Crocs had filed a suit against Bata India Ltd., Liberty Shoes Ltd., Action Shoes Pvt. Ltd.,   Aqualite India Ltd., Bio World Merchandising India Ltd., RelaxoFootware Ltd., And Kidz Palace. Crocs file a case for a permanent injunction seeking to stop all the other manufacturers from making the design of appellant footwear. The designs are related to holed and non-holed shoe design. All these footwear manufactures for supposedly adopting and copying the registered design No. 197685 which is valid up to 28.05.2019 of the clog- type slippers sold by Crocs. Cases were filed in different lower courts against different manufacturers and Delhi high court seeing the same interest clubbed all the cases pending in the court and heard it together.

Crocs Inc. The USA had started to file suits against major players of the footwear in India when they were informed of the same. The Plaintiff asked for interim judgment and the defendant contended that suit is not maintainable in the light of the pronouncements of the Five Judge Bench of this Court in Carlsberg Breweries A/S vs. SomDistilleries and Breweries. 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?

What did the plaintiff say?

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, was signature gaps as the design element.

What did the Defendants say?

1. 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.
2. Defendants based their arguments on interpretation subsection 4 of section 22 of the Designs Act.
3. Defendants also referred to Clauses (b) to (d) of Sub-Section (1) of‚Section of the Design Act.

Applicable Rule

Section 2(d), Designs Act, 2000

Arguments

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.

Decision

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 trademark. 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 trademark; however if there are features other than those registered as design and are shown to be used as a trademark and with respect to which goodwill has been acquired, it is only those extra features which can be protected as a trademark. If there has been a copy of the registered design, the only action for infringement under the Designs Act would lie.