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[Cites 43, Cited by 0]

Delhi High Court

Leayan Global Pvt Ltd vs Bata India Ltd on 15 December, 2025

Author: C. Hari Shankar

Bench: C. Hari Shankar

                  $~
                  *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                                 Reserved on: 2 December 2025
                                                             Pronounced on: 15 December 2025

                  +      FAO(OS) (COMM) 105/2019 & CM APPL. 22368/2019
                         LEAYAN GLOBAL PVT LTD                  .....Appellant
                                     Through: Mr. Shravan Kumar Bansal,
                                     Mr. Rishi Bansal, Mr. Ajay Amitabh
                                     Suman, Mr. Pankaj Kumar and Mr. Rishabh
                                     Gupta, Advs.

                                                  versus

                         BATA INDIA LTD                        .....Respondent
                                      Through: Mr. Neeraj Grover, Mr.
                                      Kashish Sethi, Ms. Harshita Chawla, Mr.
                                      Angad Deep Singh and Ms. Mohana Sarkar,
                                      Advs.

                  +      FAO(OS) (COMM) 193/2019
                         BATA INDIA LTD                                          .....Appellant
                                                  Through: Mr. Neeraj Grover, Mr.
                                                  Kashish Sethi, Ms. Harshita Chawla, Mr.
                                                  Angad Deep Singh and Ms. Mohana Sarkar,
                                                  Advs.

                                                  versus

                         CHAWLA BOOT HOUSE & ANR                              .....Respondents
                                                  Through: Mr. Shravan Kumar Bansal,
                                                  Mr. Rishi Bansal, Mr. Ajay Amitabh
                                                  Suman, Mr. Pankaj Kumar and Mr. Rishabh
                                                  Gupta, Advs.



Signature Not Verified
Digitally Signed By:AJIT
KUMAR                FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019            Page 1 of 60
Signing Date:15.12.2025
12:06:53
                             CORAM:
                            HON'BLE MR. JUSTICE C. HARI SHANKAR
                            HON'BLE MR. JUSTICE OM PRAKASH SHUKLA
                  %                                   JUDGMENT
                                                       15.12.2025

                  The lis


                  1.        CS (Comm) 110/20191, instituted by Bata India Ltd2 against
                  Leayan Global Pvt Ltd3, is presently pending before a learned Single
                  Judge on the Intellectual Property Division of this Court.


                  2.        Bata has alleged, in the suit, that Leayan, by use of the mark
                  POWER FLEX, for footwear, has infringed the mark POWER, which
                  is the registered trademark of Bata in respect of footwear. Bata has,
                  therefore, in the suit, prayed for a decree of permanent injunction,
                  restraining Leayan from using any mark of which POWER constitutes
                  a dominant part in respect of footwear or other allied goods.


                  3.        Bata also filed, in the suit, IA 3051/2019 seeking interlocutory
                  injunction against Leayan, pending disposal of the suit from using the
                  mark POWER FLEX or any other mark which may be identical or
                  deceptively similar to the Bata's mark POWER.


                  4.         On 27 February 2019, the learned Single Judge passed an ex
                  parte ad interim order, restraining Leayan from using the mark
                  POWER in respect of footwear either on its own or in combination

                  1 "the suit" hereinafter
                  2 "Bata" hereinafter
                  3 "Leayan" hereinafter
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                   with any other word till the next date of hearing.


                  5.     Bata had further prayed that Leayan be also restrained from
                  using the expression POWER OF REAL LEATHER. However, the
                  learned Single Judge deferred the decision on this request till
                  completion of pleadings on the application, merely stating that, in the
                  said tagline, no undue emphasis would be placed on the word
                  "POWER". Leayan was also granted liberty to move the Court for
                  disposal of existing stocks.


                  6.     Leayan moved IA 4472/2019 for being permitted to sell the
                  existing stocks of the allegedly infringing goods. A stock statement
                  was stated to have been filed with the documents filed by Leayan,
                  which indicated 38415 pairs of footwear lying in stock. The learned
                  Single Judge granted the prayer for disposal of the stock in the
                  following terms on 27 March 2019 :

                         "5.     The Defendants were given liberty to move an application
                         for disposal of any existing stock. Since this was stock which was
                         already manufactured by the Defendants, prior to the grant of
                         injunction on 27th February, 2019, the Defendant is permitted to
                         dispose of the stock as mentioned in the statements subject to the
                         following conditions:
                                 (i)    The Defendants are directed to file monthly
                                 statement of disposal of the said stock;

                                 (ii)   Defendants shall file an affidavit in respect of the
                                 value of the said stock which is disposed of;

                                 (iii) No fresh manufacturing is permitted with the
                                 impugned marks.

                         6.     The permission to dispose of the stock is subject to further
                         orders in the interim injunction application which is listed for
                         hearing on 3rd April 2019."

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KUMAR                FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019                Page 3 of 60
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                  7.         Leayan also filed IA 3686/2019 under Order XXXIX Rule 4 of
                 the Code of Civil Procedure, 19084 for vacation of the ex parte ad
                 interim order dated 27 February 2019 passed by the learned Single
                 Judge.


                 8.        The learned Single Judge, by order dated 16 April 2019,
                 disposed of IA 3051/2019 filed by Bata under Order XXXIX Rules 1
                 and 2 of the CPC and IA 3686/2019 filed by Leayan under Order
                 XXXIX Rule 4 of the CPC with the following directions :

                           "a)     Defendant No.2 is restrained from using the mark/word
                           'POWER‟ in respect of footwear, clothing and accessories and
                           other related products including the mark 'POWER FLEX‟ or any
                           other mark containing the word 'POWER‟ or a combination
                           thereof;

                           b)     The use of the tagline 'THE POWER OF REAL
                           LEATHER‟ as part of an advertising slogan or a tagline is
                           permitted, however, no undue prominence shall be given to the
                           word 'POWER‟;

                           c)      The existing stock of products as mentioned in para 32
                           above is permitted to be sold by filing a monthly statement of
                           disposal, including the value of the stock so sold, subject to the
                           final adjudication in the suit."


                 9.        The aforesaid order dated 16 April 2019, of the learned Single
                 Judge, has been challenged before us in the present appeals both by
                 Leayan and by Bata. Leayan has challenged direction (a) in the
                 impugned order whereas Bata has challenged directions (b) and (c).


                 10.       We have heard Mr. S.K. Bansal, learned counsel for the Leayan
                 and Mr. Neeraj Grover, learned counsel for the Bata, at length.
                  4 "CPC" hereinafter
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                   Proceedings before the learned Single Judge


                  Rival contentions of Leayan and Bata before the learned Single Judge


                  Contentions of Leayan


                  11.     Before the learned Single Judge, Leayan submitted as under:


                         (i)     In its reply to the First Examination Report issued by the
                         Trade Marks Registry, in response to Bata's application for
                         registration of its various POWER derivative marks, Bata had
                         claimed that the mark POWER and similar marks such as
                         POWERGUN and POWER LABEL were visually, structurally
                         and conceptually different from each other. Bata could not,
                         therefore, be heard to plead that the mark POWER FLEX of
                         Leayan was deceptively similar to the mark POWER of Bata.


                         (ii)    POWER was a laudatory expression and could not be
                         monopolized.


                         (iii)   The word POWER was a common dictionary word, over
                         which exclusivity could not be claimed.


