Introduction
The dynamic realm of intellectual property is perpetually in flux, shaped by both innovative creations and the evolving interpretations of legal precedents. A recent pronouncement by a division bench of the Delhi High Court in Crocs Inc. USA v. Bata India1, delivered on July 1, 2025, has ignited a significant dialogue at the very intersection of design protection and the expansive concept of trade dress. This pivotal ruling, which also considered an appeal involving Dart Industries v. Vijay Kumar2 Bansal, heavily draws upon the five-judge bench decision of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries Ltd3. While the Crocs judgment seemingly aligns its reasoning with Carlsberg, a deeper scrutiny suggests a potential divergence in understanding, one that risks blurring critical distinctions and, perhaps inadvertently, extending the ambit of intellectual property protection in ways that could have profound market implications.
At the heart of the Crocs judgment lies the assertion that a passing-off action based on trade dress can derive its foundation solely from the subject matter of a design infringement suit. This effectively suggests that a product’s distinctive shape, such as the globally recognizable Crocs clog, might be deemed sufficient to support both design infringement and passing-off claims. Crucially, this perspective seems to diminish the requirement for demonstrating a broader trade dress or an overarching “get-up.” While this might appear to simplify legal recourse, it carries the inherent risk of oversimplifying the intricate interplay between distinct forms of IP, potentially overlooking their unique conceptual underpinnings.
Carlsberg’s Blueprint: A Differentiated Approach to IP
To truly appreciate the nuances of the Crocs decision, one must first thoroughly examine its supposed jurisprudential bedrock: the Carlsberg judgment. The Carlsberg bench, particularly through Justice Ravindra Bhat’s insightful opinion,aimed to clarify the viability of passing-off actions within the domain of registered designs. The Crocs Court appears to have interpreted a specific segment of the Carlsberg judgment as an unequivocal green light for merging a product’s design with its trade dress. However, a meticulous reading of Carlsberg reveals a far more nuanced and refined stance.
Carlsberg commenced by rectifying what it considered an “erroneous” finding from an earlier case, Mohan Lal v. Sona Paint and Hardware, which had suggested that using a registered design as a trademark could not be a basis for its revocation. Having clarified this, the Court swiftly moved to endorse the “bigger legal formulation” of Mohan Lal. This is where the critical differentiation emerges. Carlsberg indeed affirmed the maintainability of a passing-off action, but significantly qualified this by stating it is one “not limited or restricted to trademark use alone, but the overall get up or ‘trade dress’.” This pivotal distinction, between a design acting purely as a trademark and its integration into a comprehensive trade dress, encapsulates the profound wisdom of Carlsberg.
The Carlsberg bench was precise in its articulation, asserting that such a claim is valid where “the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on.” The language here is carefully chosen and loaded with meaning. Terms like “larger trade dress,” “presentation,” and “packaging” are not just descriptive; they signify a conceptual expansion beyond the bare design. Consider the distinct packaging of a popular cereal brand: its unique font, the vibrant color scheme, the whimsical character illustration, and even the texture of the box. While the box’s structural design might be registered, its complete trade dress extends to all these elements working in concert.
The Carlsberg Court was not equating the isolated design with the sole subject of a passing-off action; rather, it underscored the necessity of “something more”—an encompassing commercial presentation—for a successful trade dress claim. This elusive “something more” seems to have been either inadvertently overlooked or perhaps even intentionally sidestepped by the subsequent Crocs judgment.
Trade Dress: The Holistic Brand Narrative
The precise differentiation articulated in Carlsberg is not merely an academic point; it is fundamental to grasping the expansive scope and true purpose of trade dress. Unlike a design right, which typically protects a specific ornamental feature or configuration for a fixed, statutory period, trade dress embraces the “total image” and “overall appearance” of a product or service. It functions as a holistic concept, encompassing the “set of any combination in which a product or service is shown to the buyer,” spanning everything from its packaging and inherent form to its graphics, color schemes,and even its advertising style. This integrated commercial presentation, this unique synergy of visual and experiential cues, is what cultivates goodwill and serves as an undeniable badge of origin for consumers.
An illuminating example from Indian jurisprudence is the Delhi High Court’s insightful judgment in Colgate Palmolive Company v. Anchor Health And Beauty Care Pvt. Ltd4. In this instance, the passing-off claim was not hinged on a solitary element but on the synergistic combination of a cylindrical tooth powder tube with its distinctive 1/3rd red and 2/3rd white color scheme. The Court astutely recognized that for an unsuspecting consumer, the “overall impression” conveyed by the “colour combination, getup or lay out appearing on the container” was the true source of confusion. Despite the clear distinction in brand names (“Colgate” versus “Anchor”), the defendant’s appropriation of the plaintiff’s distinctive “get-up” was deemed sufficient to mislead the public.
The Court eloquently characterized trade dress as the “soul for identification of the goods as to its source and origin,” a soul residing in the harmonious blend of “colour combination, get up, lay out and size of container.” This vividly illustrates how a constellation of elements, not just one, forms the core of trade dress.
Consider another real-world scenario: the distinct yellow and red packaging of a famous Indian snack brand, combined with its unique wavy crisp shape. While the shape might have a design registration, the brand’s identity for consumers lies in the complete ensemble of visual elements – the colors, the typography, the imagery, and the overall feel of the packet.These elements, collectively, create a distinct impression that fosters consumer loyalty.
