Background
Crocs Inc. USA has long alleged that multiple Indian footwear companies — including Bata, Liberty, Relaxo, Action Shoes, Aqualite, and Bioworld Merchandising — copied the shape, configuration, and perforated design of its foam clogs, and that this constitutes both trade dress infringement and passing off. In February 2019, a single judge of the Delhi High Court dismissed all six suits at the threshold, holding that Crocs could not maintain passing off actions once the same product configuration was protected as a registered design — allowing passing off, the judge reasoned, would extend a registered design's limited 15-year statutory monopoly indefinitely through the back door.
The Division Bench Reversal
In July 2025, a Division Bench of Justices C. Hari Shankar and Ajay Digpaul reversed the single judge, holding the threshold dismissal was premature and that the substantive merits of Crocs' passing off claims — trade dress validity, consumer confusion, and accrued goodwill — warranted full trial. Bata and Liberty then moved the Supreme Court by Special Leave Petition.
Liberty's Argument
Liberty argued the Division Bench misread the Full Bench ruling in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., which held that once a design is registered, its protected features cannot simultaneously receive passing off protection unless the claimant shows "something more" beyond the registered design itself. Permitting Crocs' suits to proceed, Liberty contended, would create an impermissible "dual monopoly" — indefinite trademark-style protection over features Parliament intended to protect only for a limited statutory term. Liberty also invoked Mohan Lal v. Sona Paint & Hardwares, distinguishing designs (integral product features) from trademarks (indicators of commercial origin).
The Supreme Court's Ruling
A Bench of Justices Sanjay Kumar and Alok Aradhe dismissed the SLPs, holding the Division Bench had merely restored the suits for trial — it had not granted Crocs any substantive relief. The Court directed: "the trial court or the learned single judge shall consider the matters uninfluenced by any observations made by the division bench or by the dismissal of these SLPs. Question of law kept open."
Significance
The core legal questions remain open for trial: whether registered designs can simultaneously be protected under passing off, the proper scope of the "something more" doctrine from Carlsberg, and how far trade dress protection extends to functional product features after design registration expires. Combined with the Delhi High Court's own recent trajectory on composite design/passing off suits (see our note on Carlsberg Breweries v. Som Distilleries and Novamax v. Prem Appliances), this case will be a significant marker for how Indian courts balance statutory design monopolies against common law trade dress rights.