                         (iv)    Various applications had been filed before the Trade
                         Marks Registry for registration of trade marks of which POWER
                         was a part in respect of footwear.

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                          (v)      Leayan had commenced use of the mark POWER FLEX
                         in 2010-2011. Mr. Virat Kohli was its brand ambassador. The
                         suit which was instituted only in 2019 was, therefore, grossly
                         belated.


                         (vi)     POWER FLEX was never used by Leayan in isolation as
                         a trade mark but was always used in conjunction with the mark
                         RED CHIEF.


                         (vii)    There was, therefore, no chance of confusion between the
                         marks.


                         (viii)   Leayan used the mark POWER FLEX for leather
                         footwear whereas Bata used the mark POWER for sporting
                         footwear. This, again, obviated the possibility of any confusion
                         between the marks.


                         (ix)     Leayan had used the mark POWER FLEX in an honest
                         and concurrent fashion since 2011. Such open and extensive use
                         itself operated as a bar to grant of interim relief restraining use of
                         the mark.


                         (x)      Given the extent of user of the mark POWER FLEX by
                         Leayan and the extent to which the mark was advertised, using
                         celebrities amongst others, Bata could not have been unaware of
                         the said mark.


                         (xi)     The advertisements depicting the mark POWER FLEX
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                          were also published in leading newspapers such as "Amar
                         Ujala".


                  12.     Without prejudice to these submissions, Leayan undertook,
                  before the learned Single Judge to use the mark POWER FLEX only
                  for leather footwear and only in conjunction with the mark RED
                  CHIEF, in a composite fashion, without any special prominence to the
                  word POWER.


                  Contentions of Bata


                  13.     Responding to Leayan's submissions, Bata contended before
                  the learned Single Judge as under:


                         (i)       The mark POWER, both as a word mark and as a device
                         mark, was registered in favour of Bata, not only for sports
                         footwear but also for leather goods.


                         (ii)      Bata had enormous goodwill in the mark POWER. The
                         sale proceeds of goods using the mark POWER by Bata for the
                         year 2018, were to the tune of approximately ₹ 480 Crores,
                         which was 20% of the total sales of Bata.


                         (iii)     Leayan had contended, falsely, that it was not using the
                         mark POWER FLEX independently and it was only using the
                         mark in conjunction with the mark RED CHIEF.



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Digitally Signed By:AJIT
KUMAR                FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019         Page 7 of 60
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                          (iv)       The suit could not be said to be belated. The cause of
                         action for instituting the suit arose only when Leayan filed
                         evidence of use of the mark POWER FLEX in the opposition
                         proceedings before the Trade Marks Registry. Prior thereto, Bata
                         had no knowledge of Leayan's use of the mark POWER FLEX.


                         (v)        Having itself applied for registration of the mark
                         POWER FLEX, Leayan was estopped from contending that the
                         mark POWER was descriptive or laudatory or was disentitled to
                         exclusivity being a common dictionary word.


                         (vi)       The advertisements cited by Leayan were for the RED
                         CHIEF brand.


                         (vii)      No separate sales turnover figures from sale of goods
                         bearing the mark POWER FLEX effected by Leayan were
                         provided.


                 14.       Premised on these contentions, Bata pressed its prayer for grant
                 of interlocutory relief.


                 Findings of the learned Single Judge


                 15.       The learned Single Judge commences her observations and
                 findings with a note of disapproval at Bata having impleaded Chawla
                 Boot House5, who was a retailer of Leayan as the first defendant, and
                 Leayan itself as the second defendant. The learned Single Judge has
                  5 "CBH" hereinafter
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                   gone on to issue directions to the Registry and seek undertakings from
                  all plaintiffs in Intellectual Property Rights matters that the main
                  contesting defendant in the suit has to be arrayed as the first
                  defendant.


                  16.    Though Mr. Grover, learned counsel for the Bata took
                  exception to this note of disapproval, Bata can really have no
                  grievance against the practice directions to the Registry issued by the
                  learned Single Judge. We, however, have our reservations as to
                  whether, in the absence of any mandate, in the CPC or in any other
                  statute, plenary or subordinate, requiring the "main contesting
                  defendant" to be arrayed as Defendant 1, such a direction could be
                  issued by the learned Single Judge. Besides, as Mr. Grover, points
                  out, the manufacturer of the infringing goods and the seller of the
                  infringing goods are equally infringers within the meaning of Section
                  29 of the Trade Marks Act, 1999, as both use the infringing mark in
                  the course of trade. It might be doubtful, therefore, whether merely on
                  the basis of the size of the enterprise, one of them can be treated as the
                  main defendant and the other as the subsidiary defendant. More on
                  this hereinafter.


                  17.    In so far as the merits of the matter are concerned, the learned
                  Single Judge has observed and held as under:

                         (i)     Bata was the registered proprietor of several registrations
                         for the word mark POWER as well as for POWER derivative
                         marks.

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                          (ii)    The earliest registration of 1971, was for the mark


                         POWER with the arrow logo                         .


                         (iii)   As a standalone mark, POWER was registered in Bata's
                         favour, both as a word mark and a device mark since 1975.


                         (iv)    The earliest invoice furnished by Bata evidencing use of
                         the mark POWER, for footwear, dated back to 29 September
                         1988.


                         (v)     Bata had also produced considerable evidence of
                         goodwill having been amassed by its mark POWER.
                         Advertisements, dating back to 1980s, were on record, showing
                         use of the mark POWER in association with the Indian Cricket
                         Team. An exclusive window, with the POWER branded
                         footwear, also depicted that cricketers such as Kapil Dev and
                         Sachin Tendulkar, had used POWER on their cricket bats. The
                         POWER mark had also been positioned as the international
                         sports brand of Bata. There were various stores which
                         exclusively retailed POWER branded footwear, the first of
                         which was launched in March 2018.


                         (vi)    Leayan's contention that it was not using the mark
                         POWER FLEX in isolation, but was always using it in
                         conjunction with the mark RED CHIEF, was incorrect. The
                         mark POWER FLEX was used, in isolation, on the inside of the

Signature Not Verified
                         footwear manufactured by Leayan.
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KUMAR                FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019       Page 10 of 60
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                           (vii) The advertisement dated 2 February 2011, featuring Virat
                          Kohli, on which Leayan relied, indicted that it was for RED
                          CHIEF branded products and not for products bearing the mark
                          POWER FLEX.


                          (viii) Bata had at least 40 years' priority of user of the mark
                          POWER over the use the mark POWER FLEX by Leayan.


                          (ix)     The evidence of use of the mark POWER FLEX by
                          Leayan was sketchy. No independent sales turnover had been
                          provided for goods bearing the mark POWER FLEX. There
                          were only six or seven advertisements, in the "Amar Ujala"
                          periodical, and no other evidence of any major publicity of the
                          mark POWER FLEX.


                          (x)       In accordance with the law declared by the Division
                          Bench of this Court in Pankaj Goel v. Dabur India Ltd6, it
                          could, therefore, be stated that Bata had acquiesced to the use of
                          the mark POWER FLEX by Leayan and had thereby allowed
                          Leayan to build up a reputation.


                          (xi)      The plea of Leayan that there was no likelihood of
                          confusion as the mark POWER FLEX was used by it for leather
                          footwear, whereas the mark POWER was used by Bata for
                          sports goods, was without merit.


