v. M/s Liberty Shoes Ltd. & Ors. [RFA(OS)(COMM) 23/2019]; M/s Crocs Inc USA v. Aqualite India Limited & Anr. [RFA(OS)(COMM) 24/2019]; M/s Crocs Inc USA v. M/s Bioworld Merchandising India Ltd. & Anr. [RFA(OS)(COMM) 25/2019]; M/s Crocs Inc USA v. Relaxo Footwear Ltd. [RFA(OS)(COMM) 26/2019]; M/s Crocs Inc USA v. M/s Action Shoes Pvt. Ltd. & Ors. [RFA(OS)(COMM) 27/2019]

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

H&M granted interim relief against HM MEGABRANDS

In the matter of H&M Hennes & Mauritz AB and Ors. v. HM Megabrands Pvt. Ltd. and Ors. [CS (Comm.) No. 707/2016], the Plaintiffs sought a permanent injunction restraining the alleged infringement and passing off of their registered trademarks and H&M by the Defendants’ use of , HM MEGABRANDS and HM. Both parties’ use of the marks was with respect to retail of clothing and accessories through physical and online stores. The Plaintiff’s application for interim relief was being taken up by the Court.

The Defendants pleaded that the name HM Megabrands was derived from the first two alphabets of the names of Hashim Merchant (Defendant No. 4) and his brother Hamza Merchant (Defendant No. 3) back in 2011, at which time the Plaintiffs had ‘no recognition in India’. The Defendants also argued that though the alphabets ‘H’ and ‘M’ in the two respective sets of marks were the same, the Defendant’s addition of ‘MEGABRANDS’ distinguished the marks from one other.

In its May 31, 2018 decision, while granting the Plaintiff interim relief, the Court observed “The defendants…did not choose to set up or carry on business in their own names but claim to have chosen the first alphabets of their name and surname…It is also not as if the defendants initially set up business under their full names…and which businesses over a period of time came to be known as ‘HM’.

Noting that the word Megabrands is “…a descriptive and a generic word…used generally to describe any big or successful brand”, and that the Defendants had “…not disputed…that the plaintiffs were in the market from at least over two decades prior to the defendants coming into the market”, the Court took the view that “…‘Megabrands’…rather than distinguishing, reinforces the impression in the mind of the consumer that the business of the defendants is the business of the plaintiffs which vis a vis the defendants at least was a megabrand on the date when the defendants commenced business.”

The Court further observed that “The only other distinguishing feature is the symbol ‘&’ between the alphabets ‘H&M’ in the mark of the plaintiffs… Not only is the symbol ‘&’ in the mark of the plaintiff written in a much smaller font than the font in which the alphabets ‘H&M’ are written but even otherwise a mere presence of the said symbol, in my view, is unlikely to distinguish the said alphabets in the mark of the plaintiffs and in the mark of the defendants.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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