Delhi HC on Crocs v. Bata Shaping Cost Awards in IP Disputes

Executive Summary

On 2nd July 2026, the Delhi High Court awarded Bata India Ltd. actual litigation costs of Rs. 24,63,400 against Crocs Inc. USA, bringing the twelve-year design infringement suit to a close after the underlying design registration was cancelled by the Deputy Controller of Patents & Designs (while Crocs' composite suits on the shape trademark and passing off remain pending). The order is a useful case study for foreign rights-holders and their Indian counsel on three fronts:

(i)                      the consequences of pursuing a design suit where validity is later successfully challenged;

(ii)                    how Indian commercial courts now compute and award actual, realistic costs rather than nominal or symbolic amounts; and

(iii)                 the procedural mechanics of cost recovery — bills of cost, Taxing Officers, and execution — under the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.

Brief summary with timelines

28 Aug 2014: Ex-parte injunction granted- Crocs sues Bata for infringement of Design No. 197685 (clog footwear). Ad-interim injunction granted by District Judge; Local Commissioners appointed and seize alleged infringing stock.

8 Feb 2018: Interim injunction vacated- Single Judge (Delhi High Court) holds the design lacks novelty — prior published in public domain. Injunction vacated in this suit and connected suits; actual costs + Rs. 2 lakh awarded to defendants.

24 Jan 2019 : Division Bench dismisses appeal- Appeal against vacation of injunction fails; connected shape-mark/passing-off suits remitted to Single Judge for composite hearing.

9 May 2019 : Design cancelled by Controller- Deputy Controller of Patents & Designs cancels Design No. 197685 on a cancellation petition by M/s Brainbees Solutions Pvt. Ltd. — design held "not new or original" under S.2(g), Designs Act 2000.

23 Sep 2019: Supreme Court disposes SLP- Crocs directed to pay the interim costs within four weeks, with the direction made expressly subject to the final outcome of the suit. The costs went unpaid, compelling Bata to file an execution petition (Ex. P. 64/2022).

12 Jul 2023: Suit disposed — substratum gone- With the design cancelled and design's statutory term had itself expired in 2019, the Court holds the suit cannot continue; disposed of, with liberty to revive if Crocs' pending Calcutta HC appeal against cancellation succeeds.

2 Jul 2026: Real costs awarded to Bata - Applying Uflex Ltd. v. Govt. of Tamil Nadu (2021 INSC 492), the Court directs Crocs to pay Bata's actual, undisputed litigation costs in full — bringing the design suit to a close, with the pending execution petition to stand disposed of upon payment (while Crocs' composite suits on the shape trademark and passing off remain pending).

 

1. Background and Procedural History

Crocs Inc. USA instituted the suit in 2014 before the District Judge, Central District, Tis Hazari Courts, seeking a permanent injunction against Bata India Ltd. for alleged infringement of Design Registration No. 197685, covering its clog-style footwear. An ex-parte ad-interim injunction was granted on 28th August 2014, and Local Commissioners were appointed and executed seizures of allegedly infringing stock from Bata's premises.

Following transfer to the High Court and contest by Bata (including an application under Order XXXIX Rule 4 CPC challenging the ad-interim order), a learned Single Judge, by order dated 8th February 2018, vacated the interim injunction — not only in this suit but in several connected suits filed by Crocs against other footwear manufacturers. The Court held that the registered design lacked novelty, the footwear design having previously existed in the public domain. Actual costs under Section 35 CPC (as amended for commercial disputes) were awarded to the defendants, together with a further Rs. 2 lakhs.

Crocs' appeals were dismissed by the Division Bench on 24th January 2019, and a subsequent Special Leave Petition was disposed of by the Supreme Court on 23rd September 2019, with a direction that Crocs pay the interim costs within four weeks, such payment being made subject to the outcome of the final adjudication of the suit. The costs nonetheless remained unpaid, constraining Bata to file an execution petition (Ex. P. 64/2022) for their recovery.

2. Cancellation of the Design — The Turning Point

While the infringement suit proceeded to trial, a separate cancellation petition filed by M/s Brainbees Solutions Pvt. Ltd. succeeded before the Deputy Controller of Patents & Designs. By order dated 9th May 2019, the Controller cancelled Design No. 197685 in its entirety, holding that the design had been published prior to registration and that features claimed by the registrant were insufficient to alter the identity of an already-published design — squarely invoking the originality requirement under Section 2(g) of the Designs Act, 2000.