                  6 (2008) 38 PTC 49 (DB)
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                           (xii) There was always reasonable scope of Bata expanding
                          the use of the mark POWER to include leather footwear. Courts
                          were required to bear in mind such reasonable scope of
                          expansion, as held by the Supreme Court in Laxmikant V.
                          Patel v. Chetan Bhai Shah7.


                          (xiii) Moreover, sports goods and goods in leather footwear
                          were goods which were allied and cognate. It was a matter of
                          common knowledge that companies used to manufacture both
                          kinds of goods under one brand.


                          (xiv) It could not be reasonably believed that, while adopting
                          the mark POWER FLEX, Leayan was unaware of the POWER
                          brand of the Bata.


                          (xv) Having applied for registration of the mark POWER
                          FLEX, Leayan was estopped from contending that the mark
                          POWER was laudatory, a dictionary word or otherwise not
                          entitled to any claim for exclusivity.


                          (xvi) Even on merits, it could not be said that the mark
                          POWER was descriptive of the footwear manufactured by Bata.
                          At the highest, it was only suggestive. In this context, reliance
                          was placed on Trademarks and Unfair Competition by Thomas
                          Mc Carthy, which opined that the aspect of whether a mark was
                          descriptive or suggestive, could be decided by examining
                                      (a)   the degree of imagination required to connect the
                  7 (2002) 3 SCC 65
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                                      mark with the product, and
                                     (b)   the competitors' need to use the mark.

                           The word POWER did not immediately direct the mind to
                           shoes or footwear. It required a leap of mind to connect the
                           word POWER with footwear. The dictionary meaning of the
                           word POWER was essentially related to ability, control or
                           authority, dominance, etc. As such, POWER could, at best, be
                           treated as a suggestive mark for footwear. Thereby, it was
                           rendered inherently distinctive.


                           (xvii) Even if one were to apply instead of the aforenoted two
                           tests suggested in Mc Carthy, the intuitive perception test
                           devised in Union Carbide Corp. v. Ever-Ready, Inc.8, the word
                           POWER, when used for footwear, was distinctive and not
                           descriptive.


                  18.      Based on these findings, the learned Single Judge arrived at the
                  conclusion that the mark POWER was exclusively associated with
                  Bata's brand of footwear and that use of the mark POWER, either in
                  isolation or in combination with other words, for footwear,
                  accessories, clothing etc. violated the statutory or common law rights
                  of Bata in the said mark.


                  19.      On the basis of this conclusion, the learned Single Judge went
                  on to issue direction (a) in the impugned order, reproduced in para 8
                  supra.

                  8 531 F. 2d. 366
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                   20.    The issuance of directions (b) and (c) was sought to be justified
                  on the following findings:

                         "33. However, the Court is also conscious of the fact that
                         Defendant No. 2's use in the last 4-5 years, has not been as
                         restricted as the Plaintiff made it out to be in the plaint. The
                         documents which have been filed by Defendant No. 2 do show that
                         Defendant No. 2 has had at least some years of use even though
                         not very prominent, prior to the filing of the present suit. The
                         Plaintiff's stand that Defendant No. 2's usage came to its
                         knowledge only through the evidence in the opposition
                         proceedings, seems a bit farfetched when seen in the context of the
                         documents placed on record by Defendant No. 2. While holding
                         that the Plaintiff is entitled to grant of interim injunction,
                         Defendant No. 2 is permitted to exhaust the entire stock of
                         'POWER FLEX' branded goods, available with it. ...

                         34.    Vide order dated 27th March, 2019, this Court had already
                         permitted the Defendant to sell the existing stock, subject to certain
                         conditions. The said conditions are again reiterated in this order.

                         35.     Further, while Defendant No. 2 would not be permitted to
                         use the mark 'POWER FLEX' as a trademark, the English
                         language use of the word 'POWER' as part of an advertising
                         slogan or as in tagline 'THE POWER OF REAL LEATHER' cannot
                         be injuncted. The case laws cited by both the sides are well
                         settled."


                  21.    Aggrieved thereby, Leayan is before us in the present appeal.


                  Rival Contentions


                  Submissions of Mr. S. K. Bansal


                  22.    Assailing the impugned judgment, Mr. Bansal, learned Counsel
                  for Leayan advances the following submissions:


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                           (i)      Bata had deliberately impleaded CBH, one of the
                          retailers of Leayan, as Defendant 1. This was in order to avoid
                          Leayan noticing the matter in the cause list and was, even
                          otherwise, not permissible as held by the Division Bench of this
                          Court in Micolube India Ltd v. Maggon Auto Centre9.


                          (ii)     The impugned judgment does not take stock of the
                          extensive goodwill and reputation which Leayan's POWER
                          FLEX products had acquired even prior to the filing of the suit.
                          Our attention was invited, in this context, to various
                          advertisements, on pan-India basis, both in the print media as
                          well as on televisions and invoices of POWER FLEX products
                          manufactured by Leayan, which were on record before the
                          learned Single Judge. Moreover, Leayan operated through over
                          135 stores all over India. Having thus acquiesced to the use, by
                          Leayan, of the POWER FLEX mark for an extended period of
                          time, by which the mark had acquired goodwill and reputation,
                          Bata could not belatedly seek to injunct use of the mark.


                          (iii)    In this context, it was pointed out that Leayan had
                          submitted its application for registration of the word mark
                          POWER FLEX in Class 25 on 7 September 2009.                    The
                          opposition to the application was filed by Bata only on 15
                          September 2017. Counter-statement by way of response to the
                          opposition was filed by Leayan on 22 March 2018. The suit
                          came to be instituted by Bata only in February 2019. Between
                          2010 and 2019, Leayan had extensively used the POWER
                  9 (2008) 38 PTC 271 (DB)
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                           FLEX mark and garnered considerable goodwill therein.
                          Reliance was placed, for this purpose, on para 29 of the
                          judgment of a learned Single Judge of this Court in QRG
                          Enterprises v. Surendra Electricals10, the appeal against which
                          was dismissed in QRG Enterprises v. Surendra Electricals11.
                          Apropos the judgment of the Supreme Court in Midas Hygiene
                          Industries (P) Ltd v. Sudhir Bhatia12, it was submitted that the
                          proposition that delay could not stand in the way of grant of
                          injunction in a case in which infringement was found to exist,
                          as enunciated therein, was applicable only to cases where the
                          defendant had acted dishonestly. In this context, reliance was
                          further placed on the following authorities
                                      (a)      paras 57, 62 and 83 of the judgment of the
                                      Division Bench of the High Court of Calcutta in Shree
                                      Ganesh Besan Mill v. Ganesh Grains Ltd13,
                                      (b)      paras 3, 25, 37, 41 and 43 of the judgment of the
                                      Division Bench of this Court in Intex Technologies
                                      (India) Ltd v. M/s AZ Tech (India)14,
                                      (c)      para 6 of the judgment of the Supreme Court in
                                      Neon Laboratories Ltd v. Medical Technologies Ltd15,
                                      (d)      paras 16, 18 and 19 of the judgment of the
                                      Division Bench of this Court in Shree Nath Heritage
                                      Liquor Pvt Ltd v. M/s Allied Blender & Distillers Pvt
                                      Ltd16,

                 10 120 (2005) DLT 456
                 11 2007(98) DRJ 499 (DB)
                 12 (2004) 3 SCC 90
                 13 AIR 2022 Cal 171
                 14 2017 SCC OnLine Del 7392
                 15 (2016) 2 SCC 672
                  16 (2015) 63 PTC 551
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                                       (e)   paras 3, 23, 26 and 30 of the judgment of the
                                      Division Bench of this Court in Rhizome Distilleries P
                                      Ltd v. Pernod Ricard S.A. France17,
                                      (f)   para 13 of the judgment of the Supreme Court in
                                      Amritdhara Pharmacy v. Satya Deo Gupta18,
                                      (g)   the judgment of the Supreme Court in UOI v. N.
                                      Murugesan19, and
                                      (h)   paras 16, 17, 19, 20, 23 and 25 of the judgment of
                                      the Division Bench of this Court in Sanjha Chulha v.
                                      Sanjha Chulha20.


