Big Win for Crocs: Supreme Court Revives Passing Off Suits Against Bata and Liberty

The Bench of Justices Sanjay Kumar and Alok Aradhe dismissed the Special Leave Petitions, observing that the High Court had merely revived the suits for adjudication and had not granted Crocs any substantive relief.

The Court said the trial court must consider the cases independently.

“We are not inclined to entertain this plea. The Delhi High Court has merely restored the suits for consideration by the trial court. We, however, make it clear that the trial court of the learned single judge shall consider the matters uninfluenced by any observations made by the division bench or by the dismissal of these SLPs. Question of law kept open,” the Bench stated.

Bata India was represented by Senior Advocate Neeraj Kishan Kaul, while Liberty Shoes was represented by Advocate Saikrishna Rajagopal of Saikrishna & Associates.

The dispute stems from Crocs Inc. USA’s longstanding litigation before the Delhi High Court alleging that multiple Indian footwear companies copied the shape, configuration, and perforated design of its popular foam clogs. Crocs contended that these elements constitute its trade dress or shape trademark, and that the Indian manufacturers were misleading consumers and benefiting from Crocs’ global reputation.

In February 2019, a single judge of the Delhi High Court dismissed all six suits at the threshold, holding that Crocs could not maintain passing off actions for the same product configuration that was already protected as a registered design. The judge held that passing off protection cannot be used to extend monopoly over features covered under the Designs Act.

However, in July 2025, a Division Bench of Justices C Hari Shankar and Ajay Digpaul reversed that decision, allowing the suits to proceed on the ground that the single-judge ruling required reconsideration. That order prompted Bata India and Liberty Shoes to seek relief from the Supreme Court.

In its petition, Liberty argued that the Division Bench misapplied the Full Bench ruling in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., which held that once a design is registered, its features cannot simultaneously be protected through passing off unless the claimant demonstrates “something more,” such as a broader trade dress beyond the registered design.

Liberty warned that allowing Crocs’ suits to continue would effectively grant the company a “dual monopoly,” extending trademark-style protection to features that the Designs Act allows to be monopolised only for a limited period. It also pointed to the Full Bench decision in Mohan Lal v. Sona Paint & Hardwares, which clarified that a design forms part of the goods themselves, unlike trademarks, which indicate trade origin. After expiry of a design registration, its features fall into the public domain.