DESIGN INFRINGEMENT CASE STUDY OF

CROCS INC. USA v/s BATA INDIA LTD. &

OTHERS
(MBAE001)

Submitted by:-
Ananya Srivastava (2019PBA9209)
Kritika Nigam (2019PBA9219)
BRIEF FACTS OF THE CASE
Crocs Inc. USA filed cases against Bata India Action Shoes Pvt.  Ltd., Aqualite India Ltd.,Bioworld,
Merchandising India Ltd., Liberty Shoe Ltd, Relaxo Footware Ltd, and Kidz Palace in the Delhi High
Court and the case was taken up by Hon’ble Justice Valmiki J. Mehta alleging infringement of their
design No. 197685 which is valid up to 28.05.2019.The designs are related perforated and non
perforated shoe design. 

• The Plaintiff was Crocs Inc. USA

• The defendants were Bata India Action Shoes Pvt.  Ltd., Aqualite India Ltd.,Bioworld, Merchandising
India Ltd., Liberty Shoe Ltd, Relaxo Footware Ltd, and Kidz Palace.
The Plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit
was filed were found to be not new or original and therefore the Plaintiff pressed for the injunction on
the ground of passing off of trademark which is an action in common law.

It was settled by  an earlier judgment of a five judge bench that as long as the elements of design are
not used as a trade mark, but a larger trade dress get up, presentation of the product through its
packaging and so on, given that a passing off claim can sustain.

A passing off action has been held to be maintainable with respect to elements of trade dress and
overall get up, other than registered design and not with respect to registered design.

Plaintiff pleaded that the design of its footwear can be used as a trademark, under the Trade Marks
Act, 1999.
The Defendants opposed the argument that the trademark cannot be used as a design under the
Design Act, 2000.
ISSUES OF THE CASE
Since the case is all about design this raises a few issues in the case:
1.Whether the plaintiff’s design was in the public domain prior to registration or not?

2.Whether the design of the plaintiff’s footwear was new, unique, and original.

3.Whether the registered design constitutes a trademark.  

4.Whether a Design can function as a trademark or not?

APPLICABLE RULE
Section 2(d), Designs Act, 2000

ARGUMENTS OF THE CASE

It was argued by the Defendants that if the passing off action is claimed of elements of the design as a
trademark, no passing off action lies. Since the plaintiff itself relied on the use of its registered designs as
a shape trade mark and no additional features qualifying as trade dress, which is not part of the
registered design have been pleaded or pointed out, the passing off suit is not maintainable.

The plaintiffs stated that their registered design was infringed upon the various defendants in some way
or another. The most common design element that was copied, were signature gaps as the design
element. The defendants stated that the alleged piracy and infringement never occurred as the said
design of the plaintiff should not have been registered in the first place.

As per the defendants the registered design of the plaintiff should not have been registered in the first
place as its was neither new or original. They also stated that the design was in the public domain even
before it was registered and so cannot claim exclusivity.
DECISION AND FINDINGS
The court agreed with the Defendant that the plaintiff has not been able to show any extra features,
besides the design, which is used as a trade mark. The Court interpreted the legislative intent of the
Design Act which is to grant limited monopoly by design registration and after the term of registration, it
should be open for anyone to use the said design.

The court held that a registered design cannot constitute a trade mark; however if there are features  other
than those registered as a design and are shown to be  used as a trade mark and with respect to which
goodwill has been acquired,  it is only those extra features which can be protected as  a  trade  mark. If
there has been a copy   of registered design, only an action for infringement under the Designs Act would
lie.

The court held that the plaintiffs design cannot be considered truly inventive or new because of prior
publication in various companies and medium. Hence, the plaintiffs cannot allege infringement or piracy.

To decide whether plaintiff’s design was in the public domain or not the court referred to Reckitt Benkiser
India Ltd. Vs. WYETH Ltd. where a full bench came to the conclusion that prior publication in a foreign
country will amount to prior publication.
CONCLUSIONS
Even though the plaintiffs design was registered in different countries they never got the benefit of such a
registration as the court thoroughly went through the argument of being a new and innovative designed product. The
court reasoned that to be new and original there should be significant change in the existing design.
Even to figure out if the product was available in the public domain the court looked at all the design aspects that
were available publicly. 

 Plaintiffs were asked to compensate the defendants to the tune of Rs. 2 Lakh over and above their legal costs. Such
a heavy cost was imposed just to make the plaintiff realize the amount of harm it caused to other defendants when
they got injunctions passed against the defendant.

This judgement comes as a relief to manufacturers and companies who use publicly available designs but are
hampered by big corporations who use all the tricks in the book to get injunctions.
CASE DETAILS

The case was judged by:

- HON'BLE MR. JUSTICE S. RAVINDRA BHAT
- HON'BLE MR. JUSTICE A.K. CHAWLA

The case was presented in:

IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 08.05.2018
Pronounced on: 24.01.2019