Preserving Trademark Integrity: Delhi High Court’s Landmark Ruling in Crocs Inc. vs. Registrar of Trademarks

Preserving Trademark Integrity: Delhi High Court's Landmark Ruling in Crocs Inc. vs. Registrar of TrademarksOn April 8th, 2024, the Delhi High Court delivered a significant ruling in the case of Crocs Inc. vs. the Registrar of Trademarks New Delhi & Anr. C.O. (COMM.IPD-TM) 779/2022 & I.A. 20390/2022, granting rectification in favour of Crocs Inc. Plaintiff diligently filed a rectification/cancellation petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking the removal of the trademark ‘CROCKSCLUB’ in class 25 registered in favour of the respondent. The Court’s decision to grant rectification in favour of Crocs Inc. not only validates the legitimacy of their claim but also sets a powerful precedent for safeguarding trademarks against unauthorised use and dilution.

Section 47 of the Trademarks Act, 1999 outlines grounds for cancellation of a registered trademark, including lack of sufficient cause for registration, wrongful presence on the register, or non-use for five consecutive years. Section 57 provides for rectification of the register, empowering the Registrar or the court to make necessary amendments or corrections to entries deemed erroneous, wrongfully made, or containing omissions, ensuring the accuracy and integrity of the register.

The petitioner’s case is fortified by the unequivocal evidence of trademark registration for ‘CROCS’ across various forms, including words, designs, and shapes, particularly within Class 25, which covers Clothing, Footwear, and Headgear. Furthermore, the respondent’s consistent failure to appear before the Court despite repeated attempts at service of notice, even through their trademark agent, underscores a lack of substantive opposition to the petitioner’s claims. By abstaining from any challenge or defence, the respondent effectively concedes to the validity of the petitioner’s arguments and the strength of their case.

The absence of any counterargument or rebuttal from the respondent leaves the Court with no choice but to evaluate the petitioner’s case solely on the basis of the substantial evidence presented. This evidence, coupled with the unchallenged registration of the ‘CROCS’ mark within relevant classes, provides a clear and compelling basis for the Court to uphold the petitioner’s rights and claims, emphasising the undeniable merit and validity of their assertions regarding the protection and enforcement of their trademark rights.

The Plaintiff’s counsel also presented evidence, including invoices dating back to 2007, showcasing substantial sales of the petitioner’s products, particularly footwear, across multiple locations in India inter alia Goa, Delhi and Mumbai, articles and online presence showing reputation and goodwill or registration of their domain name since 1996 served as a testament to the longstanding presence and recognition of the petitioner’s brand. The petitioner showcased the use of the trademark ‘CROCS CLUB’ in conjunction with their product, Crocs Footwear, with accompanying visual evidence. Additionally, the use of ‘CROCS CLUB’ across prominent social media platforms such as Facebook and Instagram served as a testament to the longstanding presence and recognition of the petitioner’s brand.

The Court acknowledged previous cases where rectification was granted in favour of the petitioner when the respondent didn’t appear. The petitioner based their arguments on Sections 11(1), 47, and 57 of the Act, focusing on the lack of use of the impugned trademark by the respondent and the similarity between the marks. Given the well-established reputation of the petitioner’s ‘CROCS’ products and the resemblance between the marks, the Court, in light of the evidence provided, ordered the removal of the ‘CROCKSCLUB’ trademark from the Register of Trade Marks. The Registrar of Trade Marks was directed to execute the removal within six weeks from the date of the order. This court decision represents a significant triumph for the petitioner, affirming their legal entitlements and emphasising the critical importance of safeguarding their brand from potential confusion or association with similar trademarks.

The High Court of Delhi’s decision in the case of Crocs Inc. vs. Registrar of Trademarks exemplifies a balanced approach to rectifying trademark registrations to safeguard against dilution and misrepresentation in the marketplace, reflecting a commitment to upholding the principles of fairness, equity, and protection of intellectual property rights in commercial disputes. This ruling underlines the significance of trademark laws and judicial mechanisms in preserving the integrity of the trademark system. By adhering to statutory provisions Sections 47 and 57 of the Trade Marks Act and upholding the doctrine of use, courts play a pivotal role in adjudicating trademark disputes and ensuring a level playing field for all stakeholders in the marketplace

Authors: Manisha Singh and Lisha Chauhan

First Published by: Mondaq here