Fact of the case
The Petitioner, CROCS INC, is an enterprise which was founded in 2002 and produces and markets various types of footwear and related products that are sold under the Trade Mark of CROCS (Petitioners Mark). The Petitioner products are not only popular in India but are also in other countries and has a catalogue of more than 300 men, women and children’s styles.
The Mark CROCS was registered in 2002 in the United States of America and is registered in various jurisdictions around the world, such as India, in various classes (09, 14, 18, 25, 35). The Petitioner operates its business in India under its subsidiary, which is located in India, M/s Crocs India Pvt. Ltd., through which it markets its goods in India through its exclusive stores, retail outlets, and through its popular e-commerce websites such as ‘www.ajio.com’, ‘www.tatacliq.com’, and ‘www.myntra.com’. The Petitioner is also registered owner of domain names of ‘www.crocs.com’ and shopcrocs.in’ / ‘www.crocs.in’.
In the present petition, the Petitioner used Sections 47 and 57 of the Trade Marks Act, 1999, and requested the cancellation of the Impugned Mark/Label, registered under Class 25 among 3409214 under Reg. No. with Respondent No. 2 being the first beneficiary.
Although Respondent No. 2 was accorded several opportunities, he did not submit a Reply or Written Submissions and therefore, the same was closed by the order of 23.04.2025.
Issues
The question to be determined in this case is whether the Impugned Mark (CROOSE) having Registration No. 3409214 in Class 25 should be cancelled or expunged off the Register of Trade Marks, under the provisions of Sections 47 and 57 of the Act.
Whether the Impugned Mark is falsely substantially similar to the mark in which the Petitioner solely registered as CROCS and its registration is prohibited under Section 11(1)(b) of the Act.
Legal provisions involved
The Trade Marks Act, 1999:
- Section 47: The purpose of the Section 47 is to stop hoarding of trademarks. It provides that a registered trademark can be removed off the register in case of non-user, where the trademark was registered without any bona fide intention on the part of the applicant to use the trademark and that there has occurred no bona fide use of the said trademark as at the time being up until the date of application or otherwise up to at least a period 5 years of the said trademark having been registered.
- Section 57: The important section which allows a person aggrieved (the owner of the mark) to sustain a cancellation or expungement petition on a mark on the Register.
- Registration: Section 11(1)(b) of the Act: Cited as an objection to a registration, which excludes registration of a Trade Mark, which is deceptively similar to an existing mark on the register of identical or similar goods.
- Section 9 and 11 of the Act: Relied upon by the Petitioner as a reason why the Impugned Mark should be cancelled because it is not distinctive.
Arguments of both the parties
Petitioner Arguments
- Prior Use and Goodwill: The mark CROCS is naturally unique and has been marketed across the globe including India, over a number of years. The Petitioner is the former user and adoptee as it has sought registration in India in 2005 and 2006 and this has given the mark an enviable goodwill and reputation.
- Fraudulent Adoption: There were poor faith and malice of purpose on the part of Respondent No. 2 in adopting the Impugned Mark. Respondent No. 2 already registered marks such as JNG, AEROLITE and RBS and only registered the Impugned Mark in good faith of the Petitioner.
- Deceptive Similarity: The Impugned Mark is the same and/or deceptively similar to the Marks of the petitioner.
- Same Presentation: The style used in the letters and the position of the Impugned Mark in the products of Respondent No. 2 are the same as the Mark used Petitioner on the products of the Petitioner.
- Likelihood of Confusion: The Impugned Mark is applied in the case of identical/similar/allied/cognate goods. Its usage is most likely to lead to deception and confusion amongst consumers and wrongly lead them into thinking the products have a source or are related to the Petitioner.
- Absence of Distinctiveness: The Impugned Mark does not identify the goods of Respondent No. 2 and lacks distinctiveness, therefore, breaches Section 9 and 11 of the Act.
Respondent Arguments
- None of the Deceptive similarity: The Mark of the Plaintiff is not deceptively similar to the Mark of the Impugned.
- Structural Differences: The Impugned Mark structurally, phonetically and visually differs with the Mark of the Petitioner.
- Valid Registration: The registration of the Impugned Mark was made under due process and, therefore, it remains valid and it ought not to be cancelled.
Court Analysis
The Court recognized that the Petitioner, who is the owner of the Mark ‘CROCS’ is a person aggrieved and can proceed with the cancellation petition according to Section 57 of the Act.
After evaluating the Petitioner’s Mark (CROCS) and the Impugned Mark (CROOSE), the Court came up with the following specific findings:
- Placement The Impugned Mark is placed on the products of Respondent No. 2 in the same manner that the Petitioner Mark appears on its own products.
- Visual Appearance: The general visual impression of the Impugned Mark is comparable to the Plaintiff Mark visual impression.
- Goods: The marks are being used on the same goods under the same Class.
On the basis of such findings, the Court came to a conclusion that the Impugned Mark, CROOSE, is deceptively similar to the Petitioner Mark, CROCS. The Hyphenated Mark is likely to create confusion among the consumers and members of the trade as well.
As a result, the Court ruled that the Impugned Mark falls under the Section 11(1)(b) of the Act which has barred registration of a deceptively similar mark in identically or similar goods. The Court held that the Impugned Mark should be cancelled/ removed so as to uphold purity of the Register of Trade Marks.
Judgement
The high court of Delhi through Justice Tejas Karia granted the Petition and the Court ordered that the Trade Marks Registry, Respondent No. 1, to take out of the Register of Trade Marks the Impugned Mark bearing Registration No. 3409214 in Class 25 under the name of Respondent No. 2.
Conclusion
Register of Trade Marks was ordered to make amends accordingly. In addition, the webpage of the Registrar of Trade Marks had to be revised according to the removal of the Impugned Mark within four weeks. The Petition and the pending application (IA No. 3113/2023) were rejected.
“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal falls into the category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.”
WRITTEN BY Manisha Kunwar