                          (iv)        Bata had, in its plaint, provided sales figures only from
                          2008.


                          (v)         Para 17 of the plaint had sought to point out that the
                          appellant had applied under Section 23 of the Trade Marks Act
                          for registration of the mark POWER FLEX in Class 25 on
                          "proposed to be used" basis. This submission was misleading,
                          as the application was filed on "proposed to be used" basis in
                          2009, whereas it was published in the Trade Marks Journal on
                          15 May 2017, by which time the POWER FLEX mark had been
                          extensively used by Leayan and had acquired considerable
                          goodwill and reputation.


                          (vi)        In view of the goodwill and reputation that the POWER


                 17 2009 SCC OnLine Del 3346
                 18 AIR 1963 SC 449
                 19 (2022) 2 SCC 25
                  20 (2023) 93 PTC 373
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                          FLEX mark of Leayan had amassed by 2017, the submission of
                         Bata, in its suit, that it had come to learn of the use, by Leayan,
                         of the POWER FLEX mark, only in 2017, could not be
                         believed.


                         (vii) Prosecution history estoppel was also pleaded. Reliance
                         was placed, in this context, on para 4 of the written statement
                         filed by Leayan before the learned Single Judge by way of
                         response to the plaint, which read thus:

                                 "4.   That the plaintiff on 17.10.2012 was also issued
                                 Examination Report alongwith search report by the Trade
                                 Mark Registry in its trademark application no. 2186513 in


                                 class 25 for trademark              . Ld. Registrar in the
                                 said Examination Report cited objection under Section 11
                                 of the Trade Marks Act, 1999 as the search report cited
                                 POWER label registered under no. 1324117 in class 25 in
                                 favour of R.V. Himamudeen and POWERGUN label
                                 registered in favour of RAJ KUMAR JAGGI.

                                 The plaintiff in its reply to the said Examination Report
                                 inter-alia stated:

                                 "An objection has been raised by the Examiner under
                                 Section 11 of the Act that the mark is deceptively similar to
                                 the marks as shown in the search report. The subject mark
                                 is artistically conceptualized and graphically represented
                                 mark of the applicants. When observed carefully it gives a
                                 unique impression, which is visually structurally and
                                 conceptually different, leaving no room for any confusion
                                 among the purchasing public and trade. Besides being
                                 visually different, the subject mark has been extensively
                                 and continuously used by the applicants since the year
                                 1975. Thus, it has already obtained distinctiveness through
                                 extensive usage. The applicant happens to be the bone-fide
                                 adopter of the mark POWER (logo), the applicant is using
                                 the mark POWER FLASH DEVICE WITH POWER (L)
                                 since 1975."

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                                  The applicant wishes to associate the subject application
                                 with prior Registration No. 1072354.

                                 It is well settled in law that while comparison of marks it is
                                 not proper to compare a portion of a mark with a portion of
                                 another mark. Hence the above objections cannot be
                                 sustained under Section 11."



                         (viii) There was no possibility of likelihood of confusion
                         between the marks in view of the difference in the manner in
                         which they were used. For this purpose, our attention was
                         invited to the following photographs of Leayan's footwear
                         bearing the POWER FLEX mark:




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                          (ix)    Moreover,
                                (a)      Leayan used the POWER FLEX mark for leather
                                shoes, whereas Bata used its mark for canvas footwear
                                and
                                (b)      Leayan's shoes sold for over ₹ 8,000/- whereas
                                Bata's POWER footwear was priced in the range of ₹
                                2,000/-.


                         (x)     In these circumstances, the finding, of the learned Single
                         Judge, that the evidence of the use of the mark POWER FLEX
                         by Leayan was sketchy was not justified.


                  23.    For all these reasons, Mr. Bansal submits that the impugned
                  judgment deserves to be quashed and set aside.

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                   Submissions of Mr. Neeraj Grover


                  24.    Responding to Mr. Bansal's submissions, Mr. Neeraj Grover,
                  appearing for Bata, asserts thus:


                         (i)     No invoice, evidencing sale of goods bearing the
                         POWER FLEX mark had been filed by Leayan with its written
                         statement before the learned Single Judge.


                         (ii)    In its counter-statement by way of response to the
                         opposition by Bata to Application 1859213 of Leayan for
                         registration of the POWER FLEX mark in Class 25, the only
                         evidence submitted by Leayan was of user was in the form of
                                 (a)     four illegible advertisements and
                                 (b)     approximately 25 invoices, the earliest of which
                                 was of 2017, none of which referred to POWER FLEX
                                 marked goods.


                         (iii)   There was no data forthcoming on any of the newspaper
                         advertisements cited by Leayan, except some dates written in
                         hand, which, too, did not mention the years in which the
                         advertisements had been purportedly issued.


                         (iv)    In-flight magazine advertisements, on which Leayan had
                         placed reliance, too, did not refer to the POWER FLEX mark,
                         except in very few cases.

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                             (v)        There were no sales figures, or figures of turnover,
                            authenticated by any chartered accountant, produced by
                            Leayan, as would establish long user, by it, of the POWER
                            FLEX mark.


                            (vi)       The learned Single Judge was, therefore, correct in
                            holding that the evidence of user by Leayan of the POWER
                            FLEX mark was sketchy.


                            (vii) As Bata had opposed the application filed by Leayan for
                            registration of the POWER FLEX mark, there could be no
                            question of acquiescence.


                            (viii) The plea of honest and concurrent user was never raised
                            even before the Registrar of Trade Marks21 in Leayan's counter-
                            statement filed by way of response to Bata's opposition.
                            Besides, the plea of honest and concurrent user is a plea which
                            is available under Section 1222 at the stage of application for
                            registration of a trademark, and is not a plea available as a
                            defence to an infringement action.


                            (ix)       The position that emerged was, therefore, that Bata was
                            the prior registered proprietor of the POWER mark with
                            registrations of the mark both as a word mark as well as a


                  21 "ROTM" hereinafter
                  22 12. Registration in the case of honest concurrent use, etc.--          In the case of honest concurrent use or
                  of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit
                  the registration by more than one proprietor of the trade marks which are identical or similar (whether any
                  such trade mark is already registered or not) in respect of the same or similar goods or services, subject to
                  such conditions and limitations, if any, as the Registrar may think fit to impose.
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                          device mark.


                         (x)     In these circumstances, no exception could be taken to
                         the decision of the learned Single Judge to injunct the use, by
                         Leayan, of the POWER FLEX mark.


