Supreme Court Refuses Bata & Liberty’s Plea, Clears Path for Crocs’ Passing Off Suits

Supreme Court Refuses Bata & Liberty’s Plea, Clears Path for Crocs’ Passing Off Suits

Introduction

The Supreme Court of India has dismissed petitions filed by Bata India and Liberty Shoes challenging the Delhi High Court’s decision to revive passing off suits filed by Crocs Inc. USA regarding the alleged imitation of its iconic foam clogs. The Court held that since the High Court merely restored the suits for adjudication, no interference was warranted, while leaving all questions of law open for consideration by the trial court.

Factual Background

Crocs Inc. USA initiated a series of passing actions before the Delhi High Court against various Indian footwear companies—including Bata, Liberty, Relaxo, Action Shoes, Aqualite, and Bioworld—claiming that they copied Crocs' distinctive clog design. The allegedly infringed elements include the product’s shape, configuration, and perforated pattern, which Crocs asserted function as protectable trade dress associated with its brand.

Procedural Background

In February 2019, a Single Judge of the Delhi High Court dismissed Crocs’ passing off suits at the preliminary stage, holding that Crocs could not seek passing off protection for features already covered by its registered design. In July 2025, a Division Bench overturned this order and revived the suits for full adjudication. Bata and Liberty challenged this revival before the Supreme Court through Special Leave Petitions. On November 14, 2025, the Supreme Court refused to intervene.

Issues

1. Whether Crocs can maintain passing off actions based on the shape/configuration of its clogs when those features were previously protected as registered designs.

2. Whether reviving the suits allows Crocs to claim an impermissible “dual monopoly”—design protection and trade dress protection over the same features.

3. Whether the Division Bench of the Delhi High Court erred in applying precedents such as Carlsberg Breweries and Mohan Lal v. Sona Paint.

Contentions of the Parties

Petitioners (Bata & Liberty): The High Court misapplied the Full Bench ruling in Carlsberg Breweries, which held that once a design is registered, passing off claims over the same features must show “something more” than the registered design itself. Allowing the suits gives Crocs perpetual protection over features that must fall into the public domain once design rights expire. The Division Bench ignored Section 2(d) of the Designs Act, which excludes trademarks from design protection. The Mohan Lal judgment establishes that a design is part of the goods themselves and cannot simultaneously function as a trademark.

Respondent (Crocs Inc. USA): Crocs argued that competing manufacturers were deliberately copying the distinct visual appearance of its footwear to mislead consumers. It maintained that its configuration, perforation pattern, and overall shape had acquired trade dress significance beyond the earlier design registration. The revival of suits does not amount to granting monopoly but merely allows full adjudication on merits.

Reasoning and Analysis

The Bench of Justices Sanjay Kumar and Alok Aradhe held that it was not necessary to interfere, as the High Court had only restored the suits and had not issued any conclusive findings. The Court emphasised that the trial judge must independently evaluate all legal and factual questions without being influenced by observations made by the Division Bench or by the dismissal of the SLPs.

Notably, the Supreme Court did not rule on the substantive legal issue whether design and trade dress rights can coexist leaving that determination open for lower courts. This approach preserves judicial neutrality while permitting the litigation to proceed on merits.

Implications

The Supreme Court’s refusal to quash Crocs’ passing off suits effectively reopens major litigation in India’s footwear market. The matter will now proceed before the trial court, where critical questions regarding the interplay between design protection and trade dress rights will be examined in depth. The decision also signals judicial reluctance to block passing off suits at a threshold stage and is likely to encourage brand owners to enforce trade dress claims even where designs were previously registered. Indian manufacturers, on the other hand, face renewed litigation risk over product appearance and configuration.

In this case Bata was represented by Senior Advocate Neeraj Kishan Kaul. Meanwhile, Liberty was represented by Advocate Saikrishna Rajagopal from Saikrishna & Associates.