Crocs Inc USA v. M/s Bata India Ltd and Ors.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section 35Section 35A

Designs Act, 2000

Section 2(g)

Provisions considered: Section 2(g) of the Designs Act, 2000; Sections 35 and 35A of the Code of Civil Procedure, 1908.

Brief facts

Crocs Inc. USA filed a suit against Bata India Ltd. alleging infringement of its registered footwear Design No. 197685 and sought an injunction and damages. An ex-parte interim injunction was initially granted and Local Commissioners were appointed, who seized allegedly infringing products from the Defendants' premises. In 2018 the interim injunction was vacated after the Court found that the Plaintiff's footwear design was not novel and that a similar footwear design was already in the public domain. In 2019 the Deputy Controller of Patents and Designs cancelled Crocs' registered design on the ground of lack of novelty and prior publication. The design infringement suit was disposed of in 2023. Bata thereafter sought reimbursement of the actual costs incurred in defending the litigation.

Issues before the Court

1. Whether Bata, having successfully defended the design infringement proceedings, was entitled to recover its actual litigation costs?
2. Whether costs could still be awarded when the earlier order disposing of the suit did not specifically mention costs?

Court's findings

The Court observed that commercial parties need to assess the strength of their case before pursuing prolonged litigation, as an unsuccessful claim results in payment of the successful party's actual litigation costs.

Decision

The Court allowed Bata's application for reimbursement and directed Crocs to pay Rs. 24,63,400 within three months.

Keywords

Actual Costs Cancellation of Design Design Infringement Industrial Design Litigation Costs Novelty Prior Publication