Doctrine of Passing Off in relation to registered Design
Introduction: This case revolves around the pivotal question of whether a passing off action can be sustained in relation to a design that had earlier been protected under the Designs Act, 2000 but whose registration has since expired. Crocs Inc. USA initiated suits against multiple footwear companies alleging passing off of its distinctive footwear shape, asserting that its design had acquired independent goodwill and recognition in the minds of consumers. The learned Single Judge dismissed the suits on the ground that the shape in question was previously a registered design, and therefore, to claim trade dress rights in it, the plaintiff had to establish “something extra” beyond the registered design. The Division Bench of the Delhi High Court examined the legal tenability of this reasoning and reversed the Single Judge's decision, settling critical principles of intellectual property law.
Factual Background: Crocs Inc. USA was the registered proprietor of Design No. 197685 dated 28 May 2004 under the Designs Act, 2000. The design related to a specific configuration of footwear, which Crocs claimed had become globally recognized as a source identifier. Upon expiry of the design’s statutory protection, Crocs filed multiple suits against companies such as Bata India, Liberty Shoes, Relaxo Footwear, Aqualite, Bioworld, and Action Shoes. The grievance of Crocs was that these defendants had copied the unique configuration of its footwear, thereby misrepresenting their goods as those of Crocs, amounting to common law passing off. Crocs asserted that even though the statutory protection under the Designs Act had expired, the shape had, through extensive use and market presence, attained independent goodwill protectable under trademark law as trade dress.
Procedural Background: Crocs instituted a series of suits for passing off before the Delhi High Court. The suits were: CS (Comm) 569/2017, 1415/2016, 903/2018, 906/2016, 571/2017, and 905/2016. The learned Single Judge, by a common judgment dated 18 February 2019, dismissed all suits as not maintainable. The Judge held that Crocs had failed to show any features beyond the registered design to support its claim of trade dress. Consequently, Crocs preferred Regular First Appeals (OS) (Comm) 22 to 27 of 2019 challenging the dismissal. Additionally, a related matter involving Dart Industries Inc. was also clubbed, namely FAO (OS) (Comm) 358/2019.
Legal Issue: The central legal issue was whether a passing off action based on trade dress could be maintained after the expiry of statutory design protection, and specifically, whether the claimant was required to demonstrate elements “in addition” to the registered design to sustain such a claim.
Discussion on Judgments:The learned Single Judge relied on the Five-Judge Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 256 (2019) DLT 1 (FB), and interpreted it to mean that once a shape or configuration was registered as a design, it could not later be protected as a trademark unless there was “something extra” beyond the registered design. The Single Judge also considered the Full Bench ruling in Mohan Lal v. Sona Paint & Hardware, 200 (2013) DLT 322 (FB), to support the view that passing off and design infringement are conceptually distinct and should be based on different grounds.
The Division Bench, however, undertook an in-depth examination of both Mohan Lal and Carlsberg. It observed that the majority in Mohan Lal had permitted a passing off action even in respect of a product whose design was previously registered under the Designs Act, so long as goodwill, misrepresentation, and likelihood of confusion were established. The Bench clarified that Carlsberg did not override Mohan Lal, and the proposition requiring “something extra” beyond the registered design was not an accurate representation of law. The Court emphasized that once design protection lapses, common law remedies are not extinguished, and trade dress rights can be enforced based on consumer association and market goodwill.
Reasoning and Analysis of the Judge: The Division Bench found that the Single Judge had misapplied the principle laid down in Mohan Lal and had read too much into certain paragraphs of Carlsberg which were merely explanatory. The Bench held that passing off is an independent tort that safeguards goodwill and prevents consumer deception, irrespective of prior design registration. The fact that the design was once protected under the Designs Act does not bar the claimant from asserting trade dress rights after its expiry.
The Court clarified that the requirement of proving “something extra” beyond the registered design was not a valid precondition to sustain a passing off action. What matters is whether the shape or configuration, regardless of its history under design law, has come to denote the source of the product in the minds of the public. If the public associates the shape exclusively with Crocs, that is sufficient to establish trade dress. The Court also underscored the principle that intellectual property regimes under the Designs Act and Trademark Law can operate sequentially, and not necessarily exclusively, especially once design rights lapse.
Final Decision: The Division Bench allowed all the appeals filed by Crocs. It set aside the judgment of the learned Single Judge dated 18 February 2019 and held that the passing off suits were maintainable. The Court remanded the matters back for adjudication on merits in accordance with law.
Law Settled in This Case: The law settled in this case is that a trade dress claim can be validly founded on a design previously registered under the Designs Act, once the statutory design protection has lapsed. The requirement of demonstrating “something extra” beyond the registered design is not a legal necessity. A shape that has acquired goodwill and functions as a source identifier may be protected under the common law of passing off, even if it had earlier been registered as a design.
Case Title: Crocs Inc. USA Vs. Bata India Ltd.: Date of Order: 1 July 2025:Case Numbers: RFA (OS) (Comm) 22/2019, 23/2019, 24/2019, 25/2019, 26/2019, 27/2019; FAO (OS) (Comm) 358/2019: Neutral Citation: 2025:DHC:5037-DB:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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