Full Text
JUDGMENT
CROCS INC .....Petitioner
Advocates who appeared in this case For the Petitioner : Mr. Ajay Amitabh Suman, Mr. Shravan Kumar Bansal, Mr. Rishi Bansal, Mr. Deepak Srivastava, Ms. Shruti Manchanda
& Ms. D. Mehra, Advocates.
For the Respondents : Mr. Ashish K. Dixit, Mr. Shivam Tiwari &
Mr. Umar Hashmi, Advocates for R-1.
Mr. Harshit Jain & Mr. Rahul Kumar, Advocates for R-2.
1. The present Petition has been filed by the Petitioner under Sections 47 and 57 of the Trade Marks Act, 1999 (‘Act’) seeking cancellation of the Registration of the Trade Mark ‘ ’ (‘Impugned Mark’) in Class 25, bearing Registration No. 3409214, which is granted in favour of Respondent No. 2.
FACTUAL BACKGROUND:
2. The Petitioner is a company engaged in the business of manufacturing and selling a wide variety of footwear and allied and cognate goods, in addition to offering services in respect of the same. The Petitioner company was founded in the year 2002 and its founders coined the Trade Mark ‘CROCS’ (‘Petitioner’s Mark’) under which the Petitioner’s products are sold. The Petitioner has a wide spread range of more than 300 styles for men, women and children which are popular both in India and abroad.
3. The Petitioner is carrying its business in India through its Indian subsidiary, namely, M/s Crocs India Pvt. Ltd., having its registered office in Gurgaon, Haryana. The Petitioner conducts its activities in the market through several of its exclusive stores, retail outlets as well as online.
4. The Petitioner’s Mark ‘CROCS’ was originally adopted in the year 2002 in the United States of America and with the passage of time, the said Mark has been used and registered in multiple jurisdictions of the world. The Petitioner’s ‘CROCS’ Marks are registered in India under the Act, the details of which are set out below:
No. Class Current Status 1 1401264 09, 18, 25, 35, 14 Registered 2 1459970 10 Registered 3 CROCS 1401263 09, 14, 18, 25, 35 Registered
5. The Petitioner is also the registered owner of the domain name ‘www.crocs.com’, which is accessible in India where the Petitioner’s goods are sold. The Petitioner also has an exclusive domain name ‘www.shopcrocs.in’ / ‘www.crocs.in’ for the Indian consumers. The Petitioner has been using the said domain name in the course of the trade and has built significant goodwill and reputation thereunder.
6. The Petitioner has also been promoting its goods through popular ecommerce websites such as ‘www.ajio.com’, ‘www.tatacliq.com’, ‘www.myntra.com’, among many others. All the said websites can be accessed by the users in India, who can peruse the vast catalogue of the Petitioner’s products therein.
7. The Petitioner is aggrieved by the registration of the Impugned Mark / Label ‘ ’ bearing Registration No. 3409214 in Class 25 in favour of Respondent No. 2. Hence, the present Petition has been filed by the Petitioner for cancellation of the Impugned Mark / Label.
8. Since the inception of the present case, Respondent No. 2, despite being granted multiple opportunities to file its Reply and Written Submissions, has failed to file the same. Consequently, vide order dated 23.04.2025, the right of Respondent No. 2 to file any Reply and Written Submissions stood closed.
SUBMISSIONS ON BEHALF OF THE PETITIONER:
9. The learned Counsel for the Petitioner submitted that the Petitioner’s goods under the Trade Mark ‘CROCS’ are sold worldwide including India since the last several years, and that the said Trade Mark is inherently distinctive and is associated with the Petitioner.
10. The learned Counsel for the Petitioner submitted that the Petitioner is the prior user and adopter of the said ‘CROCS’ Marks. It was submitted that the Petitioner had applied for the registration of its ‘CROCS’ Marks in India in the years 2005 and 2006. Therefore, by virtue of the long and extensive use of the said Marks, the public at large associates them with the Petitioner and they have acquired enviable goodwill and reputation.
11. The learned Counsel for the Petitioner submitted that the adoption of the Impugned Mark by Respondent No. 2 is dishonest and in bad faith, and that the Impugned Mark is identical and / or deceptively similar to the Petitioner’s Marks. It was further submitted that Respondent No. 2 earlier sold its products under the Marks ‘JNG’, ‘AEROLITE’ and ‘RBS’, however, it later adopted the Impugned Mark only with a view to trade upon the Petitioner’s goodwill and reputation.
