Bata v. Crocs : Supreme Court Dismisses Pleas Of Footwear Makers Against Maintainability Of Crocs' Passing Off Suits Over Design Infringement

The Supreme Court on Friday dismissed the petition filed by Bata India Ltd and five other footwear manufacturers challenging the Delhi High Court's judgment which held that the suits filed by Crocs Inc.USA alleging passing off over the infringement of the latter's footwear designs registered under the Designs Act were maintainable.

A bench comprising Justice Sanjay Kumar and Justice Alok Aradhe refused to interfere with the Delhi High Court Division Bench's ruling of July 1 that a passing off action is maintainable with respect to a trade dress which is registered as a design under the Designs Act. The bench also dismissed a connected petition filed by Liberty Shoes Ltd against the High Court's judgment.

The bench observed that the single bench of the High Court should proceed with the suits without being influenced by any observations in the Division Bench's Judgment. The bench also clarified that the question of law is kept open.

Senior Advocate Neeraj Kishan Kaul, appearing for Bata India, Aqualite Industries Pvt Ltd, Bioworld Merchandising India Ltd, Relaxo Footwears Ltd, Action Shoes Ltd and Action Footwears Pvt Ltd, argued that a passing off action was not maintainable with respect to alleged design infringement.

However, Justice Kumar pointed out that the Full Bench of the Delhi High Court had ruled in Carlsberg Breweries v. Som Distilleries and Breweries that the cause of action for passing off and design infringement can be combined in one suit. Kaul responded that Carlsberg in fact supported his clients' case as it flows from the decision that a standalone passing off suit is not maintainable in respect of design infringement.

Senior Advocate Saikrishna Rajagopal, appearing for Liberty Shoes, argued that as per the Carlsberg judgment, something in addition to the design infringement claim must be shown to maintain a passing off suit. It was argued that the plaint of Crocs does not have any allegations other than the violation of the Designs Act. "If Design Act claim features x, y, z elements, then the passing off claim must have some additional elements a,b,c," the counsel submitted. He argued that the decision has a huge impact on IPR matters, as the Designs Act only gives a limited monopoly for 15 years as per Section 11. To circumvent that limitation, the parties can file a passing off claim to perpetuate the monopoly through the trademark route, he added.

Justice Kumar then said, "So far as India is concerned, they don't have the registration of this design as a trademark. They only had it as a Design registration. There is no trademark registration."

Kaul said that the matter requires a detailed examination by the Supreme Court as there is no authoritative pronouncement. He also raised the argument that this route will be used to "evergreen" a design, circumventing the 15-year limitation.  

Senior Advocate Akhil Sibal for Crocs Inc. submitted that they have filed six suits, which have been stalled for over 10 years. He argued that passing off is a common law remedy which is not barred by the Designs Act. "Passing off is a cause of action which is different from infringement which is a pure statutory cause of action. Nothing in the Designs Act excludes passing off. In the Trademarks Act, Section 27(2) specifically says the Act will not affect rights under common law," he submitted, supporting the High Court's judgment as based on the first principles of law. "Passing off is a common law remedy aimed at protecting one's hard earned goodwill from others who deceitfully try to capitalise on it. For passing off, the right arises from user. For infringement, the right arises from registration. Under passing off, I have to establish that I have generated immense goodwill through the trade dress and that the trade dress is a sole indicator of me," he said.

Sibal added, "From 2004, Crocs has an iconic trade dress for shoes and sandals. It was initially felt unusual, some considered it ugly, then it became a fashion statement, celebrities started wearing it and then the copycats emerged. That is my case. I have to establish that I have generated goodwill through my trade dress. My suit is only for the common law remedy." Sibal argued that the ingredients of passing off are different from a design infringement claim.

Case : BATA INDIA LTD. Vs MS CROCS INC. USA | SLP(C) No. 29920-29924/2025, LIBERTY SHOES LTD v.MS CROCS INC. USA | SLP(C) No. 32834/2025