Court’s Decision
The Delhi High Court allowed a petition filed by the global footwear giant Crocs Inc. under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of a deceptively similar mark registered in Class 25 in favour of another party. The Court held that the impugned mark was phonetically, visually, and structurally similar to CROCS and was likely to cause confusion among consumers and the trade. Emphasizing the principle that “the purity of the Register of Trade Marks must be maintained,” the Court directed the Trade Marks Registry to cancel the impugned registration and update its records within four week..
Facts
Crocs Inc., founded in 2002 in the United States, is a global leader in footwear, offering more than 300 styles for men, women, and children. The company operates in India through its subsidiary, Crocs India Pvt. Ltd., and sells through exclusive stores, retail outlets, its own websites (www.crocs.in / www.shopcrocs.in), and leading e-commerce platforms like Ajio, TataCliq, and Myntra.
Crocs owns multiple trademark registrations in India across Classes 9, 10, 14, 18, 25, and 35, including the word mark “CROCS.”
The dispute arose when another party obtained registration of a label mark in Class 25 (Reg. No. 3409214), which Crocs alleged was deceptively similar to its mark. Despite multiple opportunities, the respondent failed to file a reply or written submissions, leading to closure of their right to file by order dated 23.04.2025. Crocs then pressed for cancellation of the impugned mark.
Issues
- Whether Crocs, as the registered proprietor of the CROCS mark in India, was entitled to seek cancellation of the impugned registration under Section 57 of the Trade Marks Act, 1999.
- Whether the impugned mark was deceptively similar to the CROCS mark, such that it would likely cause confusion among consumers and the trade.
- Whether continued registration of the impugned mark would compromise the “purity of the register” and dilute the goodwill of CROCS.
Petitioner’s Arguments
Crocs contended that it was the prior adopter and user of the “CROCS” mark since 2002 and had secured registrations in India as early as 2005–2006. Owing to continuous and extensive use, the mark had acquired substantial goodwill and reputation worldwide, including in India.
It was argued that the impugned mark was adopted dishonestly and in bad faith to trade upon Crocs’ goodwill. Counsel submitted that the lettering style and placement of the impugned mark were identical to CROCS, creating an impression that the goods originated from Crocs.
Further, as both marks were used for identical goods—footwear under Class 25—the likelihood of consumer deception and confusion was extremely high. Counsel submitted that such imitation violated Sections 9 and 11 of the Trade Marks Act and warranted rectification of the register under Section 57.
Respondent’s Arguments
The respondent, though barred from filing a written reply, was allowed to make oral submissions. It was argued that the impugned mark was structurally, visually, and phonetically distinct from CROCS, and that the registration was granted after following due process. Hence, the respondent claimed, the mark was validly registered and not liable to be cancelled.
Analysis of the Law
The Court noted that Crocs was a registered proprietor of the mark “CROCS” in India and had established itself as a reputed brand with wide commercial presence. As such, Crocs was clearly a “person aggrieved” entitled to maintain a cancellation petition under Section 57.
Comparing the marks, the Court found that the placement, visual appearance, and phonetic similarity of the impugned mark to CROCS was unmistakable. Since both marks were used in respect of footwear under Class 25, the likelihood of consumer confusion was not merely hypothetical but inevitable.
The Court reiterated the settled principle under Section 11(1)(b) of the Act: no mark that is identical or deceptively similar to an already registered mark in respect of identical or similar goods can remain on the register.
Precedent Analysis
The Court’s reasoning drew support from established jurisprudence:
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 – Laid down the test for deceptive similarity and consumer confusion.
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) 1 SCR 737 – Distinguished between infringement and passing off, but stressed the importance of preventing deceptive similarity.
- Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. (2018) 9 SCC 183 – Clarified that consumer confusion is the key determinant in evaluating similarity of marks.
Applying these principles, the Court concluded that the impugned mark was deceptively similar to CROCS and its continued presence would erode the distinctiveness of a globally reputed brand.
Court’s Reasoning
The Court emphasized that the impugned mark was:
- Identical in placement and style to CROCS.
- Phonetically and visually similar.
- Used for identical goods under the same class.
Therefore, it was highly likely to mislead unwary consumers into assuming an association between the respondent and Crocs. Such dishonest adoption compromised the sanctity of the register and amounted to unfair competition.
The Court underscored that “purity of the Register of Trade Marks must be maintained” to ensure that established brands are not diluted by deceptive registrations.
Conclusion
The Court allowed the cancellation petition and directed the Trade Marks Registry to remove the impugned registration (No. 3409214 in Class 25) from the register within four weeks. The Registry was further directed to update its website and ensure compliance by circulating the order to the Trade Marks Office. Pending applications were disposed of.
Implications
This judgment strengthens brand protection in India by reaffirming that dishonest or deceptively similar registrations will not be tolerated. It underscores the judiciary’s commitment to maintaining the purity of the register and protecting consumer interest. For international brands like Crocs, it reinforces India as a jurisdiction where global goodwill and prior user rights are recognized and safeguarded.
FAQs
Q1: Can a global brand like Crocs cancel a deceptively similar Indian registration?
Yes. Under Section 57 of the Trade Marks Act, any “person aggrieved” such as a prior registered proprietor can seek cancellation of a deceptively similar mark.
Q2: What is the test for deceptive similarity under Indian law?
Courts examine phonetic, visual, and structural similarity, the nature of goods, and the likelihood of consumer confusion, as laid down in Cadila Healthcare v. Cadila Pharmaceuticals.
Q3: Why did the Court stress “purity of the register”?
Because allowing deceptively similar marks to remain registered dilutes established