                  25.    Mr. Grover further advanced the following submissions, in
                  FAO(OS)(COMM) 193/2019, which was essentially directed against
                  the concluding paras 33 to 35 of the impugned judgment:


                         (i)     The learned Single Judge was not justified in allowing
                         Leayan to use the tagline THE POWER OF REAL LEATHER.
                         In this context, our attention was invited to the advertisement,
                         in the Trade Marks Journal of 28 May 2018, of the application
                         filed by Leayan for registration of the said tagline as a
                         trademark, in which the tagline appeared as under:




                         (ii)    The learned Single Judge was also not justified in
                         permitting Leayan to exhaust the stock of POWER FLEX
                         footwear stated to be available with it. No safeguards were put
                         in place to ensure that the stock which was exhausted was the
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                          existing stock. No open ended right to sell existing stock could
                         thus be granted to Leayan. The consequence of such an open
                         ended right was that, till date, Leayan was continuing to sell
                         stocks which were purportedly in existence on the date of
                         passing the impugned judgment by the learned Single Judge
                         and had sold over 1 lakh shoes.


                         (iii)   In these circumstances, it was prayed that Leayan ought
                         to be directed to deposit the proceeds of the sales effected by it
                         in terms of the liberty granted by the learned Single Judge, or at
                         least a considerable part thereof.


                         (iv)    The learned Single Judge was also not justified in
                         deleting CBH from the array of parties. At least one of the
                         invoices, which was on record, had been issued by CBH, for
                         POWER FLEX marked goods. CBH was also, thereby, guilty
                         of infringing Bata's POWER marks. Moreover, no application
                         had been filed under Order I Rule 10 of the CPC, seeking at
                         deletion of CBH from the array of parties.


                  Submissions of Mr. S.K. Bansal in rejoinder


                  26.    Mr. Bansal submits, in rejoinder, that Bata cannot be heard to
                  contend that the advertisements filed by Leayan were illegible,
                  especially, as, in para 19 of the plaint, the only objection taken by
                  Bata to the said advertisements were that their authenticity appeared
                  to be in dispute. No plea regarding the advertisements were being
                  illegible was taken. This plea could not, therefore, be urged in appeal.
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                   27.    Mr. Bansal further pointed out that paras 18 and 20 of the
                  impugned judgment acknowledged the fact that there were
                  advertisements, evidencing use of the POWER FLEX mark by
                  Leayan, of 2011-12. The finding, of the learned Single Judge, that
                  there were only six or seven such advertisements was incorrect. Over
                  100 advertisements, showing sale of POWER FLEX branded goods
                  on pan-India basis, were available on record.


                  28.    Insofar as Mr. Grover's contention that the invoices filed by
                  Leayan did not refer to the mark POWER FLEX was concerned, Mr.
                  Bansal submitted that the invoices referred to Article Numbers, and
                  that invoices in such cases do not mention the brand of the product.


                  29.    Mr. Bansal also contests Mr. Grover's contention that, in the
                  garb of acting under the liberty provided by the learned Single Judge,
                  Leayan had disposed of goods in excess of those which were in stock.
                  He submits that 38,000 pairs of footwears were in stock, and that
                  Leayan was only disposing of approximately 1000 pieces per quarter,
                  so that the disposal was still continuing.


                  30.    Finally, Mr. Bansal submits that the learned Single Judge was
                  entirely justified in allowing use, by Leayan, of the tagline THE
                  POWER OF REAL LEATHER, as the use of POWER as a part of the
                  said tagline could not result in confusion in the minds of the public.




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                   Analysis


                  Re. FAO (OS) (Comm) 105/2019


                  31. Re: Submission that impleadment of CBH as Defendant 1 in the
                  suit was improper and illegal.

                  31.1 Mr. Bansal's first submission was that the very impleadment of
                  CBH as Defendant 1 in the suit was improper and illegal and
                  engineered with a view to ensure that the matter would not be noticed
                  in the cause list.              He places reliance for this submission on the
                  judgment of the Division Bench of this Court in Micolube India Ltd.


                  31.2 Before addressing this submission, we may note that, even if
                  Mr. Bansal's submissions were to be accepted, and the impleadment
                  of CBH as Defendant 1 were to be treated as irregular, that cannot
                  constitute a ground for us to reverse the judgment of the learned
                  Single Judge. In fact, the learned Single Judge has also, in a manner
                  of speaking, agreed with Mr. Bansal's submission and has even issued
                  directions to the Registry to ensure that, in all future cases, the main
                  contesting defendant is Defendant 1.


                  31.3 Mr. Grover submits that CBH cannot be treated as a non-
                  contesting defendant.                  He points out that sale of goods bearing
                  infringing marks is also an act of infringement, as Section 29(2)23

                  23 (2)   A registered trade mark is infringed by a person who, not being a registered proprietor or a person
                  using by way of permitted use, uses in the course of trade, a mark which because of--
                           (a)        its identity with the registered trade mark and the similarity of the goods or services
                           covered by such registered trade mark; or
                           (b)        its similarity to the registered trade mark and the identity or similarity of the goods or
Signature Not Verified     services covered  by such registered trade mark; or
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                   envisages "use" of the deceptively similar mark within the course of
                  trade as infringement, and Section 29(6)(b)24 of the Trade Marks Act
                  includes, in "use", offering of the goods bearing the infringing mark
                  for sale, especially as infringement, within the meaning of Section
                  29(2), involves dealing with goods bearing the infringing mark in the
                  course of trade. As such, Leayan and CBH were equally guilty of
                  infringement, and neither one could be treated as lesser defendant than
                  the other.


                  31.4 We agree with this submission. The law does not distinguish
                  between degrees of defendants. A defendant may be a contesting
                  defendant or a proforma defendant. Among contesting defendants,
                  there cannot be a "main" contesting defendant and a supplementary
                  contesting defendant. For all one knows, in a given case, the "main
                  contesting defendant" may not even choose to contest the case
                  whereas the other contesting defendant(s) may!


                  31.5 CBH was, therefore, as much a contesting defendant as Leayan.
                  We cannot, therefore, agree with Mr. Bansal, or for that matter with
                  the learned Single Judge, in the finding that the impleadment of CBH
                  as Defendant 1 was irregular, much less illegal.



                           (c)         its identity with the registered trade mark and the identity of the goods or services
                           covered by such registered trade mark,
                           is likely to cause confusion on the part of the public, or which is likely to have an association with
                           the registered trade mark.
                  24 (6)   For the purposes of this section, a person uses a registered mark, if, in particular, he--
                                                                      *****
                           (b)       offers or exposes goods for sale, puts them on the market, or stocks them for those
                           purposes under the registered trade mark, or offers or supplies services under the registered trade
                           mark;
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                  31.6 Besides, intellectual property litigant cannot afford to reside in
                 its own pristine heaven, alien to the CPC. Civil litigation in this
                 country has to abide by the provisions of the statute, and the
                 prevailing procedural statute in that regard is the CPC. The CPC does
                 not contain any provision which requires a plaintiff to implead
                 defendants in a particular sequence. All necessary and proper parties
                 have to be impleaded as defendants, and that is all.

                 31.7 Nor are there any provisions to be found in the Delhi High
                 Court (Original Side) Rules, 2018 or in the Intellectual Property
                 Division Rules, 2022, applicable in this Court, specifying the
                 sequence in which the defendants have to be arrayed. Even for this
                 reason, it cannot be said that the appellant's impleadment of CBH as
                 Defendant 1 in the suit was in any way irregular.