This cancellation proved decisive. By order dated 12th July 2023, the Court — noting also that the design's statutory term had itself expired in 2019 — held that with the design's substratum having disappeared, the infringement suit could no longer continue, and disposed of it — while preserving Crocs' right to seek restoration of the suit if its pending appeal against the cancellation order (before the Calcutta High Court) succeeded.

Practical implication: A design infringement action is only as strong as the underlying registration. Where validity is under simultaneous challenge — whether by cancellation petition, opposition, or counterclaim — rights-holders should factor the risk of the entire enforcement action collapsing, along with attendant costs exposure, into their litigation strategy from the outset.

3. The Costs Application: Legal Framework

With the suit disposed of, Bata moved I.A. 25948/2023 under Sections 35 and 35A CPC (as applicable to commercial disputes) seeking recovery of its litigation costs. The Court's analysis rested on several interlocking provisions:

• Section 35 CPC (as amended for commercial disputes) — mandates that costs ordinarily follow the event, departing from the traditional Indian reluctance to impose realistic costs.
• Commercial Courts Act, 2015 — which introduced the amended costs regime for commercial disputes, including IP suits valued and conducted as commercial matters.
• Chapter XXIII Rule 5, Delhi High Court (Original Side) Rules, 2018 — prescribes the contents of a Bill of Costs: court fees, process fees, witness expenses, advocate's fees (including senior counsel fees), and incidental costs such as photocopying and service expenses. Rule 5(f) further empowers the Court to factor in litigation conduct — judicial time consumed, delays in service, frivolous objections, non-disclosure, or exaggerated claims — when quantifying costs.

The Court had, in an earlier order dated 7th February 2026, already flagged the governing principle from Uflex Ltd. v. Government of Tamil Nadu & Ors., 2021 INSC 492, and directed the Registry to place on record the manner in which costs are computed in Delhi High Court commercial matters — underscoring an institutional effort toward standardising and quantifying real costs, rather than leaving the exercise to ad-hoc discretion.

A doctrinal caveat: Although the application (and the order) invoke Section 35A alongside Section 35, the operative engine in commercial disputes is the substituted Section 35 introduced by the Commercial Courts Act, 2015, read with Uflex and the Original Side Rules. The continued relevance of Section 35A — a provision directed at compensatory costs for false or vexatious claims, carrying a historic monetary cap in ordinary civil suits — within the commercial-dispute framework is doctrinally debatable, and practitioners are better advised to anchor costs applications primarily in the amended Section 35.

4. The Uflex Principles Reaffirmed

The Court's reasoning leaned heavily on the Supreme Court's articulation in Uflex, which the judgment extracts at length. The key propositions bear reproduction in substance (paraphrased):

• Costs following the event is the norm in most jurisdictions, and Indian courts' historical hesitancy to impose meaningful costs — often out of misplaced deference to counsel — is not the correct approach; in commercial matters, costs must follow the cause.
• The Law Commission of India (Report No. 240) had already flagged that meagre costs fail to deter vexatious or "ego and greed"-driven litigation, or litigation used as a delay tactic.
• Three salutary principles emerge: (i) costs should ordinarily follow the event; (ii) realistic costs should be awarded having regard to escalating litigation expense; and (iii) the costs regime should serve to curb frivolous and vexatious litigation.
• Comparable jurisdictions (England, Australia, Hong Kong, Canada) follow similar principles, with an English test factoring in the conduct of parties, proportionality, and reasonableness of contesting particular issues.
• Importantly, since all parties before the Court were commercially sophisticated entities that made a conscious commercial decision to litigate through multiple fora, they must bear the consequences — success or failure — in the form of realistic costs.

Applying this, the Delhi High Court held — first prima facie in its order dated 7th February 2026, and then in effect in the final order — that mere non-mention of costs in the 12th July 2023 disposal order could not amount to an implied waiver of Bata's entitlement to claim costs at the final stage. It bears noting that Uflex itself arose from a tender challenge in writ jurisdiction; its transposition to IP suits reflects a deliberate policy choice of the Delhi High Court's commercial and IP benches, and litigants before other High Courts should calibrate their expectations accordingly.

