In the case, Crocs Inc USA v Liberty Shoes
Limited [CS (COMM) No 772/2016 and connected cases],
Crocs (the plaintiff) held design registrations (Nos 197685 and
197686) under the Design Act 2000 (the Act), for its perforated
and non-perforated clog-type slipper/shoes. From 2014 to 2018,
Crocs filed several suits for infringement of its registered
designs, seeking a permanent injunction against the defendants,
restraining them from infringing the design of Crocs
footwear.
Crocs contended that imitation of its designs by the
defendants amounted to piracy and/or infringement of its
registered designs and its rights under Section 11 of the Act
and asserted that it was entitled to protection under Section
22 of the Act. The defendants contended that there could not be
piracy of the registered design as the registration granted to
Crocs with respect to footwear was itself invalid as (a) the
design was in the public domain prior to its date of
registration and (b) it was not new or original, and therefore
liable to be cancelled under Section 19 of the Act. The
defendants also relied on Section 22(3) and (4) of the Act.
The defendants put forth evidence to show that a design
similar to the design of Crocs had been disclosed in around
2003, by Holey Shoes and also by Crocs itself on its website in
2002. The court appreciated the evidence placed before it, and
accepted that a prima facie case existed in favour of the
defendants. Since a design similar to the design of the
footwear of Crocs had already been published in the public
domain prior to the registration date of the design, Crocs
could not claim any exclusivity for its registered design and
it was liable to be cancelled in terms of Section 19(1)(b) read
with Section 4(b) of the Act.
The court, while deciding the issue of novelty and
originality, referred to its judgment in Pentel Kabushiki
Kaisha & Anr v M/S Arora Stationers & Ors and held
that the registered design of Crocs with respect to its
footwear did not have the necessary novelty or originality for
it to be granted protection under the Act. The court while
dismissing the injunction applications filed by Crocs in the
suits, awarded costs of Rs 2 lakhs ($3,000) in addition to
legal costs incurred till date to each defendant.
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| R Parthasarathy |
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