                 31.8 A learned Single Judge of this Court has, in Micolube India
                 Ltd v Maggon Auto Centre 25, opined as under:

                           "25. Another factor which goes against the plaintiff is the
                           manner in which the parties have been arrayed. The defendant No.
                           2 is the main defendant who has the registration of the well known
                           mark 'MICO' in respect of automotive parts. However, the
                           plaintiff has chosen to array Maggon Auto Centre as the main
                           defendant when, according to the averments made in paragraph 17
                           of the plaint, it is averred that the defendant No. 1 is only a dealer
                           of the impugned goods of the defendant No. 2 and that the exact
                           relationship between them is not known to the plaintiff and that the
                           defendant No. 2 is called upon to disclose the exact relationship
                           between them. It is unfortunate that the main defendant (Motor
                           Industries Co. Ltd.) has been arrayed as defendant No. 2 and
                           Maggon Auto Centre, who is alleged to be a dealer of the main
                           defendant and whose exact relationship is unknown to the plaintiff
                           is arrayed as defendant No. 1. It is not only in this case, but in
                           several other cases that this Court has noticed this unhealthy trend

                  25 2008 SCC OnLine Del 160, hereinafter referred to as "Micolube-I"
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                             on the part of the plaintiffs to array the main defendant as
                            defendant No. 2 or defendant No. 3 while naming some innocuous
                            dealer or retail outlet as defendant No. 1. The object is easily
                            discernible. When the counsel for the main defendants scan the list
                            of cases, they would not be able to know as to whether any case
                            has been filed against them so as to enable them to appear on the
                            very first date on which the case is listed before court. The very
                            fact that the plaintiff has also indulged in this practice is also an
                            indicator that it did not want the counsel for the defendant No. 2 to
                            appear on the first date on which the matter was taken up for
                            consideration of the grant or non-grant of ad interim injunction.
                            This fact also disentitles the plaintiff to any equitable relief. I am
                            of the view that the plaintiff has concealed and suppressed
                            material facts from this Court."
                                                                             (Emphasis supplied)


                  31.9 In para 16 of the impugned judgment, the learned Single Judge
                  has observed that the Division Bench of this Court has, in Micolube
                  India Ltd v. Maggon Auto Centre26, which was the appeal against
                  Micolube-I, upheld the view of the learned Single Judge as contained
                  in para 28 of the said decision.


                  31.10 We cannot agree. There is no affirmation, in the judgment of
                  the Division Bench in Micolube-II, of the observation of the learned
                  Single Judge, in para 25 of Micolube-I, that merely because a "lesser"
                  defendant had been impleaded as the first defendant in the suit, the
                  plaintiff would be disentitled to interim relief.


                  31.11 The view that the manner in which the defendants have been
                  arrayed as party in the suit can be a ground to disentitle a plaintiff to
                  interim relief is, to our mind, contrary to the basic principles
                  governing Order XXXIX of the CPC. There are only three
                  considerations which govern grant of injunction in Order XXXIX,

                  26
Signature Not Verifiedhereinafter referred to as "Micolube-II"
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                  which are (i) the existence of a prima facie case, (ii) balance of
                 convenience and (iii) the possibility of irreparable loss ensuing to the
                 plaintiff were injunction not to be granted. To these, the decisions in
                 Ramnik Lal Bhutta v. State of Maharashtra27 and Raunaq
                 International Ltd v. I.V.R. Construction Ltd28 added a fourth
                 consideration, which was public interest.


                 31.12 Apart from these, there is no other consideration which governs
                 grant, or refusal, of interim relief, in terms of Order XXXIX of the
                 CPC.


                 31.13 We, therefore, do not agree with the observation, in para 25 of
                 Micolube-I, that the sequence in which the defendants in a suit have
                 been arrayed by the plaintiff can constitute a relevant consideration
                 for grant, or refusal, of interim relief.


                 31.14 Equally, therefore, the impugned judgment, to the extent it
                 adopts the same view, can also not be sustained.


                 31.15 That said, this is not a factor on the basis of which we can either
                 uphold or set aside the impugned judgment of the learned Single
                 Judge.


                 32.      Principles relating to infringement and injunction


                 32.1 Before proceeding to the impugned order, it would be relevant

                 27 (1997) 1 SCC 134
                  28 (1999) 1 SCC 492
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                    to set out the basic principles relating to trademark infringement and
                   remedies available thereagainst, as contained in the Trade Marks Act,
                   in so far as they are relevant to the issues in controversy.

                   32.2 Infringement - Deceptive similarity and likelihood of confusion


                   32.2.1Infringement is entirely defined in Section 29 of the Trade
                   Marks Act. Of its various sub-sections and clauses, the only clause of
                   significance, for our purpose, is Section 29(2)(b)29. The ingredients of
                   tort of infringement as envisaged by Section 29(2)(b) are the
                   following:

                             (i)       Infringement has to be of a registered trademark. As
                             such, no one can allege that his trade mark, which is not
                             registered under Section 23 of the Trade Marks Act, is
                             infringed.


                             (ii)      Infringement has to be by a person who is neither a
                             registered proprietor of the infringing mark or using the
                             infringing mark by way of permitted use. "Permitted use" is
                             defined in Section 2(r)30. A user of a registered trade mark, with

                   29 (2)     A registered trade mark is infringed by a person who, not being a registered proprietor or a person
                     using by way of permitted use, uses in the course of trade, a mark which because of--
                                                                          *****
                             (b) its similarity to the registered trade mark and the identity or similarity of the goods or services
                             covered by such registered trade mark;
                                                                          *****
                  is likely to cause confusion on the part of the public, or which is likely to have an association with the
                  registered trade mark.
                  30 (r)      "permitted use", in relation to a registered trade mark, means the use of trade mark--
                             (i)        by a registered user of the trade mark in relation to goods or services--
                                        (a)         with which he is connected in the course of trade; and
                                        (b)        in respect of which the trade mark remains registered for the time being; and
                                        (c)        for which he is registered as registered user; and
                                        (d)        which complies with any conditions or limitations to which the registration of
Signature Not Verified                  registered  user is subject; or
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                          permission to do so in terms of Section 2(r) is not, therefore, an
                         infringer.


                         (iii)     The infringing mark must be "used in the course of
                         trade". The Trade Marks Act does not specifically define "use
                         in the course of trade". However, Section 29(6) and Section
                         2(2)(b) and (c) are relevant in this regard.


                         (iv)      Section 29(6) states that, for the purposes of Section 29, a
                         person uses a registered mark in any one or more of the four
                         circumstances enumerated in Clauses (a) to (d) thereof. These
                         are if
                                   (a)       the mark is affixed to goods or to their packaging,
                                   (b)       the said goods are, under the mark,
                                             (i)       offered or exposed for sale, or
                                             (ii)      put on the market, or
                                             (iii)     stocked for the purposes of offering or
                                             exposing the goods for sale or putting them on the
                                             market, or
                                             (iv)      imported or exported, or
                                   (c)       the mark is used on business papers or in
                                   advertising.


