The division bench of the Delhi High Court on Tuesday revived Crocs Inc. USA’s passing off petition filed against domestic footwear companies Bata India, Liberty Shoes and others for allegedly manufacturing and selling footwear identical in shape and design to that of the Crocs’ unique trade dress.
A bench comprising Justices Hari Shankar and Ajay Digpaul set aside a single judge’s February 18, 2019 order that had dismissed Crocs’ five petitions as non-maintainable.
“We do not think that this issue could have straightaway been decided by a mere reading of the plaint,” the division bench said, adding Croc would have to be given an opportunity to establish that its claim for passing off was not based merely on copying, or imitation, of its registered design by domestic players.
According to the DB, passing off was a “sui generis common law remedy”, aimed at protecting one’s hard-earned goodwill and reputation from others who may deceitfully seek to capitalize on it. Passing off in trademark law refers to the act of one party misrepresenting their goods or services as those of another, leading to consumer confusion and potential harm to the other party’s reputation and business, it said.
Crocs Inc, USA had moved the HC alleging that a number of Indian footwear companies including Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising had passed off products by imitating its distinct look of its foam clogs. It said that these India companies copied the overall structure and perforated pattern of its clogs, which are distinct and unique to its trade dress.
While Crocs was the proprietor of the design in respect of its footwear in 2004, it did not possess any registration of the given trade dress as a trademark under the Trade Marks Act, 1999.
The Indian firms’ adoption of the trade dress in respect of identical goods was dishonest, malafide and fraudulent, Crocs claimed in its petitions, adding that “unwary purchasers in market and trade are being deceived and defrauded as to the origin of the goods and business. The defendant’s gains are the plaintiffs losses.”
Besides adoption of the trade dress, they have also blatantly copied the essential and striking features of plaintiffs’ design and there malafide and dishonesty is apparent, manifest and striking, Crocs argued.
