How Delhi HC Recent Crocs Verdict Undermines India's IP Framework

The recent decision of the Delhi High Court in M/S Crocs Inc. USA v. M/S Bata India & Ors. (RFA (OS) (Comm) 22/2019 and connected matters, decided on 1 July 2025) has sparked renewed debate on the uneasy relationship between the Designs Act, 2000 and the Trade Marks Act, 1999.

- DR. MAINAN RAY

At its core lies the question: can a design registered under the Designs Act also function as a trademark or trade dress protected under common law via a passing off action?

The Court's answer was an unequivocal no. In a series of coordinated cases, Crocs alleged that many companies in India had adopted the distinctive shape of its footwear—protected under Indian Design Registration No. 197685—and used it in a manner that amounted to passing off. The Court dismissed all the cases as not maintainable, holding that once a product shape is registered under the Designs Act, it cannot simultaneously claim protection as a trademark or trade dress.

This article seeks to critically examine the Delhi High Court's ruling, question its interpretation of the law, and argue that the decision fails to align with both statutory intent and international jurisprudence.

I. LEGAL FRAMEWORK: DESIGNS VS. TRADE MARKS

The Designs Act, 2000 defines a "design" under Section 2(d) as the features of shape, configuration, pattern, ornament or composition applied to any article by an industrial process, which are judged solely by the eye. Section 19(e) provides that a design can be cancelled if it is not a "design" under the Act.

The Trade Marks Act, 1999 defines a "trademark" under Section 2(1)(zb) to include shape of goods, capable of distinguishing one person's goods from another's. Importantly, Section 27 preserves the common law action for passing off even for unregistered trademarks.

These two regimes serve different objectives like the Designs Act incentivizes innovation in aesthetics by granting time-limited monopolies (up to 15 years), while the Trade Marks Act protects source identifiers to prevent consumer confusion, potentially indefinitely.