                         (v)       "Use of a mark", for the purposes of the Trade Marks

                         (ii)     by a person other than the registered proprietor and registered user in relation to goods or
                         services--
                                  (a)       with which he is connected in the course of trade; and
                                  (b)       in respect of which the trade mark remains registered for the time being; and
                                  (c)       by consent of such registered proprietor in a written agreement; and
                                  (d)       which complies with any conditions or limitations to which such user is subject
Signature Not Verified            and to which the registration of the trade mark is subject
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                            Act, is also explained in Section 2(2)(b) and (c)31. Read
                           together, and in relation to goods, Section 2(2)(b) and 2(2)(c)(i)
                           state that reference, in the Trade Marks Act, to the use of a
                           mark shall be construed as a reference to the use of
                                    (a)        printed or other visual representation of the mark
                                    and
                                    (b)        use of the mark upon, or in any physical or in any
                                    other relation whatsoever, to the goods.


                           (vi)      The infringing mark must be similar to the registered
                           trademark.


                           (vii) The goods or services covered by the rival marks must be
                           identical or similar.


                           (viii) Owing to the similarity between the marks, and the
                           identity or similarity of the goods or services covered thereby,
                           there is, on the part of the public, likelihood of
                                     (a)       confusion, or
                                     (b)       an association between the marks.


                  32.2.2Likelihood of confusion



                  31 (2)   In this Act, unless the context otherwise requires, any reference--
                                                                      *****
                                     (b)        to the use of a mark shall be construed as a reference to the use of printed or
                                     other visual representation of the mark;
                                     (c)        to the use of a mark,--
                           (i)       in relation to goods, shall be construed as a reference to the use of the mark upon, or in
                           any physical or in any other relation whatsoever, to such goods;
                           (ii)      in relation to services, shall be construed as a reference to the use of the mark as or as
Signature Not Verified     part of any statement about the availability, provision or performance of such services;
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                  The following passages, from Pernod Ricard India Pvt Ltd v.
                 Karanveer Singh Chhabra32, classically delineate the principles on
                 the basis of which the Court is to examine whether there is likelihood
                 of confusion, in a trade mark infringement analysis:

                          "35. The average consumer test is a central standard in
                          trademark and unfair competition law. It assesses whether there
                          exists a likelihood of confusion between two marks, or whether a
                          mark lacks distinctiveness or is merely descriptive. The test is
                          grounded in the perception of the average consumer - a person who
                          is reasonably well-informed, observant, and circumspect, but not
                          an expert or overly analytical. As held by the European Court of
                          Justice in Lloyd Schuhfabrik Meyer v. Klijsen Handel BV33, the
                          average consumer forms an overall impression of a mark rather
                          than dissecting it into individual components.

                          35.1. A key feature of this test is the recognition that consumers
                          rarely recall trademarks with perfect accuracy. For example, this
                          Court in Amritdhara Pharmacy v. Satyadeo Gupta emphasized
                          that the comparison must be made from the perspective of a person
                          of average intelligence and imperfect recollection. Thus, minor
                          phonetic or visual similarities may cause confusion if the marks
                          share prominent or memorable features. The test also considers
                          that the degree of consumer attentiveness may vary depending on
                          the nature of the goods: greater care may be exercised when
                          purchasing luxury items than in the case of everyday consumer
                          goods.

                          35.2. The test is equally relevant to both inherent and acquired
                          distinctiveness. A mark has inherent distinctiveness if, by its very
                          form and appearance, it identifies trade origin to the average
                          consumer at the time of registration. A mark may acquire
                          distinctiveness if, through consistent and prolonged use, it becomes
                          associated by a significant portion of the relevant public with a
                          particular commercial source - even if the consumer cannot name
                          the source precisely. What matters is not that the consumer knows
                          the producer, but that the mark serves as an indicator of origin.

                          35.3. However, the test has limitations. In cases involving
                          product shapes or designs, where the features serve a technical
                          function or add substantial value, policy considerations may
                          override consumer perception. While the average consumer may

                 32 2025 SCC OnLine SC 1701
                  33 Case C-342/97; [2000] FSR 77, ECJ
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                           identify the essential characteristics of a product's shape or
                          configuration, their opinion is not determinative in assessing
                          registrability, especially where legal prohibitions against functional
                          or aesthetic monopolies come into play.

                          35.4. The doctrine of imperfect recollection, closely linked to the
                          average consumer test, emphasizes the importance of first
                          impression. Courts have cautioned against overly technical or
                          granular comparisons of trademarks [See: James Crossley
                          Eno v. William George Dunn34 and Aristoc Ltd. v. Rysta Ltd35,].
                          Instead, they have favoured realistic assessments that account for
                          hazy memory, indistinct pronunciation, and fleeting visual
                          impressions. Notably, invented or fanciful words are generally
                          more difficult to recall than common or descriptive ones, and
                          distinctive features are more likely to be retained in the consumer's
                          memory.

                          35.5. The foundational test for assessing deceptive similarity
                          remains the Pianotist Test, as laid down in Pianotist Co. Ltd's
                          Application36 by Justice Parker. Indian courts continue to apply
                          this holistic standard, which requires consideration of the visual
                          and phonetic similarity of the marks, the nature of the goods, the
                          class of consumers, and all surrounding circumstances. Justice
                          Parker framed the test as follows:

                                   "You must take the two words. You must judge of them,
                                   both by their look and by their sound. You must consider
                                   the goods to which they are applied, the nature and kind of
                                   customer who would be likely to buy the goods, and all the
                                   surrounding circumstances. You must further consider what
                                   is likely to happen if each of these trademarks is used in a
                                   normal way for the respective goods. If, considering all
                                   these circumstances, you come to the conclusion that there
                                   will be confusion - not necessarily that one trader will be
                                   passed off as another - but that there will be confusion in
                                   the mind of the public leading to confusion in the goods,
                                   then registration must be refused."

                          35.6. This multifactorial framework complements the modern
                          average consumer test, ensuring that the analysis of deceptive
                          similarity remains practical and context-sensitive. It focuses on the
                          overall commercial impression left by the marks, rather than
                          conducting a mechanical or analytical breakdown. Indian courts
                          have consistently adopted this approach in determining the
                          likelihood of confusion in both infringement and passing off

                 34 H.L. (E) 1890, June 19. Vol. XV. App. Cas. Page 252
                 35 1945 AC 68 (HL)
                  36 (1906) 23 RPC 774
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                             actions."


                  32.3 Sequelae to infringement


                  32.3.1Where infringement is found to exist, the consequences
                  envisaged by Section 28 follow.


                  32.3.2Section 28(1)37 confers, on the registrant of every validly
                  registered trademark, two rights.


                  32.3.3The first is the exclusive right to use the mark in relation to the
                  goods or services in respect of which it is registered. In other words,
                  the registrant can oppose or contest the use of the registered
                  trademark, in respect of the goods or services for which the mark is
                  registered by any other person. The exclusive right to use the mark
                  vests, and rests, with its registrant.


                  32.3.4The second right that Section 28(1) confers on the registrant of
                  a validly registered trademark is the right to obtain relief in respect of
                  infringement of the mark "in the manner provided by" the Trade
                  Marks Act. The manner in which relief can be obtained in cases of
                  infringement is provided in sub-section (1) of Section 13538. Sub-
                  section (1) of Section 135 of the Trade Marks Act permits a court to,

                  37 28.     Rights conferred by registration.-
                            (1)        Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
                            give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
                            relation to the goods or services in respect of which the trade mark is registered and to obtain relief
                            in respect of infringement of the trade mark in the manner provided by this Act.
                  38 135.    Relief in suits for infringement or for passing off.-
                             (1)       The relief which a court may grant in any suit for infringement or for passing off referred
                             to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at
                             the option of the plaintiff, either damages or an account of profits, together with or without any
Signature Not Verified       order for the delivery-up of the infringing labels and marks for destruction or erasure.
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                   in cases of infringement, grant relief by way of injunction as well as
                  by way of damages and delivery up.


