No relief for Bata, Liberty as Supreme Court rejects plea against revival of Crocs’ passing off suits

The Supreme Court on Friday dismissed petitions filed by Bata India and Liberty Shoes challenging the Delhi High Court’s July 2025 judgment that had revived Crocs Inc. USA’s passing off suits against several Indian footwear manufacturers, including Bata, Liberty, Relaxo, and Action Shoes. [Bata India, Liberty Vs Crocs India USA].

A Bench of Justices Sanjay Kumar and Alok Aradhe said,

"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 matter concerns litigation initiated by Crocs Inc. USA before the Delhi High Court over the alleged passing off of its distinctive foam clogs by several Indian footwear manufacturers.

Crocs claimed that companies such as Bata India, Liberty Shoes, Relaxo Footwear, Action Shoes, Aqualite, and Bioworld Merchandising copied the shape, configuration, and perforated design of its clogs - elements that Crocs argued function as a shape trademark or trade dress, thereby misleading consumers and riding on the reputation Crocs has built globally.

In a judgment dated February 18, 2019, a single-judge of the Delhi High Court dismissed all six passing off suits at the preliminary stage, holding that they were not maintainable.

The core reasoning was that Crocs could not claim passing off protection for the same product configuration that was already protected as a registered design.

However, in July this year, a High Court Division Bench of Justices C Hari Shankar and Ajay Digpaul overturned the 2019 single-judge order.

This prompted Bata and Liberty to approach the Supreme Court.

Liberty contended that the Division Bench erred in law and misinterpreted the Full Bench ruling of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. The company said that Carlsberg clearly held that once a design is registered, its proprietor cannot claim passing off rights over the same features, and that a passing off claim must involve “something more” - a broader trade dress or get-up beyond the registered design.

The petition said that allowing Crocs’ suits to proceed would effectively grant it a “dual monopoly,” giving perpetual common law protection under trademark law for what the Designs Act permits to be protected only for a limited term.

It submitted that the High Court overlooked Section 2(d) of the Designs Act, which expressly excludes trademarks from the definition of a design

The petition also asserted that the High Court's Division Bench failed to apply the earlier Full Bench decision in Mohan Lal v. Sona Paint & Hardwares, which had held that a design forms part of the goods, whereas a trademark is “something extra” used to denote trade origin. Once a design registration expires, it falls into the public domain, and its use cannot be monopolised through passing off, Liberty said, among other arguments.

Bata was represented by Senior Advocate Neeraj Kishan Kaul

Liberty was represented by Advocate Saikrishna Rajagopal from Saikrishna & Associates.