Dismissing appeals by Bata India and five other footwear manufacturers, the Supreme Court on Friday upheld a Delhi High Court’s July order that revived a passing-off suit filed by Crocs, Inc., USA against domestic footwear companies for allegedly manufacturing and selling footwear matching those of Crocs in shape and design.A bench comprising Justices Sanjay Kumar and Alok Aradhe refused to interfere with the Delhi High Court Division Bench’s July 1 order that a passing off action was maintainable with respect to a trade dress which is registered as a design under the Designs Act.
“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 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 said.
Besides Bata India and Liberty Shoes, the apex court also dismissed appeals by Aqualite Industries, Bioworld Merchandising India, Relaxo Footwears Ltd, Action Shoes and Action Footwears.
Indian manufacturers had argued that allowing Crocs’ suits to continue would effectively grant the US manufacturer a “dual monopoly,” extending trademark-style protection to features which the Designs Act allows only for a limited period.
In July, a division bench of the Delhi High Court had set aside a single judge’s February 18, 2019, order that had dismissed five earlier petitions of Crocs as non-maintainable.
The DB said that 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 footwear makers.
It said that 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 capitalise on it.
Crocs had moved the HC alleging that many Indian footwear makers 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 these India companies copied the overall structure and perforated pattern of its clogs, which are distinct and unique to its trade dress.
Crocs argued that besides adoption of the trade dress, the Indian companies have also blatantly copied the essential and striking features of its design and that their “malafide and dishonesty is apparent, manifest and striking.”
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.
