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June 20, 2019

Crocs Free To Pursue Trademark Passing Off Actions For Its Footwear Shape For Now

Author: Nayantara Malhotra

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]

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