5. Quantification and Outcome

Mr. Riccardo Facchin, the Global IP Head of Crocs (the Plaintiff), appeared before the Court (via hybrid hearing from Amsterdam) to explain the Plaintiff's practice of appointing a constituted attorney to sign pleadings — a useful reminder that Indian courts accommodate remote, cross-border participation by corporate representatives, though it should be noted that the Court merely recorded this submission without expressly endorsing the practice.

On the costs quantum, Bata furnished a bill of costs supported by documents and an affidavit, totalling Rs. 24,63,400, inclusive of the costs earlier fixed at the interim stage (order dated 8th February 2018). Crucially, Crocs did not dispute this figure. Applying Uflex, Sections 35/35A CPC, the Commercial Courts Act, and Chapter XXIII Rule 5, the Court directed Crocs to pay the full amount within three months, and further directed that Bata's pending execution petition (Ex. P. 64/2022) would stand disposed of upon payment.

A note on quantum is warranted: Rs. 24,63,400 for twelve years of litigation across four fora is, by international standards, a modest sum — the real significance of the order lies in the principle applied, and in the fact that an undisputed, rule-compliant bill of costs was decreed in full. Notably, despite the Registry's note on the Taxing Officer mechanism, the Court quantified the costs itself, avoiding a separate contested taxation exercise.

6. Key Takeaways for Corporate Clients and Foreign Counsel

1. Real costs are here to stay in Indian commercial IP litigation. The days of token or nominal costs awards are receding, at least before specialised commercial benches such as the Delhi High Court's IP Division. Litigants — including foreign rights-holders — should budget for genuine costs exposure if they lose, and should likewise maintain contemporaneous, well-documented records of legal spend (invoices, disbursements, senior counsel fees) to maximise recovery if they win.
2. Heightened Cost Exposure in Ex Parte Seizure Orders: A plaintiff obtaining an ex parte injunction with seizure through Local Commissioners assumes heightened costs exposure if the registration later falls — the Court expressly weighed the 2014 seizures' business impact on Bata in its final reasoning.
3. Validity challenges can outrun infringement suits. A parallel cancellation or revocation proceeding can extinguish the very registration underpinning an infringement action, even where the infringement suit is otherwise well advanced (including through interim appeals up to the Supreme Court). Coordinating validity defence/enforcement strategy across fora (here, the Patent Office and the Calcutta High Court appeal, alongside the Delhi High Court suit) is essential.
4. Interim costs orders are payable yet provisional. The Supreme Court's 2019 order required Crocs to pay the interim costs within four weeks while making the direction subject to the final outcome of the suit — payment was mandated, not suspended. Crocs' non-payment nonetheless forced Bata into execution proceedings; losing parties should treat interim costs directions as immediately enforceable, and prevailing parties should not assume voluntary compliance.
5. Disposal without an express costs order is not a waiver. Practitioners should note the Court's finding that silence on costs in a disposal order does not, at least prima facie, bar a subsequent, separate application for costs under Sections 35/35A CPC — but equally, the safer practice is to expressly reserve or seek costs at every disposal stage to avoid satellite litigation.
6. Documentation wins costs applications. Defendants should file the bill of costs with contemporaneous invoices and affidavit support strictly per Chapter XXIII Rule 5. The unopposed nature of Bata's Rs. 24,63,400 bill — supported by invoices and affidavit evidence, and tested against the Chapter XXIII Rule 5 checklist — was central to the Court accepting the figure without a contested taxation exercise. Foreign clients should instruct Indian counsel to maintain granular, rule-compliant costs records throughout the litigation, not only at its conclusion.
7. Remote participation is accepted practice. The Court's acceptance of the Plaintiff's global IP head appearing via hybrid hearing, and its recording — without adverse comment — of the practice of appointing constituted attorneys for administrative convenience, indicates that Indian courts accommodate the realities of multinational corporate litigation management.

7. Concluding Note

For foreign IP owners active in India — particularly in design and trade dress enforcement, where validity challenges are common — this ruling is a timely reminder that Indian courts, especially the Delhi High Court's commercial and IP benches, are moving decisively toward a "costs follow the event" culture. Enforcement strategy should therefore weigh not only the merits of infringement, but the litigation-risk economics of a case whose registration may itself be vulnerable to cancellation.

This article is intended for general informational purposes for corporate legal teams, foreign counsel, and IP practitioners tracking Indian design and commercial litigation developments. It does not constitute legal advice. Specific queries on enforcement strategy, costs recovery, or design validity proceedings in India should be directed to qualified Indian counsel.