The Bombay High Court has restrained “Metro Footwear” from using the impugned mark after holding that it prima facie infringes the registered trademark “METRO” owned by Metro Brands Limited, one of India’s leading footwear and accessories companies. Justice Sharmila U. Deshmukh noted that the defendants had repeatedly sought adjournments on the pretext of settlement and had neither filed a reply nor produced any supporting material. In these circumstances, the Court allowed the interim application and granted injunctions in terms of prayer clauses (a) and (b), barring only the bracketed portion that referred to recognition of the plaintiff’s mark as a well-known mark.
The Court recorded that Metro Brands has been using the mark “METRO” since 1955 and holds multiple registrations across classes, including its earliest registration from 21 December 1972 in Class 25. With over 826 exclusive showrooms across 100 cities and cumulative sales exceeding ₹13,000 crore (1987–2022), the Court held that the plaintiff’s goodwill and reputation stand firmly established. The Court further observed that the defendants’ mark “METRO FOOTWEAR” fully subsumes the plaintiff’s registered mark and that the addition of the descriptive word “footwear” is insufficient to avoid infringement.
The Court also rejected the defendants’ claimed prior use of “METRO FOOTWEAR” since 1982, holding that no supporting material was produced and that the plaintiff’s earlier 1972 registration defeats any such defence. On the passing off claim, the Court found that the defendants had designed and marketed their goods in a manner likely to mislead consumers into believing they originate from the plaintiff, thereby injuring Metro Brands’ goodwill.
Allowing the application, the Court restrained the defendants, their partners, agents, franchisees, distributors, and all persons acting on their behalf from using, selling, advertising, or dealing in any goods under the mark “METRO FOOTWEAR” or any other mark identical or deceptively similar to Metro Brands’ registered METRO trademarks, pending final hearing of the suit.
Appearances:
For the Plaintiff: Mr. Venkatesh Dhond, Senior Advocate a/w Mr. Rashmin Khandekar, Mr. Alhan Kayser, Ms.Varsha Vasave & Ms. Gauri Sansare i/b Mr. Avesh Kayser, Advocates.
