Supreme Court Allows Crocs to Proceed With Passing Off Suits; Rejects Bata & Liberty’s Challenges
The Supreme Court on Friday dismissed the petitions filed by Bata India, Liberty Shoes, and four other footwear companies challenging a Delhi High Court decision that had allowed Crocs Inc. USA to pursue passing off suits based on alleged copying of its registered footwear designs.
A Bench of Justice Sanjay Kumar and Justice Alok Aradhe refused to interfere with the Delhi High Court Division Bench ruling dated July 1, which held that a passing off action can be filed even when the trade dress in question is registered as a design under the Designs Act. The Court also clarified that the legal issue is left open and the trial court may continue hearing the suits without being influenced by earlier observations.
Senior Advocate Neeraj Kishan Kaul, appearing for the footwear manufacturers including Bata, Aqualite, Bioworld, Relaxo, and Action Shoes, argued that a passing off suit cannot be maintained when the allegation is essentially design infringement. He submitted that the Designs Act provides limited protection for 15 years, and parties should not be allowed to extend this monopoly by filing passing off actions.
The Bench, however, noted that a Full Bench of the Delhi High Court in Carlsberg Breweries v. Som Distilleries had already held that claims of passing off and design infringement can be combined in one suit.
Senior Advocate Saikrishna Rajagopal, appearing for Liberty Shoes, argued that Carlsberg requires a passing off claim to show elements beyond what is covered under design registration. He contended that Crocs’ suits do not show any additional goodwill-based claims and allowing such actions could have wide implications for intellectual property disputes by permitting companies to “evergreen” design rights.
Justice Kumar also pointed out that Crocs did not have a trademark registration for the design in India, only a design registration.
Senior Advocate Akhil Sibal, representing Crocs Inc., argued that passing off is a common law remedy independent of the Designs Act. He highlighted that nothing in the Designs Act bars a passing off suit, and unlike the Designs Act, the Trademarks Act expressly preserves common law rights. He stated that Crocs’ trade dress has gained strong recognition since 2004, becoming iconic and widely associated with the brand, which is why they sought protection against imitation.
He explained that passing off is aimed at preventing competitors from exploiting another brand’s goodwill and distinctiveness. According to him, Crocs’ case is based on reputation and user-based rights, separate from statutory design infringement.
The Supreme Court ultimately dismissed all the SLPs filed against the Delhi High Court judgment, allowing the trial to proceed before the Single Judge.
Cases:
Bata India Ltd. v. Crocs Inc. USA — SLP(C) No. 29920-29924/2025
Liberty Shoes Ltd. v. Crocs Inc. USA — SLP(C) No. 32834/2025
