Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India
For nearly a decade, Crocs Inc. USA's fight against Indian footwear manufacturers over the shape of its rubber clog has wound its way through the Delhi High Court, and the story it tells is really about two very different kinds of intellectual property protection ageing very differently. One, a registered design, turned out to be brittle, undone eventually by its own weakness. The other, the common-law remedy of passing off, proved far more resilient, surviving the collapse of the design right that had once seemed to be its foundation. The litigation against Bata India Ltd., which produced a Single Judge ruling in 2019, a Division Bench reversal in 2025, and a costs order as recently as February 2026, offers a compact but rich lesson in how these two regimes relate to each other.
THE SHAPE OF THE DISPUTE
Crocs had registered the distinctive shape of its clog under Design Registration No. 197685 back in May 2004. But its case was never built on the design alone. The company argued that years of use and marketing had turned that same shape into something more, a "shape trademark," a piece of trade dress that consumers associated with Crocs specifically, independent of whatever statutory protection the design registration offered. When Crocs discovered in 2015 that a clutch of Indian manufacturers, Bata among them, were selling footwear that closely echoed its silhouette, it filed composite suits combining both design-infringement and passing-off claims. Procedural developments in Indian design law soon forced a split: design-infringement claims and passing-off claims had to proceed as separate suits rather than one composite action. Crocs accordingly pursued both tracks in parallel, and it is the divergence between those two tracks that makes this case worth studying.
TRACK ONE: THE DESIGN RIGHT COLLAPSES
The design suit against Bata continued until 2019, when Crocs' registration was cancelled for lack of novelty and prior publication, a fate registered designs are always vulnerable to since they depend entirely on genuine novelty. With no registration left to infringe, the Delhi High Court disposed of the suit in July 20231. Years later, Bata sought its litigation costs, and Crocs resisted on the technical ground that the 2023 order hadn't mentioned costs. The Court disagreed, holding that silence on costs isn't a waiver, and in February 20262 ordered Crocs to pay ₹24.63 lakh, relying on the Supreme Court's reasoning in Uflex Ltd. v. Government of Tamil Nadu that successful parties should ordinarily be made whole. Litigating on a registration that later turns out invalid, it turns out, carries a real financial cost.
TRACK TWO: THE TRADEMARK CLAIM VERY NEARLY DIED WITH IT
The passing-off suits took a more dramatic turn. In 20193, the Single Judge dismissed them outright, reasoning that a passing-off claim over a shape already covered by a registered design would hand Crocs a double monopoly: statutory exclusivity followed by an effectively permanent common-law one. The suits were thrown out before ever reaching trial.
Crocs appealed, and in 20254 the Division Bench reversed this. Passing off, it explained, is an independent common-law remedy that neither the Designs Act nor the Trade Marks Act expressly excludes merely because a shape is also a registered design. The earlier ruling had misread precedent: what is actually required is proof, at trial, that goodwill extends beyond the bare design, not dismissal before that evidence is even heard. Whether Crocs' clog shape had come to mean "Crocs" independently of its registered form was a factual question for trial, and even a design with functional elements can acquire that kind of distinctiveness over time. The suits were restored, with no order as to costs.
WHAT THE CASE ACTUALLY TEACHES
Design rights and passing-off claims are not mutually exclusive. Indian courts had already held that the two causes of action can't be bundled into one composite suit, but the 2025 ruling clarifies that this is a procedural separation, not a substantive bar. Losing the design case doesn't mean losing the passing-off claim.
Fact-heavy questions shouldn't be resolved at the threshold. Whether a shape has acquired distinctiveness needs evidence of consumer perception and goodwill, not a decision on pleadings alone.
The two rights age very differently. A registered design is only as strong as its novelty, which can be attacked and defeated years later, as happened here. Passing off is harder to prove up front, but once established it doesn't expire and can't be cancelled on a technical novelty challenge, which is why the claim that survived was the harder one to win.
Costs are a real consequence. The order against Crocs reflects a broader trend, driven by the Commercial Courts framework and Uflex, of treating actual litigation costs as the norm for the losing party rather than an afterthought.
Crocs v. Bata is less a single landmark ruling than a decade-long study in how two IP regimes, one statutory and time-bound, the other common-law and open-ended, can diverge even when they start from the same facts. The design right proved the weaker vessel; the passing-off claim, harder to prove but resting on no expiry clock, survived. For anyone building an enforcement strategy around product shape, that's the real takeaway: registration is useful, but it is no substitute for the underlying goodwill that common law ultimately protects.
Footnotes
1. https://delhihighcourt.nic.in/app/showlogo/1689315139847_52143_2023.pdf/2023
2. MANU/DE/4743/2026 / 2026:DHC:5476
3. https://delhihighcourt.nic.in/app/case_number_pdf/2019:DHC:1133/RSE18022019SC9032018.pdf
4. 2025:DHC:5037-DB
By
Vijay Pal Dalmia, Advocate
Supreme Court of India & Delhi High Court
Email id: vpdalmia@vaishlaw.com
Mobile No.: +91 9810081079
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AND
Krita Sharma,
4th Year, Vivekananda Institute of Professional Studies, Delhi
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