Delhi High Court Orders Crocs To Pay ₹24.63 Lakh Costs To Bata After Design Registration Was Cancelled

The Delhi High Court on Wednesday directed Crocs Inc. USA to pay ₹24.63 lakh in litigation costs to Bata India Ltd. after a design infringement suit filed by the footwear company was rendered unsustainable following the cancellation of its registered design for lack of novelty.

Justice Prathiba M. Singh noted that courts had repeatedly held that Crocs' registered design was not novel and, applying the principles governing costs in commercial litigation, directed the company to reimburse Bata's litigation expenses.

"On merits, repeatedly the Courts have held that the design is not a novel design.", the court observed.

Crocs instituted the suit in 2014 alleging that Bata had infringed its registered footwear design, which it claimed possessed a novel shape, feature and configuration.

It sought a permanent injunction, damages, and other consequential reliefs. The district court initially granted an ex parte ad interim injunction and appointed local commissioners to seize the allegedly infringing goods.

That interim protection was later vacated. In February 2018, the Delhi High Court dismissed Crocs' plea for interim injunction after concluding that the design lacked novelty and that the footwear had previously existed in the public domain.

The court also awarded actual costs to the defendants. A division bench upheld that decision in January 2019. When Crocs approached the Supreme Court, it directed that the earlier costs order would remain "subject to the result of the suit."

Separately, the Deputy Controller of Patents and Designs cancelled Crocs' design registration after holding that it was not "new or original".

The cancellation order observed, "Here the application of prior published designs is in reference to same article. Hence the respondent's design cannot be held as new or original."

Taking note of the cancellation, the Delhi High Court disposed of the infringement suit in July 2023, observing that it could no longer continue. At the same time, the court left it open to Crocs to pursue remedies in accordance with law if its registered design was restored in appeal.

Bata later moved the court seeking recovery of the costs it had incurred in defending the proceedings. Crocs opposed the application, arguing that the July 2023 order disposing of the suit had not awarded costs. The court was not persuaded.

"Mere non-mention of the costs in the order dated 12th July, 2023 cannot prima facie amount to waiver.", it had held.

While deciding the application, Justice Singh relied on the Supreme Court's decision in Uflex Ltd. v. Government of Tamil Nadu, which underscores that successful parties in commercial disputes should ordinarily recover their litigation costs.

Justice Singh noted that Bata had defended the matter before the district court, the Delhi High Court, its division bench, and the Supreme Court. The court also recorded that Crocs did not dispute Bata's statement that it had incurred litigation costs of ₹24.63 lakh.

Accordingly, the court directed Crocs to pay ₹24.63 lakh to Bata within three months. It also ordered that Bata's pending execution proceedings for recovery of costs would stand disposed of once the amount is paid.