While agreeing that a prima facie case of infringement under Section 29(2)(b) of the Trade Marks Act, 1999, stands established, the Delhi High Court affirmed the Single Judge’s order injuncting Leayan from using the “POWER FLEX” mark. The Court rejected Leayan’s arguments that ‘POWER’ lacks distinctiveness and “POWER FLEX” is descriptive, and held that “POWER” is distinctive for footwear, while “POWER FLEX” is not descriptive of the character or quality of Leayan’s goods, and therefore Leayan cannot claim the protection of Section 35 of the Trade Marks Act.
The Court found that Bata is the registered proprietor of the ‘POWER’ mark since 1975, and the goods (canvas and leather footwear) are similar, falling in the same class (Class 25), and there is a likelihood of confusion and association in the mind of an average consumer. Additionally, the mark “POWER FLEX” wholly subsumes Bata’s mark “POWER”, increasing the likelihood of ‘initial interest confusion’.
The Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla agreed with the Single Judge that the evidence provided by Leayan to demonstrate goodwill and reputation in the “POWER FLEX” mark was “as good as Nil”, since the invoices did not mention the mark, and most advertisements were undated. The Bench also emphasised that the defence of acquiescence under Section 33 of the Trade Marks Act is only available to the proprietor of a registered trademark. Since Leayan’s mark is not registered, this defence is not available to it.
The Bench further observed that there is no undue emphasis on the word “POWER”, and an average consumer would read the tagline as a whole, making confusion or association with Bata’s mark unlikely. Additionally, the Bench found that allowing Leayan to exhaust its existing stock was within the discretionary powers of the Single Judge and refused to interfere with this direction.
However, the Bench set aside the Single Judge’s direction to delete Chawla Boot House (CBH), the retailer, from the array of defendants, and held that under Section 29 of the Trade Marks Act, a seller of infringing goods is also an infringer, and there is no procedural requirement to array the “main” defendant as Defendant No. 1.
Accordingly, the interim order of the Single Judge was upheld, with the sole modification that the retailer, CBH, was restored as a defendant in the suit.
Briefly, Bata instituted a suit for permanent injunction against Leayan, alleging that Leayan’s use of the mark “POWER FLEX” for footwear infringed Bata’s registered trademark “POWER”. Acting upon the same, the Single Judge of the High Court initially passed an ex parte ad interim order, restraining Leayan from using the mark ‘POWER’ or ‘POWER FLEX’ in respect of footwear, clothing, and accessories.
However, Leayan was permitted to use the tagline ‘THE POWER OF REAL LEATHER’, provided no undue prominence was given to the word ‘POWER’. Also, Leayan was permitted to sell its existing stock of products, subject to filing monthly statements of disposal. While Leayan challenged the injunction against the use of ‘POWER FLEX’, Bata challenged the permission to use the tagline and sell existing stock.
Appearances:
Advocates Shravan Kumar Bansal, Rishi Bansal, Ajay Amitabh Suman, Pankaj Kumar and Rishabh Gupta, for the Appellant
Advocates Neeraj Grover, Kashish Sethi, Harshita Chawla, Angad Deep Singh and Mohana Sarkar, for the Respondent
