Timeline
| Date | Event |
|---|---|
| 28 Aug 2014 | Ex-parte ad-interim injunction granted; Local Commissioners seize alleged infringing stock from Bata's premises. |
| 8 Feb 2018 | Single Judge vacates the injunction — design lacks novelty, previously published in the public domain; actual costs plus Rs. 2 lakh awarded to defendants. |
| 24 Jan 2019 | Division Bench dismisses Crocs' appeal; connected shape-mark/passing-off suits remitted for composite hearing. |
| 9 May 2019 | Deputy Controller of Patents & Designs cancels Design No. 197685 — held "not new or original" under Section 2(g). |
| 23 Sep 2019 | Supreme Court disposes SLP; Crocs directed to pay interim costs within four weeks, subject to the suit's final outcome. Payment did not follow. |
| 12 Jul 2023 | Suit disposed — with the design cancelled and its statutory term already expired in 2019, the substratum was gone. Liberty reserved to revive if Crocs' Calcutta HC appeal against cancellation succeeds. |
| 2 Jul 2026 | Court directs Crocs to pay Bata's full, undisputed actual costs of Rs. 24,63,400, applying Uflex v. Government of Tamil Nadu. |
Cancellation of the Design — The Turning Point
While the infringement suit proceeded, a separate cancellation petition filed by M/s Brainbees Solutions Pvt. Ltd. succeeded before the Deputy Controller of Patents & Designs, who cancelled Design No. 197685 in its entirety — holding it had been published prior to registration and that the registrant's claimed features were insufficient to alter the identity of an already-published design, squarely invoking the originality requirement under Section 2(g) of the Designs Act, 2000. This cancellation proved decisive: by 2023, with the design's substratum gone and its statutory term already expired, the infringement suit itself could no longer continue.
The Costs Application: Legal Framework
Bata moved I.A. 25948/2023 under Sections 35 and 35A CPC (as applicable to commercial disputes). The Court's analysis rested on: Section 35 CPC as amended for commercial disputes, which mandates that costs ordinarily follow the event; the Commercial Courts Act, 2015, which introduced this amended costs regime; and Chapter XXIII Rule 5 of the Delhi High Court (Original Side) Rules, 2018, which prescribes the contents of a Bill of Costs — court fees, process fees, witness expenses, advocate's fees including senior counsel fees, and incidental costs — with Rule 5(f) further empowering the Court to weigh litigation conduct (judicial time consumed, service delays, frivolous objections) in quantifying costs.
A doctrinal caveat worth noting: although the application and order invoke Section 35A alongside Section 35, the operative engine in commercial disputes is the substituted Section 35 introduced by the Commercial Courts Act, read with Uflex and the Original Side Rules. Section 35A is directed at compensatory costs for false or vexatious claims and carries a historic monetary cap in ordinary civil suits — its continued relevance within the commercial-dispute framework is doctrinally debatable. Practitioners are better advised to anchor costs applications primarily in the amended Section 35.
The Uflex Principles Reaffirmed
The Court's reasoning leaned heavily on Uflex Ltd. v. Government of Tamil Nadu & Ors., 2021 INSC 492. In substance: costs following the event is the norm in most jurisdictions, and Indian courts' historical hesitancy to impose meaningful costs is not the correct approach — in commercial matters, costs must follow the cause. The Law Commission of India (Report No. 240) had already flagged that meagre costs fail to deter vexatious, ego-driven, or delay-tactic litigation. Three principles emerge: costs should ordinarily follow the event; realistic costs should be awarded given escalating litigation expense; and the costs regime should curb frivolous and vexatious litigation. Since all parties were commercially sophisticated entities that made a conscious decision to litigate through multiple fora, the Court held they must bear the consequences — success or failure — in the form of realistic costs.
It bears noting that Uflex itself arose from a tender challenge in writ jurisdiction; its transposition to IP suits reflects a deliberate policy choice of the Delhi High Court's commercial and IP benches, and litigants before other High Courts should calibrate their expectations accordingly.
Quantification and Outcome
Mr. Riccardo Facchin, Crocs' Global IP Head, appeared before the Court via hybrid hearing from Amsterdam to explain the Plaintiff's practice of appointing a constituted attorney to sign pleadings — the Court merely recorded this submission without expressly endorsing the practice. Bata furnished a bill of costs supported by documents and affidavit, totalling Rs. 24,63,400, inclusive of the costs earlier fixed at the interim stage. Crocs did not dispute this figure. The Court directed payment in full within three months, with Bata's pending execution petition (Ex. P. 64/2022) to stand disposed of upon payment.
A note on quantum: Rs. 24,63,400 for twelve years of litigation across four fora is, by international standards, a modest sum — the real significance lies in the principle applied, and in the fact that an undisputed, rule-compliant bill of costs was decreed in full, with the Court quantifying costs itself rather than routing the matter to a separate contested taxation exercise before a Taxing Officer.
Key Takeaways for Corporate Clients and Foreign Counsel
- Real costs are here to stay in Indian commercial IP litigation. Nominal or token costs awards are receding before specialised commercial benches such as Delhi's IP Division. Litigants should budget for genuine costs exposure if they lose, and maintain contemporaneous, well-documented records of legal spend to maximise recovery if they win.
- Heightened costs exposure in ex parte seizure orders. A plaintiff obtaining an ex parte injunction with seizure through Local Commissioners assumes heightened costs exposure if the registration later falls — the Court expressly weighed the 2014 seizures' business impact on Bata in its final reasoning.
- Validity challenges can outrun infringement suits. A parallel cancellation or revocation proceeding can extinguish the very registration underpinning an infringement action, even where the infringement suit is otherwise well advanced. Coordinating validity-defence and enforcement strategy across fora is essential.
- Interim costs orders are payable, not merely provisional. The Supreme Court's 2019 order required payment within four weeks, subject to the final outcome — payment was mandated, not suspended. Crocs' non-payment forced Bata into execution proceedings; losing parties should treat interim costs directions as immediately enforceable.
- Disposal without an express costs order is not a waiver. Silence on costs in a disposal order does not, at least prima facie, bar a subsequent, separate costs application — but the safer practice is to expressly reserve or seek costs at every disposal stage to avoid satellite litigation.
- Documentation wins costs applications. Bata's unopposed Rs. 24,63,400 bill, supported by invoices and affidavit evidence tested against the Chapter XXIII Rule 5 checklist, was central to the Court accepting the figure without contested taxation. Foreign clients should instruct Indian counsel to maintain granular, rule-compliant costs records throughout the litigation, not only at its conclusion.
- Remote participation is accepted practice. The Court's acceptance of a global IP head appearing via hybrid hearing, and its recording of constituted-attorney practice without adverse comment, confirms Indian courts accommodate the realities of multinational corporate litigation management.