12. The learned Counsel for the Petitioner submitted that the lettering style used in the Impugned Mark is identical to that of the Petitioner’s Mark. It was further submitted that even the placement of the Impugned Mark on Respondent No. 2’s products is identical to that of the Petitioner’s Mark on the Petitioner’s products.
13. The learned Counsel for the Petitioner submitted that the Impugned Mark is used for goods that are of the same / similar / allied / cognate nature to that of the Petitioner’s goods. It was further submitted that the Impugned Mark is likely to cause deception and confusion amongst the consumers and members of the trade. It was submitted that an unwary class of consumers are bound to be misled to believe that there might be some association between the Petitioner and Respondent No. 2 and that Respondent No. 2’s products bearing the Impugned Mark originate from the Petitioner. Therefore, the Impugned Mark is liable to be cancelled under Section 11(1)(b) read with Section 57 of the Act.
14. The learned Counsel for the Petitioner submitted that the Impugned Mark is not distinctive in nature and fails to identify the goods of Respondent No. 2, and therefore, its registration is barred by Section 9 and 11 of the Act.
15. In view of the foregoing submissions, it is prayed that the present Petition be allowed and the Impugned Mark be expunged from the Register of Trade Marks.
SUBMISSIONS ON BEHALF OF THE RESPONDENTS:
16. Even though the right of Respondent No. 2 to file the Reply to the present Petition and the Written Submissions was closed vide order dated 23.04.2025, the learned Counsel for Respondent No. 2 was permitted to make oral submissions.
17. The learned Counsel for Respondent No.2 submitted that the Impugned Mark is not deceptively similar to the Plaintiff’s Mark as it is structurally, phonetically and visually different from the same. It was further submitted that due process was followed for the registration of the Impugned Mark, following which it was registered. Therefore, the registration of the Impugned Mark is not liable to be cancelled and present Petition be dismissed.
ANALYSIS AND FINDINGS:
18. Heard the learned Counsel for the Parties and perused the material placed on record.
19. The Petitioner is the registered owner of the Trade Mark ‘CROCS’ in India. The Petitioner’s products bearing the Petitioner’s Mark are sold all across India through various retail stores and online on multiple e-commerce platforms, including the Petitioner’s own website.
20. The Petitioner being the owner of the Mark ‘CROCS’, is clearly a ‘person aggrieved’ and can maintain a cancellation petition under Section 57 of the Act. It is the Petitioner’s case that the Impugned Mark is deceptively similar to the Petitioner’s Mark, such that that it is likely to cause deception and confusion amongst the members of the public and trade.
21. The comparison of the Petitioner’s Mark and Impugned Mark of Respondent No. 2 is as under: Petitioner’s products under the Petitioner’s Mark Respondent No.2’s products under the Impugned Mark
22. Perusal of the above makes it apparent that the placement of the Impugned Mark is identical to that of the Plaintiff’s Mark. Additionally, the overall visual appearance of the Impugned Mark is similar to that of the Plaintiff’s Mark. It is further noted that both the Marks are phonetically similar and are being used for identical goods under the same Class.
23. Therefore, this Court is of the view that the Impugned Mark ‘ ’ is deceptively similar to the Petitioner’s Mark ‘CROCS’ and is likely to cause confusion amongst consumers and the members of the trade. Therefore, the Impugned Mark is hit by Section 11(1)(b) of the Act, which prohibits registration of a Trade Mark that is deceptively similar to a Trade Mark, which is already on the register in respect of identical or similar goods.
24. Considering the above discussion and the settled law, in order to maintain the purity of the Register of Trade Marks, the Impugned Mark ‘ ’ deserves to be cancelled/removed from the Register of Trade Marks.
25. Accordingly, the present Petition is allowed and Respondent No. 1, the Trade Marks Registry is directed to remove the Impugned Mark ‘ ’ bearing Registration No. 3409214 in Class 25 registered in the name of Respondent No.2 from the Register of Trade Marks.
26. The Register of Trade Marks be rectified accordingly and the website of the Registrar of Trade Marks be updated within a period of four weeks. For compliance, the Registry is directed to supply a copy of the present Order to the Trade Marks Registry through email at llc-ipo@gov.in.
27. The present Petition and the pending Application stands disposed of.
TEJAS KARIA, J SEPTEMBER 26, 2025 st