Delhi High Court's Landmark Verdict in Crocs Inc. vs. Registrar of Trademarks

Delhi High Court's Landmark Verdict in Crocs Inc. vs. Registrar of Trademarks. On April 8, 2024, the Delhi High Court delivered an important judgment in the case of Crocs Inc. vs. Registrar of Trademarks & Anr. [C.O. (COMM.IPD-TM) 779/2022 & I.A. 20390/2022], granting relief to Crocs Inc. through rectification of the trademark register. The case revolved around the disputed trademark 'CROCKSCLUB' registered in Class 25 (covering clothing, footwear, and headgear), which the plaintiff sought to cancel, citing unauthorised use and brand dilution.
Legal Grounds for Rectification
Crocs Inc. filed the petition under Sections 47 and 57 of the Trade Marks Act, 1999:
• Section 47 allows cancellation of a registered trademark on grounds such as non-use for five consecutive years or wrongful registration.
• Section 57 empowers courts or the Registrar to rectify entries in the trademark register that are incorrect, wrongly made, or incomplete.
The petitioner, Crocs Inc., argued that the impugned trademark 'CROCKSCLUB' was confusingly similar to their well-established 'CROCS' trademark and was not being used legitimately in the marketplace.
Evidence and Uncontested Claims
Crocs presented substantial evidence to support their claims, including:
• Trademark registration for the 'CROCS' mark in word, design, and shape formats under Class 25.
• Invoices dated as far back as 2007, evidencing consistent sales across various Indian cities such as Delhi, Mumbai, and Goa.
• Articles and domain registrations demonstrating brand recognition since 1996.
• Visuals of 'CROCS CLUB' branding used alongside Crocs footwear.
• Active use of 'CROCS CLUB' across major social media platforms like Facebook and Instagram.
Notably, the respondent failed to appear before the court despite multiple notices, including attempts via their trademark agent. This lack of response resulted in the case proceeding uncontested, further reinforcing the strength of Crocs Inc.'s claims.
Judicial Reasoning and Final Order
The Delhi High Court evaluated the petition based solely on the petitioner’s submissions and supporting documents, owing to the absence of a response from the respondent. It recognized the reputational value of the 'CROCS' brand and the likelihood of public confusion caused by the visually and phonetically similar 'CROCKSCLUB' mark.
Relying on prior rulings where rectification was granted under similar circumstances, the Court considered the petition under Sections 11(1), 47, and 57 of the Act. It highlighted the lack of evidence regarding genuine use by the respondent and the high probability of consumer deception.
Consequently, the Court ordered:
• Removal of the 'CROCKSCLUB' trademark from the Register of Trade Marks.
• Execution of the rectification order by the Registrar within six weeks of the ruling.
Significance of the Judgment
This judgment mentions the importance of maintaining the sanctity of registered trademarks. It emphasizes that marks registered without genuine usage or in bad faith can be rightfully challenged and removed to prevent confusion in the marketplace.
The decision also reaffirms the legal principle that a trademark holder must vigilantly protect his rights to prevent misuse or dilution of brand identity. Moreover, the ruling shows the judiciary's role in upholding the integrity of the trademark register and ensuring fair competition.
Conclusion
The Delhi High Court’s ruling in Crocs Inc. vs. Registrar of Trademarks is a milestone in the enforcement of trademark rights in India. It reiterates the relevance of the use-based doctrine, and the power vested in courts to rectify the trademark register under statutory provisions. By granting rectification in favour of Crocs Inc., the Court has sent a clear message on the importance of defending intellectual property rights and deterring opportunistic trademark registrations that risk misleading consumers and tarnishing established brand reputations.

On April 8, 2024, the Delhi High Court delivered an important judgment in the case of Crocs Inc. vs. Registrar of Trademarks & Anr. [C.O. (COMM.IPD-TM) 779/2022 & I.A. 20390/2022], granting relief to Crocs Inc. through rectification of the trademark register. The case revolved around the disputed trademark 'CROCKSCLUB' registered in Class 25 (covering clothing, footwear, and headgear), which the plaintiff sought to cancel, citing unauthorised use and brand dilution.

Legal Grounds for Rectification

Crocs Inc. filed the petition under Sections 47 and 57 of the Trade Marks Act, 1999:

• Section 47 allows cancellation of a registered trademark on grounds such as non-use for five consecutive years or wrongful registration.

• Section 57 empowers courts or the Registrar to rectify entries in the trademark register that are incorrect, wrongly made, or incomplete.

The petitioner, Crocs Inc., argued that the impugned trademark 'CROCKSCLUB' was confusingly similar to their well-established 'CROCS' trademark and was not being used legitimately in the marketplace.

Evidence and Uncontested Claims

Crocs presented substantial evidence to support their claims, including:

• Trademark registration for the 'CROCS' mark in word, design, and shape formats under Class 25.

• Invoices dated as far back as 2007, evidencing consistent sales across various Indian cities such as Delhi, Mumbai, and Goa.

• Articles and domain registrations demonstrating brand recognition since 1996.

• Visuals of 'CROCS CLUB' branding used alongside Crocs footwear.

• Active use of 'CROCS CLUB' across major social media platforms like Facebook and Instagram.

Notably, the respondent failed to appear before the court despite multiple notices, including attempts via their trademark agent. This lack of response resulted in the case proceeding uncontested, further reinforcing the strength of Crocs Inc.'s claims.

Judicial Reasoning and Final Order

The Delhi High Court evaluated the petition based solely on the petitioner’s submissions and supporting documents, owing to the absence of a response from the respondent. It recognized the reputational value of the 'CROCS' brand and the likelihood of public confusion caused by the visually and phonetically similar 'CROCKSCLUB' mark.

Relying on prior rulings where rectification was granted under similar circumstances, the Court considered the petition under Sections 11(1), 47, and 57 of the Act. It highlighted the lack of evidence regarding genuine use by the respondent and the high probability of consumer deception.

Consequently, the Court ordered:

• Removal of the 'CROCKSCLUB' trademark from the Register of Trade Marks.

• Execution of the rectification order by the Registrar within six weeks of the ruling.

Significance of the Judgment

This judgment mentions the importance of maintaining the sanctity of registered trademarks. It emphasizes that marks registered without genuine usage or in bad faith can be rightfully challenged and removed to prevent confusion in the marketplace.

The decision also reaffirms the legal principle that a trademark holder must vigilantly protect his rights to prevent misuse or dilution of brand identity. Moreover, the ruling shows the judiciary's role in upholding the integrity of the trademark register and ensuring fair competition.

Conclusion

The Delhi High Court’s ruling in Crocs Inc. vs. Registrar of Trademarks is a milestone in the enforcement of trademark rights in India. It reiterates the relevance of the use-based doctrine, and the power vested in courts to rectify the trademark register under statutory provisions. By granting rectification in favour of Crocs Inc., the Court has sent a clear message on the importance of defending intellectual property rights and deterring opportunistic trademark registrations that risk misleading consumers and tarnishing established brand reputations.