Bata India Limited (Bata) and Leayan Global Pvt. Ltd and others (Leayan)) operating in the footwear industry vie for the mark ‘POWER’ before the Delhi High Court. Interesting issues have come up including a) whether a mark being laudatory, is available as a defence to a party when he himself has applied for its trademark registration b) impact of delay in bringing the action. In addition the court frowned upon the practice of masking the main defendant and pleading the dealer as first defendant to avoid the main defendant’s name appearing in the cause list.

Bata has filed the suit alleging trademark infringement, passing off, unfair competition, damages, etc., against Leayan to restrain them from using the mark ‘POWER’ in relation to footwear.  At the admission stage, Bata was granted an exparte interim injunction restraining Leayan from using ‘POWER’ in respect of footwear either solitarily or in combination with any word. With regard to the tag line ‘THE POWER OF REAL LEATHER’ notice was issued to the other side with a direction that no undue prominence should be given to the word ‘POWER’ till the injunction application is decided. Leayan has filed application to set aside the ex-parte injunction.

Contention of the parties  

1. Bata argued that it is a well-known manufacturer and seller of footwear and adopted the mark ‘POWER’ for footwear in 1970’s and has been in use since then.
2. The ‘POWER’ brand is registered both as word and logo and in combination with other marks. Bata has made enormous sales of the ‘POWER’ branded footwear and spent huge amounts on publicity.
3. The trademark application for ‘POWER FLEX’ filed by Leayan in respect of footwear was opposed by Bata. At the evidence stage it came to Bata’s notice that Leayan was using the mark ‘POWER FLEX’ and has also filed another application for the tag line ‘THE POWER OF REAL LEATHER’. Use of the mark ‘POWER FLEX’ and the tag line ‘THE POWER OF REAL LEATHER’ violates Bata’s rights in the mark POWER.
4. Leayan argued that Bata in reply to the examination report for registration of various ‘POWER’ derivative marks stated that marks such as ‘POWERGUN’, POWER LABEL’, etc., are dissimilar. Further, ‘POWER’ is a laudatory word incapable of being exclusively monopolised.
5. ‘POWER FLEX’ is not used in isolation but always with the mark ‘RED CHIEF’. Leayan further argued that it is ready to give undertaking that it will only deal in leather footwear (and not sport shoes) and use the mark ‘POWER FLEX’ with the mark ‘RED CHIEF’ in a composite manner and no prominence be given to the word ‘POWER’ in the advertisement.
6. Bata has considerably delayed filing the suit, POWER FLEX mark has been in use since 2011. No chance of confusion as Bata uses the mark ‘POWER’ for sporting footwear, whereas, ‘POWER FLEX’ is used for leather footwear.

The court after considering the pleadings, documents and arguments held:

• Bata has placed on record trademark registrations for ‘POWER’ and ‘POWER’ derivative marks. The earliest registration dates back to 1971 for the mark ‘POWER’ with the arrow logo and the mark ‘BATA’ and the standalone ‘POWER’ mark registration for the device and the word, in respect of footwear, dates back to 1975. In fact this shows adoption of the ‘POWER’ and ‘POWER’ derivative marks by Bata 48 years ago. Subsequent registrations of the mark ‘POWER’ show it is registered as a word mark, device mark, combination mark and in various derivative forms such as ‘POWER SPORTS’, POWER POINTS’, POWER ULTIMO’, etc. which evidences ‘POWER’ is not being used in isolation, but in conjunction with several words.
• Leayan’s trademark is ‘RED CHIEF’ and inside the shoe ‘POWER FLEX is used on a standalone basis. There is no evidence of use of the word ‘POWER’ to show third party use.
• Bata’s use of the mark ‘POWER’ is prior, whereas, Leayan’s use of the mark ‘POWER FLEX’ is sketchy and the argument that ‘POWER FLEX’ is being used only with ‘RED CHIEF’ is not correct.
• Contention regarding delay fails as passing off is a recurring cause of action and delay being a defence in equity is not available in the instant case. Leayan’s main brand is ‘RED CHIEF’ and not ‘POWER’ or ‘POWER FLEX’.
• Argument regarding difference in goods, i.e., sporting footwear and leather footwear, is no distinction in the eyes of law. Contention that POWER is a laudatory word fails as Leayan has also applied for its registration.

In view of the above, the court restrained Leayan from using the mark/word ‘POWER’ in respect of footwear, clothing and accessories including ‘POWER FLEX’ or any other mark containing the word ‘POWER’. However, permitted use of the tagline ‘The Power of Real Leather’ as an advertising slogan with the condition that no undue prominence will be given to the word ‘POWER’.

Apart from dealing with the case on merits, the court admonished the practice of masking the main defendant to obtain ex-parte interim injunction by back door. The court directed the court Registry that all new IP cases must be accompanied by a declaration from the parties that the main defendant by name has been pleaded as first defendant (and not its distributor/seller or Director).