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No Novelty in crocs clog shoe Design

M/s Crocs Inc. (Crocs) brought Design Infringement action against seven local manufacturers, M/s Liberty Shoes Ltd, M/s Relaxo Footwear & Anr. Ltd., Bioworld Merchandising India Ltd., M/s Bata India Ltd & Ors., M/s Action Shoes Pvt. Ltd. & Ors., Aqualite India Limited & Anr., Kidz Palace & Ors., for copying their design registered under nos. 197685 and 197686 and depicted below.

197685                                                   197686

                    

The design produced by local manufacturers are also reproduced below.

                      

           

On the basis of their registered rights, Crocs was granted ex parte interim injunction against the local manufacturers and the injunction has been continuing for more than three years until February 08th 2018, when the Delhi High Court clubbed all the cases and decided them by a way of common order holding that:

  1. Crocs registered Designs are not new and prior published; and
  2. Crocs design was mere variation of existing products. Crocs had not demonstrated requisite amount of newness or originality for being granted monopoly

Design prior published

The Defendant/s relied on the internet downloaded pages from the website of the company Holey Soles, which disclosed holes/spaces/gaps existing in the footwear- these were sandals without a strap, as depicted below. The document had a publication date of 10th December, 2002 (i.e. earlier to the plaintiff’s claim). Additionally, the defendant/s also filed the printout downloads from the website of Crocs itself showing that the designs were already published by them before filing the Design application.

                  

The Plaintiff submitted that the design has to be looked as a whole. There are various features in the registered designs with respect to the placement, shape and size of the perforations/gaps/open spaces, and the hump like protrusion at the front of the footwear, and that there exists a mound above the joint portion of the limb of the foot with the foot, and the designs of the soles are unique. Further when such features are taken as a whole, they have visual appeal, newness or originality for having been rightly granted registrations under the Act. The Court took the view that printouts downloaded from the website of Holey Soles shows the footwear design therefore Crocs cannot claim exclusivity for its registered design merely on the ground that its footwear/registrations does have a strap at the back of its footwear.

No Novelty in Design

The Court took the view that Sandal with open spaces is only trade variations of a sandal placing of the open spaces or perforation or gaps, and sandals being with or without straps at the back, are merely variations or trade variations of footwear. The court relying upon an earlier decision Pentel Kabushiki Kaisha concluded that mere variations to existing products which do not result in requisite amount of newness or originality cannot be considered as innovations having newness and originality for being granted Design registration and resultant monopoly for fifteen years.

To sum up – a setback for Crocs as not only the injunction was set aside and design held to lack novelty but also the court came down quite heavily on Crocs. The court opined that the Defendants are also entitled to costs incurred by them towards time and man hours spent for conducting their defence/s in the present suit. The court also recorded the assertion of the Defendants that they have suffered losses of profits running into several millions, on account of interim injunctions having been obtained by Crocs, and obdurately and illegally continued by them.





Disclaimer: The content of this article is based on personal understanding of the authors and is not intended for any legal advice. Customised solutions and strategy needs to be devised for specific situation.