Delhi High Court Seeks Crocs Official’s Virtual Appearance As Bata Presses For Costs After Design Cancellation

Delhi High Court Seeks Crocs Official’s Virtual Appearance As Bata Presses For Costs After Design Cancellation

Introduction

The Delhi High Court has directed an authorised competent official of Crocs Inc. to appear virtually in proceedings arising out of its design infringement suit against Bata India Ltd. Justice Prathiba M. Singh passed the direction while hearing Bata India’s application seeking legal costs after cancellation of Crocs’ registered footwear design and subsequent disposal of the suit.

Factual Background

Crocs Inc. USA had instituted a suit seeking permanent injunction restraining infringement of its registered design in respect of “Footwear under Class 02-04.” An ad-interim injunction was granted on August 21, 2014 against the defendants, including Bata India Ltd.

The interim injunction remained in force until February 8, 2018, when it was vacated. During the pendency of the suit, the Deputy Controller of Patents & Designs, by order dated May 9, 2019, cancelled Crocs’ registered design on the ground of lack of novelty and prior publication. It was held that the features claimed as novel were insufficient to alter the character or identity of previously published designs known to the art. Following cancellation of the design, the suit was disposed of on July 12, 2023.

Procedural Background

After disposal of the suit, Bata India filed an application under Sections 35 and 35A read with Section 151 of the Code of Civil Procedure, 1908, seeking award of costs. Bata contended that it had incurred substantial litigation expenses and suffered commercial distress due to the interim injunction that operated for several years. The present proceedings concern adjudication of this application for costs.

Issues

1. Whether Bata India is entitled to costs under Sections 35 and 35A CPC after disposal of the suit.

2. Whether non-mention of costs in the final disposal order amounts to waiver.

3. Whether Crocs Inc. USA must ensure appearance of an authorised official in the proceedings concerning costs.

Contentions of the Parties

Bata India submitted that it had incurred substantial expenses in defending the design infringement suit and had suffered enormous distress owing to the interim injunction granted in favour of Crocs. It argued that in commercial litigation, costs follow the event, particularly where the plaintiff’s registered design stood cancelled for lack of novelty, resulting in disposal of the suit.

Crocs opposed the application, contending that costs had been given up and waived since the final order disposing of the suit did not award any costs to Bata. It was argued that the absence of a specific direction regarding costs indicated waiver.

Reasoning and Analysis

Justice Prathiba M. Singh observed that mere non-mention of costs in the disposal order dated July 12, 2023 did not prima facie amount to waiver. The Court referred to the Supreme Court’s decision in Uflex Ltd. v. Government of Tamil Nadu & Ors., which emphasises that in commercial matters, costs ought ordinarily to be awarded. The Court noted that this principle underlies Sections 35 and 35A of the CPC.

The Court also took note of the fact that no official of Crocs Inc. USA, having its address in Colorado, USA, had appeared in the matter or filed an affidavit. It recorded that the initial plaint had been signed by persons associated with counsel, and that the resolution-cum-authority in favour of an authorised representative had been signed by the Assistant Secretary of the company. In these circumstances, the Court considered it appropriate that an authorised competent official of Crocs Inc. USA appear virtually to clarify the company’s stand in relation to the claim for costs.

Decision

The Court directed that an authorised competent official of Crocs Inc. USA appear virtually on the next date of hearing. Bata India has been directed to file a detailed statement of costs. The matter is listed for March 12, 2026 for further consideration.

In this case the appellant was represented by Anirudh Bakhru, Shruti Manchanda, Indraneil Choudhury, Ayomi and Abhigyan Pandey, Advocates. Meanwhile the respondent was represented by Neeraj Grover and Kashish Sethi, Advocates.