India: Crocs loses design infringement case

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22 March 2018

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.