Crocs Inc. v. Bata India (2025): passing-off survives a registered design

For nearly a decade Crocs Inc. had been unable to get its passing-off case against India's largest footwear makers off the ground. On 1 July 2025, a Division Bench of the Delhi High Court — C. Hari Shankar, J. and Ajay Digpaul, J. — changed that, setting aside a 2019 order that had thrown the suits out at the threshold and restoring them for trial. The decision, neutral-cited 2025:DHC:5037-DB, resolves a long-running fault line at the design/trademark interface in Indian intellectual property law: whether the owner of a registered design can also sue in passing-off on the same product shape.

The facts in brief

Crocs holds Design Registration No. 197685, registered on 28 May 2004 under the Designs Act 2000 in respect of "footwear." The registration covers the distinctive shape and configuration of the company's perforated foam clog — the moulded, ventilated slip-on that became its signature product. From around 2015, Crocs alleged that several Indian manufacturers — Bata India, Liberty Shoes, Relaxo Footwears, Action Shoes, Aqualite and others — were selling lookalike clogs that copied that get-up.

Crocs responded on two fronts. It filed one set of suits alleging infringement of its registered design, and a second set alleging passing-off grounded in the shape and trade dress of the clog. It is the second set that this judgment concerns. The passing-off suits never reached evidence. On 18 February 2019, a Single Judge dismissed them at the threshold as non-maintainable, reasoning that a passing-off action cannot lie on a trade dress that is itself registered as a design, and that a plaintiff in that position must show "something more" than its registered design before it can sue. That reasoning traced to the Full Bench in Carlsberg Breweries and to the earlier decision in Mohan Lal. Crocs appealed, and the appeals — led by RFA(OS)(Comm) 22/2019, arising out of the Bata suit CS(Comm) 569/2017, and heard with connected first appeals including Dart Industries Inc. v. Vijay Kumar Bansal and the parallel suits against the other manufacturers — came before the Division Bench.

The questions

The appeals raised, at the threshold, a question of pure maintainability rather than of the merits. Two issues framed it.

The first was whether a common-law passing-off action is maintainable at all where the subject matter — the shape or configuration of the product — is also a registered design under the Designs Act 2000. The Single Judge had answered no, treating the two regimes as mutually exclusive at the point of registration: once a shape is claimed as a design, the argument ran, the proprietor cannot turn around and assert common-law rights in the same get-up.

The second, related issue concerned the design/trade-dress overlap and the so-called "something more" requirement. On the Single Judge's reading, a plaintiff whose get-up was registered as a design had to plead and prove some element of trade dress beyond the registered design before a passing-off action could even be entertained. The appeals invited the Division Bench to ask whether that burden had been correctly located — whether "something more" is genuinely a pleading hurdle for the plaintiff, or whether it belongs somewhere else in the analysis.

What the Court held

The Division Bench set aside the 2019 dismissal and restored the passing-off suits for trial on the merits, remanding them to the Commercial Court for evidence and adjudication. The connected Dart Industries appeal was also allowed, with the interim-injunction question sent back for fresh consideration.

The core holding is one of co-existence. Statutory design rights and the common-law remedy of passing-off, the Bench held, can operate side by side and are not mutually exclusive. A court therefore cannot decline to entertain a passing-off action solely because the subject matter happens to be a registered design. The threshold bar the Single Judge had erected — treating registration as a design as automatically extinguishing the common-law claim — could not stand.

On the much-litigated "something more" point, the Bench relocated the requirement. As the Court analysed it, the "something more" attaches to the defendant's use, not to the plaintiff's pleading. The relevant question is whether the defendant has deployed the design elements within its own larger trade dress so as to misrepresent its goods as those of the plaintiff. It is the defendant who must be shown to have done "something more" than merely reproduce a shape; it is not a burden on the plaintiff to establish trade-dress rights reaching beyond its registered design before it may sue at all. With that recalibration, the threshold objection fell away and the suits became fit for trial.

