The Calcutta High Court, in a dispute concerning the use of the mark “PRO” in relation to footwear falling under Class 25, considered whether the use of “PRO BALANCE” by Aditya Birla Lifestyle Brands Limited and its associates amounted to infringement and passing off of Khadim India Limited’s registered “PRO” trademark. The Court, while considering the Plaintiff’s application for interim relief, examined the significance of the registered word mark, the essential-feature doctrine, the competing claims of prior use and the Defendant’s challenge to the validity of the registration.

Plaintiff’s Case

1. Khadim India Limited manufactures and sells shoes of various types and materials under the registered word mark “PRO”. The mark was registered in June 2005, pursuant to an application filed in June 1997, in which the Plaintiff had claimed proposed use.
2. According to the Plaintiff, it had continuously used the “PRO” mark since 1997 and, over the years, had developed substantial market identity, goodwill and reputation in relation to footwear sold under the mark.
3. The Plaintiff alleged that Defendant was selling identical or similar footwear bearing the word “PRO”, including products marketed under the expression “PRO BALANCE”. It was contended that the Defendant’s adoption and use of “PRO”, whether independently or in conjunction with another word, appropriated the essential feature of the Plaintiff’s registered trademark.
4. The Plaintiff accordingly asserted that the Defendant’s use constituted infringement of its registered trademark as well as passing off and sought an ad interim injunction restraining the Defendant from manufacturing, marketing or selling footwear bearing “PRO”.

Defendant’s Contentions

1. The Defendant contended that it had been using “PRO BALANCE” since 2023 and had acquired substantial international reputation and public recognition in relation to the mark. It argued that, despite being aware of the Defendant’s use, the Plaintiff had waited for more than three years before approaching the Court in July 2026.
2. Relying upon newspaper advertisements and other materials evidencing its market presence since 2023, the Defendant argued that there was no urgency warranting the grant of an interim injunction and sought an opportunity to file its affidavit before any interim order was passed.
3. A substantial part of the Defendant’s defence concerned the validity of the Plaintiff’s “PRO” registration. It was contended that “PRO” was a generic and non-distinctive expression and that its registration as a word mark was therefore invalid.
4. The Defendant further argued that the use of “PRO” in conjunction with the word “BALANCE” did not amount to infringement, particularly since the overall get-up, customer base, pricing and product range of the parties’ products were different. It also asserted that there was no likelihood of confusion and that no case of passing off could arise merely because the Defendant used the common word “PRO” with additional matter.
5. The Defendant also relied upon alleged honest use and the existence of several third parties using “PRO” in relation to similar products.
6. On the issue of validity, the Defendant submitted that the Court ought to frame an issue regarding the validity of the Plaintiff’s registration, direct the Defendant to institute appropriate rectification proceedings within a prescribed period and keep the interlocutory proceedings in abeyance pending such proceedings.

Plaintiff’s Reply

1. In response, the Plaintiff contended that the addition of the word “BALANCE” could not save the Defendant from a finding of infringement. According to the Plaintiff, adding a prefix or suffix to the registered mark “PRO” did not authorise the Defendant to appropriate the essential feature of the registered mark.
2. The Plaintiff further argued that the question of invalidity of a registered trademark could not simply be conclusively determined in an interlocutory proceeding. Where validity was challenged at the interim stage, a heavy burden lay upon the Defendant to rebut the statutory presumption arising from the subsisting registration.
3. The Plaintiff therefore maintained that its registration, coupled with its longstanding use and substantial reputation, established a strong prima facie case in its favour.

Court’s Analysis

1. The Court found that “PRO” constituted the essential feature of the Plaintiff’s registered trademark. The fact that the Defendant used the expression as part of “PRO BALANCE” did not, at the prima facie stage, take the Defendant outside the scope of the Plaintiff’s trademark rights.
2. The Court attached significance to the Plaintiff’s longstanding use of “PRO” since 1997, its registration since 2005 and the substantial sales and market presence relied upon by the Plaintiff. These factors, according to the Court, demonstrated that “PRO” had acquired a distinctive identity in the relevant footwear market.
3. The Defendant had entered the market subsequently and had failed, at the interim stage, to demonstrate that its use of “PRO” would not result in confusion or association. Given that the competing products were footwear falling within the same product category, the Court found a sufficient basis to conclude that the Defendant’s use was likely to cause confusion.
4. The Court consequently found that the Plaintiff had established a strong prima facie case of trademark infringement as well as passing off.

Challenge to Validity

1. The Defendant’s contention that “PRO” was generic or non-distinctive was also considered in the context of the Plaintiff’s subsisting registration.
2. The Court did not accept that such a challenge, by itself, was sufficient to defeat the Plaintiff’s claim for interim protection. The Defendant’s challenge to the validity of the registration did not, at that stage, displace the rights flowing from the existing registration, particularly in view of the Plaintiff’s longstanding use and the evidence of substantial commercial exploitation of the mark.
3. Thus, the Defendant’s proposed reliance upon rectification proceedings did not provide a sufficient basis for permitting continued use of “PRO” during the pendency of the interlocutory proceedings.

Balance of Convenience and Interim Relief

1. The Court found that the balance of convenience overwhelmingly favoured the Plaintiff. Permitting the Defendant to continue using “PRO”, whether independently or with a prefix or suffix, was likely to prejudice the Plaintiff’s statutory and common-law rights and could result in further confusion and multiplicity of proceedings.
2. Accordingly, the Court restrained the Defendant from manufacturing or selling Class 25 products bearing the word “PRO”, whether used alone or in conjunction with a prefix or suffix.
3. At the same time, the Court permitted the Defendant to dispose of its existing unsold stock bearing “PRO” for a period of six months, subject to the Defendant providing the Plaintiff with detailed particulars of such stock within three weeks.
4. The Defendant was also directed to take steps to remove the relevant products bearing “PRO” from online platforms within three months.

Conclusion

The decision reinforces the principle that, in assessing infringement of a registered word mark, the Court will examine whether the allegedly infringing use appropriates the essential and distinctive feature of the registered mark. The mere addition of another word, such as “BALANCE” does not necessarily immunise the subsequent mark from an infringement claim.

The decision is also significant for its treatment of a validity challenge at the interlocutory stage. A defendant seeking to overcome the rights flowing from a subsisting registration cannot merely assert that the registered mark is generic or non-distinctive; the challenge must be substantiated sufficiently to displace the prima facie rights arising from registration.

On the facts before it, the Calcutta High Court considered the Plaintiff’s longstanding use, registration, market presence and reputation in “PRO”, coupled with the Defendant’s subsequent adoption of “PRO BALANCE” for similar footwear, sufficient to warrant interim protection.

The ruling therefore underscores the continuing importance of prior use, registration, the essential-feature test, likelihood of confusion and the statutory protection afforded to registered trademarks in determining interim relief in trademark infringement proceedings.