A division bench of the Delhi High Court recently passed a judgment addressing whether a remedy against a passing off allegation be sought for a design registered under the Designs Act. The judgement was passed in an appeal arising out of two orders of a single judge passed in Dart Industries v. Vijay Kumar Bansal and Crocs v. Bata (which was passed after clubbing together 5 suits), and relies extensively on a DHC 5 judge bench decision in Carlesber v. Som Distilleries. Shailraj Jhalnia takes a look at the DB judgement and highlights how the Court might have incorrectly interpreted the Carlesberg judgement to equate design with trade dress. Shailraj is a third Year Law Student pursuing B.A. LL.B. from National Law School of India University, Bangalore with a keen interest in IP Law, Arbitration and Criminal Law.
Double-Dipping via Design? Why the Crocs Judgment on Trade Dress and Design Rights Wrongly Mixes it Up
By Shailraj Jhalnia
The Delhi High Court on 1st of July, 2025 in Crocs Inc. USA v. Bata India has reignited a long-standing controversy at the nexus of intellectual property rights, holding that an action against trade dress passing off can be based on the same subject matter as a design infringement suit. This decision in effect holds that the distinctive shape of a product, here the now-famous Crocs clog, will be enough on its own to support both design infringement and passing-off claims, without a need to prove ‘something more’ in the nature of a wider trade dress or get-up.
Though the Court’s rationale rests on interpreting the seminal five-judge Delhi High Court bench decision in Carlsberg Breweries A/S v. Som Distilleries Ltd., a closer analysis would show that such an approach could be reductive. Instead of reducing the two notions to each other, the Carlsberg judgment provides a rich framework that meticulously differentiates between use of a design as a ‘trademark’ and its use as part of a ‘wider trade dress get-up’. This post will look back to the Carlsberg decision to contend that its real task was not to equate a design with its trade dress, but to maintain the critical difference between them so that a passing-off claim be based upon the goodwill of a product’s overall commercial presentation and not merely its registrable shape.
What Carlsberg Really Said
In order to critically evaluate the Crocs judgment in a balanced manner, we have to go back to its source of jurisdiction: the five-judge bench ruling in Carlsberg (discussed on the blog here). The substance of the issue is in paragraph 43 of Justice Ravindra Bhat’s opinion, which seems to have been read by the Crocs Court as carte blanche to merge a design of a product with its trade dress. A close reading, however, shows a much more subtle stance. (Carlsberg Breweries, pg 42 ).
The Carlsberg bench starts out by correcting what it considered an “erroneous” finding in the earlier Mohan Lal v. Sona Paint and Hardware case, namely, the proposition that the use of a registered design as a trademark was not a basis for its revocation. Having established this, the Court immediately turned around to support what it refers to as the “bigger legal formulation” of Mohan Lal. This is the key differentiation. The Court did rule that passing-off action is actually maintainable, but importantly qualified to state that it is one which is “not limited or restricted to trademark use alone, but the overall get up or “trade dress”. (Carlsberg Breweries, pg 42). Here the Court thus differentiated between use of a design as a trademark and use as a trade dress, finding latter to be acceptable.
The bench was prudent to explain, asserting that a claim of this nature holds 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” (Carlsberg Breweries, pg 42). The language here is careful and evocative. In calling upon words such as “larger trade dress,” “presentation,” and “packaging,” the Carlsberg Court was not equating the design itself with the subject of a passing-off action. Instead, it was trying to differentiate and call for ‘something more’ for trade dress claim which has been later rejected by impugned Crocs judgment.
Why This Distinction Matters – The Nature of Trade Dress
The precise differentiation that is made in Carlsberg is not an academic nicety but essential to the appreciation of the broad scope of trade dress. In contrast with a design right, which will protect an individual ornamental detail, trade dress will cover the “total image” and “overall appearance” of a service or product (Gifford, p. 12). It is an integrated idea, the “set of any combination in which a product or service is shown to the buyer,” ranging from the package and form to the graphics and advertising methods (Sandberg, p. 2). It is this integrated commercial appearance that creates goodwill and is a badge of origin for the consumer.
A classic case is that of the Delhi High Court in Colgate Palmolive Company v Anchor Health And Beauty Care Pvt. Ltd. The court was presented with a case of passing off based on the combination of a cylindrical tooth powder tube and its distinctive 1/3rd red and 2/3rd white colouration.
The court ruled that in the case of an unsuspecting or illiterate consumer, the “overall impression” given by the “colour combination, getup or lay out appearing on the container” is what amounts to passing off (Colgate v. Anchor, p. 17, para 52). Despite the fact that the names “Colgate” and “Anchor” were entirely different, the Court ruled that the defendant’s use of the plaintiff’s distinctive get-up was enough to lead to confusion. It had also astutely characterized trade dress as the “soul for identification of the goods as to its source and origin” and had observed that this soul exists in the amalgamation of “colour combination, get up, lay out and size of container” (Colgate v. Anchor, p. 17, para 54).
Applying this to one of our examples, the design right in a Crocs clog guards the registrable, static shape of the shoe. Its trade dress, though, is the much broader get-up: the novel combination of that shape with its notoriously bright colour scheme, the characteristic round holes (which allows attachment of Jibbitz charms (which in itself is a whole sub culture), enabling personalisation), the rocker strap. This is precisely the “larger trade dress get-up” envisaged by the Carlsberg court.
The error in the Crocs judgment is its failure to appreciate this distinction. By allowing a passing-off claim to rest solely on the clog’s shape, the Court shrinks the rich, multifaceted concept of trade dress into the narrow, isolated form of a design. It fundamentally misunderstands that the consumer’s goodwill is tied not just to the product’s shape, but to the entire recognisable package that makes a Croc… a Croc.
The Perils of Conflation – Lessons from International Jurisprudence.
The Crocs court’s ruling to permit a design’s shape alone to justify a passing-off claim does more than blur definitions; it is directly in conflict with the underlying IP principle of functionality. The principle is put in place to keep a business from using trademark law as a means of achieving an eternal monopoly on a useful aspect, which should properly be protected only for a limited period under patent or design law. While this is most commonly true of utilitarian design elements, its less obvious counterpart, “aesthetic functionality,” is pertinent here. An aesthetic function is one which is an “important ingredient in the saleability of the goods” or “gives competitive advantages to its user,” wherein it becomes necessary for others to implement if they wish to be able to compete (Gifford, p. 14).
The distinctive and now-iconic shape of the Crocs clog is perhaps its greatest aesthetic and commercial strength. By enabling this very shape to form the basis of a trade dress claim, which, unlike design registration, can endure indefinitely, the court is taking the risk of bestowing an eternal right over a popular aesthetic design.
Nonbinding though it is, US jurisprudence offers a compelling comparative perspective on this very question. In Wal-Mart v. Samara Bros., the US Supreme Court decided that product design may never be inherently distinctive and always must be supported by proof of secondary meaning. It held that “product design almost invariably serves purposes other than source identification”. This is an important protection. The Carlsberg bench, in requiring a “larger trade dress get-up,” respectfully observed this line. The Crocs judgment, however, tears it down, and the door is left ajar for design rights to be extended unjustifiably and to upset the competitive equilibrium that intellectual property law seeks to preserve.