Crocs Inc Usa vs M/S Bata India Ltd And Ors

$~1 (OS)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of Decision: 2 July, 2026
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Uploaded on: 8 July, 2026
+ CS(COMM) 625/2018
CROCS INC USA .....Plaintiff
Through: Ms. Swathi Sukumar, Sr. Adv. with
Mr. Gaurav Gogia, Ms. Shruti
Manchanda, Ms. Rishika A., Advs.
with Mr. Ricardo Facchin (Global IP
Head, Crocs),


versus

M/S BATA INDIA LTD AND ORS. .....Defendants
Through: Mr. Neeraj Grover & Mr. Tushar Kr.
Ranaut, Adv. (M :9810376869)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
I.A.25948/2023 (seeking order for costs) in CS(COMM) 625/2018
2. This is an application filed by the Defendant under Sections 35 and 35A
read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter,
‘CPC’ ) seeking orders of costs against the Plaintiff towards contesting the suit
proceedings.
3. The present suit was filed seeking permanent injunction restraining
infringement of Design Registration no. 197685. The said design as per the
Plaintiff was possessing novel shape, feature and configuration. It was the
allegation of the Plaintiff that the Defendant had used a fraudulent and
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obvious imitation of the Plaintiff’s design. Hence the Plaintiff had sought
injunction and damages. The comparative chart of the competing designs is
set out below:

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4. Along with the plaint, an application for interim injunction and an
application for appointment for Local Commissioners was also filed by the
Plaintiff.
5. The suit was initially filed before the Court of the ld. District Judge,
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Central District, Tis Hazari Courts, Delhi. Vide order dated 28 August, 2014
an ex-parte ad-interim order was granted by the ld. District Judge and Local
Commissioners were also appointed to seize the infringing material from the
premises of the Defendants. The Local Commissioners had also seized
substantial number of infringing goods. The Local Commissioners who had
been appointed submitted their reports.
6. Written statement was then filed by the Defendant and defense of
invalidity of the design was also raised. The goods were, thereafter, de-sealed
and the matter was listed before the High Court. An application under Order
XXXIX Rule 4 of the CPC was also filed by the Defendant.
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7. The said application was considered and vide order dated 8 February,
2018, the interim injunction applications were decided by a ld. Single Judge
of this Court in this suit and in various other connected suits. The ld. Single
Judge of this Court came to the conclusion that the design was not novel and
the footwear over which the Plaintiff was claiming a design previously existed
in public domain. The interim injunction applications were dismissed in seven
suits and the applications under under Order XXXIX Rule 4 CPC was
allowed. the Court also awarded actual costs incurred by the Defendants under
Section 35 of the CPC as amended and applicable to commercial disputes,.
Apart from actual legal costs a sum of Rs. 2 lakhs were also awarded in favour
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of the Defendants. The appeals against the said order were also dismissed on
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24 January, 2019. This judgement was challenged before the Supreme Court
which vide order 23rd September, 2019 in Petition for Special Leave to
Appeal (C) No. 22395-22403/2019 titled ‘ M/s Crocs Inc. USA v. M/s Liberty
Shoes Ltd. & Anr.’ disposed of the SLP in the following terms:
“While rejecting the request of the petitioner for grant of
injunction, learned Single Judge of the Delhi High Court
imposed costs which were directed to be paid within a
period of four weeks. The said order relating the payment
of costs was affirmed by the learned Division Bench in
the impugned judgment.
Mr. Amit Sibal, learned senior counsel submits that the
costs should be made subject to result of the final
decision.
Mr. Neeraj Kishan Kaul, learned senior counsel submits
that the costs are not paid till now though the time fixed
by the learned Single Judge lapsed long time back.
The direction of payment of costs would be subject to the
result of the suit subject to the petitioner paying the costs
to the respondent within a period of four weeks from
today.
The petitions stand disposed of accordingly. Pending
application, if any stand disposed of”

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The order of the Supreme Court dated 23 September, 2019 had directed that
the award of costs at the interim stage would be subject to the final
adjudication. Execution petition is stated to be pending for recovery of the
costs.
8. The Plaintiff had, along with the design infringement suits also filed
suits seeking protection of the shape, trademark and for passing off. In respect
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thereof, the Division Bench vide order dated 24 January, 2019 observed as
under:
“53. For the above reasons, this court holds that the
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appeals have to fail. However, the single judge shall
ensure that all suits hitherto listed together, shall
now be listed together for further proceedings. The
defendants' contentions in respect of the ad-interim
injunctions - and whether they are to be confirmed
during pendency of shape trademark/passing off
suits of the plaintiff as well as plaintiff’s arguments
for interim injunction in the passing off claim (in the
composite suits) shall be taken up together and
decided, by the Single Judge. The rights of parties
are kept open with regard to respective contentions
in that regard. The appeals are accordingly
dismissed, without order on costs.”