Applying this nuanced understanding to the Crocs clog, its design right safeguards its registrable, static physical shape.Its trade dress, however, extends significantly beyond this single form. It encompasses the novel combination of that distinctive shape with its famously vibrant color palette, the characteristic ventilation holes (which notably facilitate the attachment of Jibbitz charms, a phenomenon that has birthed an entire subculture of personalization), and the iconic rocker strap. This collective visual identity, this “larger trade dress get-up,” precisely embodies what the Carlsberg court envisioned. It is the entire symphony of visual cues, not merely a single note, that resonates with the consumer and fosters enduring brand recognition.
The perceived misstep of the Crocs judgment lies in its apparent failure to fully embrace this critical distinction. By potentially allowing a passing-off claim to rest solely on the clog’s shape, the Court risks shrinking the rich, multifaceted concept of trade dress into the narrow, isolated confines of a design. In doing so, it potentially misjudges that a consumer’s goodwill is intrinsically tied not just to a product’s form, but to the entire recognizable package that unequivocally proclaims, “This is a Croc.”
The Functionality Hurdle: A Check on Perpetual Exclusivity
The Crocs court’s ruling, which seemingly permits a design’s shape alone to justify a passing-off claim, does more than just blur definitional boundaries; it potentially contravenes a fundamental tenet of IP law: functionality. This principle is designed to prevent businesses from utilizing trademark law to secure an indefinite monopoly over a utilitarian or aesthetically essential feature that, by its very nature, should be protected for a limited duration under patent or design law. While most commonly applied to utilitarian design elements, its less obvious but equally pertinent counterpart,”aesthetic functionality,” becomes highly relevant here. An aesthetic function is one that constitutes an “important ingredient in the saleability of the goods” or “gives competitive advantages to its user,” making it genuinely necessary for competitors to employ if they wish to genuinely compete in the market.
Consider the distinct ribbing on a tire. While it contributes to the tire’s visual appeal, its primary purpose is to provide grip and channel water. Granting perpetual trade dress protection to this specific ribbing design solely based on its appearance could unfairly restrict other tire manufacturers. Similarly, the specific ergonomic curve of a widely used computer mouse,while visually appealing, is intrinsically linked to comfortable use. If this curve were granted indefinite trade dress protection solely for its design, it could hinder innovation in ergonomic computing peripherals.
The distinctive and now iconic shape of the Crocs clog is, arguably, its paramount aesthetic and commercial attribute. By allowing this very shape to form the sole basis of a trade dress claim—a right that, unlike design registration, can endure indefinitely—the court risks inadvertently conferring an eternal right over a popular aesthetic design. This could significantly hinder innovation and healthy competition in the market, essentially granting a perpetual monopoly on a particular aesthetic.
While not binding on Indian courts, US jurisprudence offers a compelling comparative perspective on this very issue. In Wal-Mart Stores, Inc. v. Samara Bros5., Inc., the US Supreme Court unequivocally held that product design can never be “inherently distinctive” and must always be supported by proof of “secondary meaning” (i.e., consumers associating the design with a particular source). The Court reasoned that “product design almost invariably serves purposes other than source identification.” This represents a crucial safeguard against overreaching IP claims. The Carlsberg bench, by demanding a “larger trade dress get-up,” respectfully acknowledged this very line of reasoning. The Crocs judgment,however, arguably risks dismantling this carefully constructed barrier, potentially leaving the door open for design rights to be unjustifiably extended and disrupting the delicate competitive equilibrium that intellectual property law strives to maintain.
Conclusion
In light of the Delhi High Court’s recent Crocs judgment, a critical re-evaluation of the intricate relationship between design rights and trade dress becomes imperative. While seemingly a pragmatic step towards streamlining IP enforcement, this decision’s perceived deviation from the nuanced framework established in Carlsberg risks a significant conceptual conflation. By potentially allowing a product’s distinctive shape, ordinarily protected by finite design registrations, to unilaterally underpin a perpetual trade dress claim, the Court may inadvertently open the floodgates for extended monopolies over aesthetic elements. This could stifle healthy competition and curb the very innovation that IP laws are designed to foster, prompting concerns from both legal scholars and market players about the long-term impact on industrial design and product development.
The ramifications of this judgment are far-reaching, setting a potential precedent that could encourage businesses to prioritize design registration as a backdoor to indefinite trade dress protection, circumventing the more stringent requirements for establishing secondary meaning for product configurations. This shift could lead to a proliferation of litigation as entities seek to assert perpetual rights over popular product forms, thereby impacting consumer choice and market dynamism. Imagine a scenario where a widely adopted ergonomic chair design, initially protected for a limited period, could then claim perpetual trade dress protection, effectively blocking competitors from offering equally comfortable and functional alternatives. Such an outcome would fundamentally alter the competitive landscape, potentially creating an uneven playing field.
Ultimately, the Crocs decision invites crucial questions for the future of Indian IP jurisprudence. Will this judgment prompt a re-examination of the “something more” requirement for trade dress claims involving product shapes? How will courts balance the need to protect legitimate goodwill associated with a product’s overall presentation against the imperative of preventing indefinite monopolies over functional or aesthetically essential designs? The legal community and industry alike will be closely watching for subsequent rulings that either reinforce or refine this interpretation, as the delicate equilibrium between fostering creativity and promoting competition hangs in the balance. The path forward demands clarity and a robust understanding of the distinct roles each IP right plays in safeguarding innovation while ensuring a vibrant market.
Citations
- USA v. Bata India RFA (OS) (Comm) 22/2019
- Dart Industries v. Vijay Kumar FAO(OS) (COMM) 358/2019
- Carlsberg Breweries A/S v. Som Distilleries Ltd. AIR 2019 DELHI 23
- Colgate Palmolive Company v. Anchor Health And Beauty Care Pvt. Ltd. 2003VIIIAD(DELHI)228
- Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205 (2000)
Expositor(S): Adv. Anuja Pandit
