In a recent ruling that holds much importance in the trademark regime, the Bombay High Court granted an interim injunction against the use of the mark ‘DESI MOCHI’ by Nice Shoes LLP (the Defendants). This came after the renowned footwear company “Metro” took the Defendants to Court for infringement of registered trademark “MOCHI”. This judgement solidifies the legal regime against passing off and appropriation of “well known marks” on the basis of technical misinterpretation.
Case Background
The Plaintiff (Metro Brands Ltd.) has been in the business of trading, marketing, distribution, sale and import of footwear since 1955 and has been conducting business under the trademark ‘MOCHI’ since 1977, establishing an extensive presence of the brand in India as well as globally. The Plaintiff has also acquired registered trademarks for this use. In or around August 2022, it came across the website of the Defendants named www.desimochi.com. Apart from the usage of impugned website, the Defendants were also selling footwear with the impugned mark of ‘DESIMOCHI’. Upon a series of notice exchanges, it became clear that there was no scope of amicable resolution.
The Plaintiff in November 2023 pursued an action before WIPO Arbitration and Mediation Centre. However, the action failed therein for the reason that as per the WIPO policy, the Plaintiff was not able to establish the presence of bad faith in the acts of the Defendants. Finally, the Plaintiff sought an action before the Hon’ble Bombay High Court seeking injunction against the unauthorized usage of the Plaintiff’s mark by the Defendants.
Issues Involved
Upon a perusal of the contentions of the Plaintiff and Defendants by the Court, it becomes evident that there were three primary issues that sought required consideration of . First, on the aspect of the sanctity of the Plaintiff’s trademark, whether it was issued with a disclaimer and whether a disclaimer is carried forward to the subsequent registrations. A disclaimer is placed on a Trademark when the Trademark Registrar finds that the exclusive usage of a certain word cannot be provided. In this case, the allegation was that a disclaimer was provided for ‘MOCHI’ trademark and that the same was carried forward in every subsequent registration. Second, whether an addition of a prefix to an already existing mark distinguishes the two marks in question. Third, the authority of the WIPO Order had to be assessed in light of the reasoning used to come to its conclusions.
Analysis
Justice. R.I. Chagla at the outset concurred with the Plaintiff’s claim in adequate registration of the mark under classes 18, 25 and 35 since 1977. He also noted that Plaintiff had established a continuous and extensive use of their registered mark. He pointed out the misconceived contention of the Defendants that the Plaintiff’s mark had a conditional registration, because, and as the court further noted to be true, the disclaimer was on the usage of letter “M” and not ‘MOCHI’.
Interestingly, the Court noted that the Defendants is itself estopped from contesting the generic nature of the word ‘MOCHI’ because of their unsuccessful attempt to register their mark. It was made clear that the WIPO Order had no bearing on the case before High Court, because of the difference in WIPO policy and Indian jurisprudence, which does not see element of ‘Bad Faith’ as necessary to establish infringement.
The reasoning of the Court tells us that it is important for international tribunals like WIPO to adjudicate in a manner consistent with the Indian intellectual property rights development to find enforcement in the Indian legal landscape. The Court held that the element of bad faith per-se is not required to secure an order for infringement of a registered trade mark. The Court reiterated the settled law that if a deceptively similar mark or domain name is found being used in respect of identical goods and services, a case of infringement is made out, on the ground that such usage will inevitably lead to confusion. Further a mere addition of a generic prefix will not negate action where the mark in question contains the whole of the other Party’s mark (as also in the immediate case, where the Plaintiff’s mark has acquired a large name over the market, such a reproduction would only be perceived as an offshoot of the Plaintiff’s enterprise).
Notably, the Court while upholding the validity of the Plaintiff’s registration noted that every trademark registration is separate and independent and a disclaimer in one registration cannot be read or imported into another.
Further, it sets out law on separating trademarks and finds that a disclaimer to certain trademark held by a party does not handicap other ones held by them. This is especially beneficial to entities engaged in the media and entertainment business who operate multiple trademarks from a single entity.
Court’s Decision
Towards the conclusion of the decision, the Court refuted the Defendant’s plea of refusal on the ground of delay in seeking an interim relief. It reiterated that mere delay in bringing action is not sufficient to defeat the grant of injunction in case, where it is prima facie visible that adoption of the mark itself was dishonest.
Additionally the Court also observed that apart from the prayers, the Plaintiff has been able to establish that its registered mark ‘MOCHI’ is required to be declared as a well-known mark under section 2(1)(zg) of the Indian Copyright Act.
Conclusion
This Judgement in the case of Metro Shoes Ltd vs Nice Shoes LLP & Ors. comes as breeze of reassurance to businesses and enterprises who have made their name over the years. The problem faced by the Plaintiff’s in the immediate case is a very possible future proposition for many and thus, this judgement shall stand tall to save many rights ahead.
Authors: Malabika Boruah, Tushar Gerewal & Alok Singh Mourya