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2025 Supreme(Online)(Del) 3165
IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, Ajay Digpaul, JJ
M/S CROCS INC USA – Appellant
Versus
M/S BATA INDIA & ORS – Respondent
RFA (OS) (Comm) 22/2019 | RFA (OS) (Comm) 23/2019 | RFA (OS) (Comm) 24/2019 | RFA (OS) (Comm) 25/2019 | RFA (OS) (Comm) 26/2019 | RFA (OS) (Comm) 27/2019 | FAO (OS) (Comm) 358/2019
For the Appellants/Petitioners: Mr. J. Sai Deepak, Sr. Adv., Mr. S.K. Bansal, Mr. Ajay Amitabh Suman, Mr. Gaurav Gogia, Mr. Deepak Shrivastava, Mr. R. Abhishek
For the Respondents: Mr. Neeraj Grover, Ms. Mohona Sarkar, Mr. Kashish Vij, Mr. Saikrishna Rajagopal, Mr. Julien George, Mr. Arjun Gadhoke, Ms. Deepika Pokharia, Ms. N. Parvati, Mr. Anil Dutt, Mr. Gaurav Miglani, Mr. Hemant Singh, Mr. N. Mahabir, Mr. PC Arya, Ms. Parveen Arya, Ms. Noopur Biswas, Mr. Udit Gupta
A registered design cannot serve as a trade mark for passing off claims; separate grounds must be established for each action, emphasizing the need for distinctiveness and goodwill in passing off actions.
Headnote:(A) Designs Act, 2000 - Section 11 - Trade Marks Act, 1999 - Sections 2(1)(m) and 2(1)(zb) - Maintainability of suits - The learned Single Judge dismissed the suits filed by Crocs Inc USA, ruling they were not maintainable as they solely relied on the registered design for passing off claims. The court found that a registered design cannot also serve as a trade mark for passing off actions, as established in Mohan Lal v Sona Paints & Hardwares. The Court held that while a passing off action can lie based on the overall trade dress, it cannot be based solely on a registered design. (Paras 1, 17.1, 41, 46)
(B) Passing Off - Distinction from Design Infringement - The court emphasized that the essential ingredients of a passing off action differ fundamentally from those of a design infringement claim. A passing off claim requires proof of goodwill and misrepresentation, while design infringement focuses on the uniqueness and novelty of the design. (Paras 22.1, 22.2, 22.4)
(C) Result - The judgment of the learned Single Judge was quashed, restoring the suits for further proceedings. (Paras 27, 29)
| Table of Content |
|---|
| 1. court's analysis of the maintainability of claims. (Para 18 , 19) |
| 2. court's reasoning on the distinction between design infringement and passing off. (Para 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31) |
JUDGMENT
% 01.07.2025
C. HARI SHANKAR, J.
1. These appeals arise out of two orders passed by a learned Single Judge of this Court. A tabular representation of the appeals and the orders against from which they arise may be presented thus:
| Appeal No. | Name | CS (Comm) No. | Date of impugned judgment |
| FAO (OS) (Comm) 358/2019 | Dart Industries Inc & Anr. v Vijay Kumar Bansal & Ors. | 837/2016 | 17 July 2019 |
| RFA (OS) (Comm) 22/2019 | Crocs Inc USA v Bata India Ltd. & Ors. | 569/2017 | 18 February 2019 |
| RFA (OS) (Comm) 23/2019 | Crocs Inc USA v Liberty Shoes Ltd. & Ors. | 1415/2016 | 18 February 2019 |
| RFA (OS) (Comm) 24/2019 | Crocs Inc USA v Aqualite India Ltd. & Anr. | 903/2018 | 18 February 2019 |
| RFA (OS) (Comm) 25/2019 | Crocs Inc USA v Bioworld Merchandising India Ltd. & Anr. | 906/2016 | 18 February 2019 |
| RFA (OS) (Comm) 26/2019 | Crocs Inc USA v Relaxo Footwear Ltd. | 571/2017 | 18 February 2019 |
| RFA (OS) (Comm) 27/2019 | Crocs Inc USA v Action Shoes Pvt. Ltd. & Ors. | 905/2016 | 18 February 2019 |
2. By the common judgment under challenge, dated 18 February2019, passed in CS (Comm) 903/2018, CS (Comm) 905/2016, CS (Comm) 906/2016, CS (Comm) 1415/2016, CS (Comm) 569/2017 and CS (Comm) 571/2017, [“the Crocs suits” hereinafter], the learned Single Judge has dismissed all five suits as not maintainable. As such, the learned Single Judge has held that it is not necessary to examine the applications filed by the appellant – plaintiff in the said suits, under Order XXXIX Rules 1 and2 of the Code of Civil Procedure, 1908 , [“CPC”, hereinafter]
3. In RFA (OS) (Comm) 22-27/2019, [“the Crocs appeals” hereinafter], preferred by Crocs Inc USA, “Cdrocs”, hereinafter, challenging the aforesaid judgment dated 18 February 2019 of the learned Single Judge, a Division Bench of this Court, on 29 May2019, while adjudicating CM Appls 22655/2019, 22660/2019, 22664/2019, 22667/2019, 22670/2019 and 22674/2019, expressed a prima facie view disagreeing with the view expressed by the learned Single Judge in his judgment dated 18 February 2019 supra.
4. In that view of the matter, while adjudicating CS (Comm) 837/2016, [“the Dart suit” hereinafter], on 17 July 2019, the learned Single Judge has, noting the fact that the Division Bench of this Court had, on 29 May 2019, expressed prima facie disagreement with his judgment dated 18 February 2019, proceeded to adjudicate IA 15881/2011, filed by the appellant – plaintiff Dart Industries Inc, [Signature Not Veri6 f i“eDdART”, hereinafter] in that case, on merits. The learned Single Judge has rejected the prayer for interim injunction and has merely directed the defendants in the Dart suit to file particulars of sales of the impugned product.
5. There is, however, no dispute that if we were to uphold the judgment of the learned Single Judge in the Crocs suits, it would mean that the Dart suit would also be liable to be dismissed as not maintainable.
6. The correctness of the judgment dated 18 February 2019, in the Crocs suits, therefore, arises directly or indirectly for consideration in all these appeals. The learned Single Judge has, vide the said judgment, dismissed the Crocs suits as not maintainable. In the event, that this Court agrees with the learned Single Judge, matters must rest there, insofar as the said suits are concerned, and the Crocs appeals,preferred thereagainst have necessarily to be dismissed.
7. In the event that the Court holds the learned Single Judge to have been an error in rendering the judgment dated 18 February 2019, the Crocs suits would have then to be remanded for further proceedings and the Court would, in that event, have to examine the correctness of the judgment dated 17 July 2019 of the learned Single Judge in IA 15881/2011 in the Dart suit on merits.
8. As the issue of maintainability of the suits is, therefore, an issue which arises directly or