Analysis

The significance of the decision is best understood against the regime it adjusts. The Designs Act 2000 confers a time-limited statutory monopoly over the visual features of a product — its shape, configuration, pattern or ornament. Passing-off, by contrast, is a common-law action protecting goodwill: it asks not whether a monopoly has been infringed but whether the defendant has misrepresented its goods as the plaintiff's, to the latter's injury. The two protect different interests, and the Mohan Lal / Carlsberg line had grappled, in successive Benches, with how far they may be invoked together over the same get-up.

The reading the Single Judge had adopted pushed that uncertainty to its harshest conclusion: registration as a design operated as a kind of election, foreclosing the common-law remedy at the door. The Division Bench's answer is more measured. Registration does not strip a proprietor of goodwill, and goodwill is what passing-off protects. To deny the action at the threshold would be to let the existence of a statutory right defeat a distinct common-law one that the statute never purported to displace. The two tracks, on this view, are complementary rather than competing.

Equally consequential is where the Bench placed the "something more" inquiry. By tying it to the defendant's conduct — the use of design elements inside a broader trade dress to misrepresent origin — the Court converted what had functioned as a pleading barrier for plaintiffs into a question of liability to be resolved on evidence. That is a meaningful shift. A threshold bar disposes of a case before any facts are tested; a liability question keeps the case alive and asks the trial court to look at what the defendant actually did. The practical effect is to move the contest from the pleadings to the proof.

It bears emphasis that the Bench did not decide that Crocs wins. The judgment is about maintainability, not merits: whether the misrepresentation, the goodwill and the deception can be made out remains for the Commercial Court on evidence. What the decision does is clear the threshold obstruction that had kept those questions from ever being asked.

Why it matters

The decision confirms dual-track protection at the design/trademark interface. A proprietor of a registered design may, on the strength of this ruling, simultaneously pursue a passing-off action on the same product get-up, provided the defendant's use can be shown to misrepresent origin. For an enforcement strategy that had stalled at the pleadings stage since 2019, that is a substantial reopening: Crocs' decade-old campaign against the major Indian footwear manufacturers is back on the rails, and the broader Mohan Lal / Carlsberg line is recalibrated rather than overturned.

The story did not end at Delhi. The Division Bench view was carried to the Supreme Court, which on 14 November 2025 dismissed the special leave petitions of Bata and Liberty, leaving the High Court's holding standing — though the Court declined to settle the underlying doctrinal question on the merits. The result is that the design/passing-off overlap, for now, is governed by the 2025:DHC:5037-DB analysis, with the deeper conceptual debate left for another day.

For practitioners, the lesson is that design registration and passing-off are not an either/or election. Where a competitor copies a registered shape and deploys it within a trade dress that misrepresents origin, both remedies remain available — and a threshold objection grounded only on the existence of the design registration is unlikely, after this decision, to keep the passing-off claim out of court.

Related on Valkya

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• Christian Louboutin v. Nakul Bajaj
• Toyota v. Prius Auto Industries

Sources

• LiveLaw, "Passing Off Action For Product Registered Under Design Act Maintainable: Delhi High Court Restores Crocs' Pleas Against Liberty, Bata, Relaxo" — https://www.livelaw.in/high-court/delhi-high-court/passing-off-action-for-product-registered-under-design-act-maintainable-delhi-high-court-restores-crocs-pleas-against-liberty-bata-relaxo-296204
• Bar & Bench, "Delhi High Court revives Crocs passing-off suits against Bata, Liberty, Relaxo" — https://www.barandbench.com/news/litigation/delhi-high-court-revives-crocs-passing-off-suits-against-bata-liberty-relaxo
• SpicyIP, "Holes in Reasoning: How the Judgement in Crocs v. Bata Might Be Misunderstood" — https://spicyip.com/2025/07/holes-in-reasoning-how-the-judgement-in-crocs-v-bata-might-be-misunderstood.html