Two entities dealing in footwear lock horns over the mark ‘FOOTLOCKER’ before the Delhi High Court. The Plaintiff, Foot Locker Retail, Inc., filed the suit alleging trademark infringement, delivery or rendition of accounts, etc., and to restrain the Defendant from using the mark in relation to their business. The post discusses arguments advanced by the parties and the court ruling on interim injunction sought by the Foot Locker Retail (Plaintiff).

The Plaintiff in support of its case contended:

1. Foot Locker Retail, Inc. was incorporated in the United States in 1974, and since its incorporation, engaged in the manufacture and sale of footwear, under the “FOOT LOCKER” brand. They hold registrations for the mark “FOOT LOCKER” in over 100 countries.
2. In India, the mark FOOT LOCKER is registered in Class 25, in relation to “shoes, footwear and athletic clothing,” since October 1988. They also have an online presence through the websites www.footlocker.com and www.kidsfootlocker.com from 1995, and the mark has been commercially used in India since 2015.
3. In September 2021, they obtained registration for the mark “FOOT LOCKER” in Class 35, which covers “retail stores services featuring clothing, footwear and headgear, online retail store services, featuring clothing, footwear and headgear”.
4. In January 2022, the Defendant (Geeta Kewlani, an individual) filed an application before the Trademark Registry seeking rectification of the register and removal of the Plaintiff’s registration for the “FOOT LOCKER” word mark in Class 35. The action was based on its prior use of the mark FOOT LOCKER since 2001.
5. Pursuant to the filing of the rectification against its mark, the inquiries conducted by Plaintiff revealed that Defendant had obtained a registration for the mark in Class 25 in the year 2013.
6. Further inquiries by Plaintiff showed that Defendant was also engaged in sale of footwear using the mark from a shop in Jaipur.
7. An attempt to resolve that matter failed. Therefore, a trademark infringement action was filed.

Defendant (Geeta Kewlani) in support of their case contended:

• They are entitled to be protected under Section 34 of the Trademarks Act as they commenced use of the mark prior to the Plaintiff.
• The inaction, on the part of the Plaintiff, in not using the mark for 30 years till 2018, despite having obtained registration of the mark in its favour in 1988, disentitles them from either pleading infringement or seeking any injunctive relief.
• The claim of user of the “FOOT LOCKER” mark by the Plaintiff since 2015, is not corroborated. Moreover, there is no evidence whatsoever of they having any goodwill or reputation in the Indian market.
• Mere registration does not entitle the proprietor to an injunction if the mark is unused for years at a stretch. In the instant case, the Plaintiff used the registered “FOOT LOCKER” mark for the first time 30 years after registration was obtained.

Court’s findings

• Admittedly Defendant’s mark is deceptively similar to the device mark , and the “FOOT LOCKER” word mark, both registered trademarks of the Plaintiff. One is “FOOT LOCKER”; the other “FOOT LOCKERS”, the letter ‘S’ is hardly a differentiating factor. The visual dissimilarity pales into insignificance, given the near identity of the marks. Brand logos keep changing, and, thus, where the marks are otherwise identical or deceptively similar, the mere fact that they may be written differently cannot impact the aspect of infringement.
• The mark is registered in favour of Plaintiff since 1988 and is valid and subsisting. The mark which is registered in favour of Defendant in 2013 is . The mark “FOOT LOCKER” cannot be treated as an ordinary or a descriptive mark or as publici juris. It is incomprehensible that Defendant who is involved in manufacture and sale of footwear was unaware of the mark of the Plaintiff, considering the international recognition that it commands.
• There is substance in the argument that when Defendant applied for registration of its mark, Plaintiff’s mark was cited as an earlier registered mark, nonetheless, the mark was registered merely on the Defendant’s contention that the marks were not similar. Though the Trademarks Act accords presumption of validity to a registered trademark, it is merely a presumption, which is rebuttable.
• The fact that Plaintiff has not used the mark for 30 years after it was registered cannot be a ground to hold that there is no infringement, as the mark is valid and subsisting even as on date. Thus, prima facie adoption of the mark by Defendant is to capitalise on the Plaintiff’s goodwill.
• No equity is vested in the Defendant merely because it has obtained a registration for the mark in 2013 for footwear. This is more so considering Plaintiff’s mark stood registered more than 25 years prior to the Defendant.
• Reliance on Section 34 will not succeed as it is applicable only if the user by Defendant of the infringing mark is prior in point of time both to the registration as well as the user of the mark alleged to be infringed. In the instant case Plaintiff’s registration, of the ‘FOOTLOCKER’ mark, is anterior to both the registration, as well as the user, by the Defendant. Thus, Section 34 would not disentitle Plaintiff to an injunction against the Defendant. Balance of convenience is also in Plaintiff’s favour.

In light of the above, the Court restrained Defendant from using the mark, whether as a word mark or a device mark, on footwear or any other associated items or like goods, pending disposal of the present suit.

Our Comment

The decision reiterates that dishonest adoption is a crucial consideration in trademark infringement action when the court is balancing the equities. An appeal against the Single Judge order preferred by the Defendant is pending before the two-judge bench (the Division Bench). However, the court refused to modify or stay the order passed by the Single Judge.