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9. Vide order dated 12 July, 2023, the Court noted that the term of the
design has itself come to an end. The Court was also informed that the Deputy
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Controller of Patents & Designs had vide order dated 9 May, 2019 cancelled
the design. Considering the fact that the design had been cancelled, the Court
had observed that the suit could no longer continue. The said order is relevant
and is extracted below:

“1. This hearing has been done through hybrid
mode.
2. The present suit has been filed by the Plaintiff -
Crocs Inc USA seeking permanent injunction
restraining the infringement of the Plaintiff’s
registered design under the Designs Act, 2000 and
passing off, delivery up. etc. The Plaintiff has filed
the present suit of infringement in respect of
registered design no. 197685 against the Defendant
No.1 - M/s Bata India Ltd.
3. Mr. Grover, ld. Counsel for the Defendants
submits that as of 2019 the term of the design has
come to an end . In addition, ld. Counsel has placed
on record the order dated 9th May, 2019 passed by
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the Dy. Controller of Patents & Designs by which
the Plaintiff’s registered design no. 197685 which
is subject matter of this suit has been cancelled.
The operative portion of the Controller’s order
reads as under:
“ 14. A design, which is published prior to the
date of registration or where applicable the
priority date of the application for
registration, cannot be considered as new.
The features stated to be added by the
respondent in the impugned design are not
sufficient to alter the character or the identity
of the design previously published and known
to art. As per Section 2(g) of the Designs Act
2000, "Original", in relation to a design,
means originating from the author of such
design and includes the cases which though
old in themselves yet are new in their
application'. 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.

15. In view of preceding analysis, the present
petition field by M/s Brainbees Solutions Pvt.
Ltd. for cancellation of registered design no.
197685 dated 28th May, 2004 in respect of
'Footwear under Class 02-04 is allowed and
it is ordered to cancel the said design in the
Register of Designs. ”

4. The existence of this order is not disputed by the Mr.
Bansal, ld. Counsel for the Plaintiff. It is submitted by ld.
Counsel that the Plaintiff has filed an appeal challenging
the said order of the Dy. Controller of Patents &
Designs. He submits that there is another proceeding that
has been initiated by the Plaintiff against the Defendants
in respect of the shape mark relating to the registered
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design, in which the suit was dismissed but an appeal is
pending before the Division Bench of this Court.
5. In view of the fact that the design has been cancelled,
that too on the ground of lack of novelty and prior
publication, the suit can no longer continue. If,
however, any order is passed in the appeal in favour of
the Plaintiff restoring the registered design, then the
remedies of the Plaintiff are left open, to be availed of,
in accordance with law.
6. The Local Commissioner who was appointed for
recording of evidence is discharged.
7. The present suit along with all pending applications is
disposed of.”


10. Thereafter, the present application was filed seeking costs under
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Section 35 and 35A of the CPC. This application was heard on 7 February,
2026 by this Court. The Court had observed that the design having been
cancelled the substratum of the design had become non-existent. The
question, therefore, came as to the award of costs in respect of which ld.
Counsel for the Plaintiff has opposed the matter. On the basis of the
submissions, it was recorded as under:
“8. The Court has considered the matter. A
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perusal of the order dated 12 July, 2023 would
reveal that the said order, though, disposing of the
suit had left a window for the Plaintiff to avail of the
remedies in accordance with law in respect of the
design cancellation before the Calcutta High Court.
Though it was a final disposal of the suit, it had not
become final until the appeal before the High Court
of Calcutta was withdrawn. In case the High Court
had reversed the order of the Controller of Patents
and had re-instated the Design of the Plaintiff, the
suit restoration of the suit could have been sought by
the Plaintiff.
9. Be that as it may, in commercial matters, the
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decision of the Supreme Court in Uflex Ltd. v.
Government of Tamil Nadu & Ors., 2021 INSC 492
is clear to the effect that the costs ought to be
awarded and this is the principle based on which
Section 35 and Section 35A of the Code of Civil
Procedure, 1908 have also been enacted.
10. In fact, the Delhi High Court Original Side
Rules, 2018 also capture the issue relating to award
of costs i.e., that in addition to costs under Rule 1 in
Chapter 23 actual costs under Rule 2 can also be
awarded.
11. In the opinion of this Court, mere non-
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mention of the costs in the order dated 12 July,
2023 cannot prima facie amount to waiver.
12. Be that as it may, let the Registry put a note
as to the manner in which costs are calculated in
such matters.”


