Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

India: Crocs loses design infringement case

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.


R Parthasarathy

Lakshmi Kumaran & SridharanB6/10 Safdarjung EnclaveNew Delhi 110029, IndiaTel: +91 11 41299800Fax: +91 11

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making