InternationalUSRemember you can easily switch between MIP US and MIP International at any time

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.

Parthasarathy
R Parthasarathy

Lakshmi Kumaran & Sridharan
B6/10 Safdarjung Enclave
New Delhi 110029, India
Tel: +91 11 41299800
Fax: +91 11 41299899


Comments






profile

Managing IP

ManagingIP

ManagingIP profile

Anna Mae Koo and Ann Xu of Vivien Chan & Co evaluate the revised Trademark Law of 2014, analysing its treatment of… https://t.co/KfVGZRQ4zZ

Apr 26 2018 01:00 ·  reply ·  retweet ·  favourite
ManagingIP profile

In SAS Institute v Iancu , the Supreme Court ruled the PTAB must review all or none of the challenged claims… https://t.co/HyuYybZo7F

Apr 26 2018 12:52 ·  reply ·  retweet ·  favourite
ManagingIP profile

in Oil States, the Supreme Court held the IPR process at the PTAB is constitutional, but left IPRs open to due proc… https://t.co/ABPdDOFfNq

Apr 26 2018 12:51 ·  reply ·  retweet ·  favourite
More from the Managing IP blog


null null null

null null null

April 2018

Special Report: Will blockchain revolutionise IP?

In this special report, Managing IP looks at how blockchain technology will change intellectual property. Ellie Mertens analyses the issues and opportunities it presents for patents, trade mark and copyright



Most read articles

Supplements