11. Today, Mr. Riccardo Facchin, who is the global IP head for the Plaintiff
has joined the proceedings from Amsterdam and he submits that for
administrative and procedural convenience, whichever individual is
suggested by the Plaintiff’s law firm is appointed as a Constituted Attorney to
sign pleadings and this is a practice followed by the Plaintiff company in
several jurisdictions.
12. Insofar as the issue of costs is concerned, Ms. Swathi Sukumar, ld. Sr.
Counsel appearing for the Plaintiff submits that the Court may determine the
costs without prejudice to the pending suit where injunction is being sought
on the ground of passing off.
13. Mr. Grover, ld. Counsel for the Defendant submits that the total bill of
costs is to the tune of Rs. 24,63,400/- which includes the costs which was
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earlier determined to be paid vide order dated 8 January, 2018 passed by the
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ld. Single Judge of this Court who had dismissed the application under Order
XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908. The said costs
were supported with documents filed along with an affidavit.
14. The Registry has also put up a note as to the manner in which the bill
of costs is calculated. The said note reads as under:
“Vide order dated 07.02.2026, the Hon'ble Court
directed the Registry as under:
"Be that as it may, let the Registry put a note as to the
manner in which costs are calculated in such matters."
In this connection, it is submitted that the
statement/Bill of cost is filed by the concerned parties in
accordance with Chapter XXIII Rule 5 of the Delhi
High Court Original Side Rules 2018 , which provides
as under: 5. Contents of the Bill of costs.—The Bill of
costs shall, inter-alia, set out:— (a) court fee
(b)process fee spent;
(c) expenses of witnesses, including the actual
reasonable expenses incurred on travel, boarding and
lodging, if any, and other incidental expenses;
(d)Advocate's fee including the fee of a Senior Advocate,
if any;
(e) expenses of typing, photocopying and expenses
incurred for sending summons by Registered post, speed
post, courier, fax, electronic mail service and by such
other modes as may have been directed by Court.
(f) such other amounts as may be allowable under these
Rules or as may be ordered by the Court as costs taking
into account:—
(i) judicial time consumed in litigation;
(ii) delay in service of summons or efforts made in
serving summons on the defendant, as the case may be;
(iii) delay caused by any of the parties by raising
frivolous issues or unnecessary objections during the
proceedings or during recording of evidence;
(iv) failure of a party to effect discovery of documents or
its refusal to answer interrogatories;
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(v) incorrect denial of facts/ documents, thus,
protracting trial;
(vi) monetary and other stakes involved in the
proceedings;
(vii) costs incurred on execution of commission; and
(viii) any other cost which Court may deem fit and
proper.
It is further submitted that upon filing of the Bill
of cost, the matter is
listed before the Taxing Officer for Computation of
costs.
Submitted for kind perusal.”

