Shedding crocodile tears

Crocs Inc. is a popular U.S. brand known for its unusual clog like footwear which may have a perforated or a non-perforated surface design. It is for this reason that Croc Inc obtained design registration for both its usual designs. This was followed by Croc Inc. filing multiple suits against its competitors such as Liberty, Relaxo, Action Shoes, Bata etc. to injunct them from selling footwear which were identical/imitation of Croc’s registered design. Initially, Croc succeeded in obtaining an interim injunction in these cases however, the injunction orders were later vacated. These matters were heard together and recently, the Delhi High Court passed its judgment.

The Plaintiff (Crocs) claimed that the defendants (Liberty, Bata, Action Shoes etc.) were infringing on its statutory rights under Section 11 of the Designs Act, 2000 and therefore, it ought to be protected under Section 22 of the Act. The defendants argued that the Plaintiff’s design was liable to be cancelled under Section 19 of the Act on the grounds that the design had been disclosed prior to Plaintiffs application for design registration; the design lacked novelty and therefore was not registerable under the Designs Act, 2000. The Defendants filed as evidence a publication of Holey Shoes dated 2002 which showed designs which were similar to that of the Plaintiff’s and was created prior to the Plaintiff’s application for design registration. The Defendants were successful in proving that the design applied by the Plaintiff was not new or original, in fact it was a trade variant which was not capable of protection under the Act as it did not satisfy the novelty threshold.

The High Court heard the parties and concluded that the Plaintiff’s designs were variants of previously existing designs therefore no injunction could be granted in favor of the Plaintiff. Furthermore, since the Plaintiff had refused the possibility of amicable resolution with the Defendants, it was now liable under Section 35 of the Commercial Courts Act, 2016 to pay costs to each Defendant in the proceedings. This is an interesting case because the Delhi High Court took a strict interpretation for payment of costs under the Commercial Courts Act, 2015 and set a precedent against Plaintiffs filing commercial suits which lack merit.