15. A perusal of the above chronology of events would show that the suit
was initially instituted in the year 2014 and an ex-parte ad-interim injunction
was granted by which the business activities of the Defendants would have
been obviously adversely affected. Local Commissioners had also been
appointed to effect seizure of goods. The said interim injunction was,
thereafter, vacated on 8th February, 2018 and costs were awarded. This order
of the ld. Single Judge was upheld by the Division Bench and, thereafter, also
by the Supreme Court.
16. The matter has been litigated by the Defendants before the District
Court, before this Court, before the Division Bench of this Court as also
before the Supreme Court and, thereafter the trial had also commenced in this
matter. In the meantime, the design itself has been cancelled.
17. On merits, repeatedly the Courts have held that the design is not a novel
design. Insofar as the costs which was awarded at the interim stage is
concerned, the Defendant has filed an execution petition which is also
pending.
18. In Uflex Ltd. v. Government of Tamil Nadu & Ors., 2021 INSC 492 ,
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the Supreme Court clearly observed that in such commercial cases actual costs
ought to be awarded. The relevant portion of the judgment is set out below:
“51. The costs following cause is a principle which is
followed in most countries. There seems to be often a
hesitancy in our judicial system to impose costs,
presuming as if it is a reflection on the counsel. This is
not the correct approach. In a tussle for enforcement of
rights against a State different principle apply but in
commercial matters costs must follow the cause.
52. The aspect of awarding the costs has received
consideration of the Law Commission of India in its
Report No.240, specifically in relation to civil litigation.
The trigger for this were the observations of the
Supreme Court in Ashok Kumar Mittal v. Ram Kumar
Gupta and Vinod Seth v. Devinder Bajaj. The judicial
pronouncements took note of the levying meager costs
in civil matters which did not act as a deterrent to
vexatious or luxury litigation borne out of ego or greed
or resorted to as a ‘buying time’ tactic. These two
judicial pronouncements were followed in Sanjeev
Kumar Jain v. Raghubir Saran Charitable Trust . In
the said proceeding the Law Commission also presented
its views. It is in that context that this Court observed
that appropriate changes in the provisions relating to
costs contained in the report of the Law Commission of
India should be followed up by the Parliament and the
respective High Courts.
53. We may note that the common thread running
through all these three cases is the reiteration of
salutary principles: (i) costs should ordinarily follow
the event; (ii) realistic costs ought to be awarded
keeping in view the ever increasing litigation expenses;
and (iii) the cost should serve the purpose of curbing
frivolous and vexatious litigation.
54. We may note that this endeavour in India is not
unique to our country and in a way adopts the principle
prevalent in England of costs following the event. The
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position may be somewhat different in the United States
but then there are different principles applicable where
champerty is prevalent. No doubt in most of the
countries like India the discretion is with the Court.
There has to be a proportionality to the costs and if they
are unreasonable, the doubt would be resolved in favour
of the paying party. As per Halsbury’s Laws of England,
the discretion to award costs must be exercised
judicially and in accordance with reason and justice.
The following principles have been set out therein:
“In deciding what order (if any) to make
about costs, the court must have regard to all
the circumstances, including:
(i) The conduct of all the parties;
(ii) Whether a party has succeeded on part of
his case, even if he has not been wholly
successful; and
(iii) Any payment into court or admissible
offer to settle made by a party which is drawn
to the court’s attention.
The conduct of the parties includes:
a. Conduct before, as well as during, the
proceedings and in particular the extent to
which the parties followed any relevant pre-
action protocol;
b. Whether it was reasonable for a party to
raise, pursue or contest a particular
allegation or issue;
c. The manner in which a party has pursued
or defended his case or a particular
allegation or issue; and d. Whether a
claimant who has succeeded in his claim, in
whole or in part, exaggerated his claim.”
55. We may add that similar principles are followed in
Australia, Hong Kong and Canada largely based on the
Common Law principle. In fact in Canada, the
Manitoba Law Commission Report analysed the ‘Costs
Awards in Civil Litigation’ and referred to six broad
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goals as under:
a. indemnification – successful litigants ought to
at least be partially indemnified against their
legal costs;
b. deterrence – potential litigants should carefully
assess the merits of the claim and should refrain
from taking any unnecessary legal actions;
c. rules should be made decipherable and simple
to understand;
d. early settlement of disputes should be
encouraged;
e. the costs regime should facilitate access to
justice; and f. there should be flexibility in rules
to ensure that justice can be done.
56. We have set forth the aforesaid so that there is
appreciation of the principles that in carrying on
commercial litigation, parties must weigh the
commercial interests, which would include the
consequences of the matter not receiving favourable
consideration by the courts. Mindless appeals should
not be the rule. We are conscious that in the given facts
of the case the respondents have succeeded before the
Division Bench though they failed before the learned
single Judge. Suffice to say that all the parties before us
are financially strong and took a commercial decision
to carry this legal battle right up to this Court. They
must, thus, face the consequences and costs of success
or failure in the present proceedings.
57. The best reflection of what costs have been incurred
is what the parties have paid towards the counsel fee
and out of pocket expenses. The present proceedings do
arise from a writ proceeding under Article 226 of the
Constitution but it is really a commercial dispute. Thus,
the failing party cannot hide behind the veneer of the
present dispute being in the nature of a writ proceeding.
The tender jurisdiction was created for scrutiny of
commercial matters and, thus, where continuously
parties seek to challenge award of tenders, we are of the
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view that the succeeding party must get costs and the
party which loses must pay costs. This was really a
battle between two commercial entities on one side
seeking to get set aside an award of a tender to two other
entities. What else would be commercial interest!
58. It is with the aforesaid objective that we had asked
the parties to file their bill of costs vide order dated
17.08.2021. The objective was to bring forth this
principle into force by quantifying actual costs for the
succeeding party”

19. In view of the above, the Court had queried the Defendant as to what is
their actual costs in response to which a chart showing costs of Rs. 24,63,400/-
has been handed over. The said amount is not disputed by the Plaintiff.
20. Accordingly, following the principles in Uflex Ltd.(Supra) and bearing
in mind the Section 35 and 35A of the CPC, Commercial Courts Act, 2015 as
also Chapter 23 Rule 5 of the Delhi High Court (Original Side) Rules, 2018,
the Plaintiff is directed to pay to the Defendant a sum of Rs. 24,63,400/-
within a period of three months.
21. In view of the costs having been awarded and upon the said amount
being paid to the Defendant, Ex. P. 64/2022 titled ‘ M/s Bata India Ltd. v.
M/s Crocs Inc USA, shall also stands disposed of.
22. Application is disposed of.


PRATHIBA M. SINGH
JUDGE
JULY 2, 2026
dj/ck

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