                  32.4 Sections 29 and 28 are, therefore, the provisions which deal
                  with infringement and the rights available to the proprietor of a
                  registered trademark which is infringed.


                  32.5 Sections 17 and 30


                  32.5.1The right to claim exclusivity in respect of a registered
                  trademark, as envisaged in Section 28(1) of the Trade Marks Act is,
                  however, subject to Section 1739, which applies to marks which
                  consist of more than one part, and which, therefore, may be referred to
                  as "composite" trademarks. Section 17(1) clarifies that the registration
                  of a composite trademark would confer, on the registrant, the right to
                  claim exclusivity over the whole registered trademark. Section 17(2)
                  makes the position clearer. Clauses (a) and (b) of Section 17(2), read
                  together, proscribe any claim of exclusivity in respect of a part of a
                  registered composite trademark, where
                           (i)      the part is not separately registered as a trademark,
                           (ii)     no application has been filed to register the said part as a

                  39 17.   Effect of registration of parts of a mark.--
                           (1)       When a trade mark consists of several matters, its registration shall confer on the
                           proprietor exclusive right to the use of the trade mark taken as a whole.
                           (2)       Notwithstanding anything contained in sub-section (1), when a trade mark--
                                     (a)         contains any part--
                                                (i)        which is not the subject of a separate application by the proprietor for
                                                registration as a trade mark; or
                                                (ii)       which is not separately registered by the proprietor as a trade mark;
                                      or
                                     (b)        contains any matter which is common to the trade or is otherwise of a non-
                                     distinctive character,
                           the registration thereof shall not confer any exclusive right in the matter forming only a part of the
                           whole of the trade mark so registered.
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                                     separate trademark,
                           (iii)    the mark is common to the trade or
                           (iv)     the mark is non-distinctive in character.


                  32.5.2The various sub sections of Section 30 encapsulate exceptions
                  to Section 29. In other words, even if the act of the defendant satisfies
                  the ingredients of infringement as defined in one or more of the sub-
                  sections of Section 29, the act would nonetheless not amount to
                  infringement if it falls within one or more of the sub-sections of
                  Section 30.


                  32.5.3Of these, the only clause which is relevant for our purposes is
                  Section 30(2)(a)40, which excludes, from the ambit of "infringement",
                  use of a trademark to indicate
                           (i)      the kind,
                           (ii)     the quality,
                           (iii)    the quantity,
                           (iv)     the intended purpose,
                           (v)      the value,
                           (vi)     the geographical origin,
                           (vii) the time of production, or
                           (viii) other characteristics,
                  of goods. A mark which indicates the characteristics of the goods in
                  respect of which it is used is, therefore, not infringing by virtue of
                  Section 30(2)(a) even if it otherwise satisfies the ingredients of one or

                  40 (2)   A registered trade mark is not infringed where--
                           (a)       the use in relation to goods or services indicates the kind, quality, quantity, intended
                           purpose, value, geographical origin, the time of production of goods or of rendering of services or
                           other characteristics of goods or services;
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                   more of the sub-sections of Section 29.


                  32.6 Exceptions to the right to obtain injunction


                  32.6.1Sections 28(3) and 33 to 36 envision circumstances in which no
                  injunction can be obtained against an infringing mark. In other words,
                  even if a defendant's marks is infringing within the meaning of
                  Section 29 and none of the exceptions to infringement as envisaged in
                  Section 30 applies, the plaintiff would still not be entitled to
                  injunction if the case falls within Section 28(3) or Sections 33 to 36.


                  32.6.2Of these provisions, we need to refer only to Sections 33(1)41
                  and 35.


                  32.6.3Acquiescence - Section 33


                  32.6.3.1           Section 33(1) deals with acquiescence. It disentitles the
                  proprietor of a registered trademark from opposing the use of a later
                  trademark, if he has acquiesced for a continuous period of five years
                  in the use of such later trademark, being aware of the said use.


                  32.6.3.2           Section 33(1) is confusingly worded. It starts with the
                  words, "Where the proprietor of an earlier trade mark has acquiesced

                  41 33.   Effect of acquiescence.--
                            (1)        Where the proprietor of an earlier trade mark has acquiesced for a continuous period of
                            five years in the use of a registered trade mark, being aware of that use, he shall no longer be
                            entitled on the basis of that earlier trade mark--
                                      (a)        to apply for a declaration that the registration of the later trade mark is invalid,
                                      or
                                      (b)        to oppose the use of the later trade mark in relation to the goods or services in
                                      relation to which it has been so used,
                           unless the registration of the later trade mark was not applied in good faith.
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                   for a continuous period of five years in the use of a registered trade
                  mark ..." The consequence, where acquiescence within the meaning
                  of Section 33(1) is found to exist, is that the proprietor of the earlier
                  trade mark cannot "oppose the use of the later trade mark in relation
                  to the goods or services in relation to which it has been so used".


                  32.6.3.3           This creates logistical difficulties in understanding the
                  provision. Under the Trade Marks Act, opposition, to the use of a
                  trade mark, can only be by way of an injunction under Section 135(1),
                  on the ground of infringement. Else, one would have to apply to
                  removal of the mark from the register of trade marks, under Section
                  47(1)42 (on the ground of non-use) or Section 57(1) or (2)43.

                  42 47.    Removal from register and imposition of limitations on ground of non-use.--
                           (1)        A registered trade mark may be taken off the register in respect of the goods or services
                            in respect of which it is registered on application made in the prescribed manner to the Registrar or
                            the [High Court] by any person aggrieved on the ground either--
                                      (a)         that the trade mark was registered without any bona fide intention on the part
                                      of the applicant for registration that it should be used in relation to those goods or
                                      services by him or, in a case to which the provisions of Section 46 apply, by the company
                                      concerned or the registered user, as the case may be, and that there has, in fact, been no
                                      bona fide use of the trade mark in relation to those goods or services by any proprietor
                                      thereof for the time being up to a date three months before the date of the application; or
                                      (b)         that up to a date three months before the date of the application, a continuous
                                      period of five years from the date on which the trade mark is actually entered in the
                                      register or longer had elapsed during which the trade mark was registered and during
                                      which there was no bona fide use thereof in relation to those goods or services by any
                                      proprietor thereof for the time being:
                                      Provided that except where the applicant has been permitted under Section 12 to register
                           an identical or nearly resembling trade mark in respect of the goods or services in question, or
                           where the [Registrar or the High Court, as the case may be,] is of opinion that he might properly be
                           permitted so to register such a trade mark, the [Registrar or the High Court, as the case may be,]
                           may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is
                           shown that there has been, before the relevant date or during the relevant period, as the case may
                           be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to--
                                      (i)       goods or services of the same description; or
                                      (ii)      goods or services associated with those goods or services of that description
                                      being goods or services, as the case may be, in respect of which the trade mark is
                                      registered.
                  43 57.    Power to cancel or vary registration and to rectify the register.--
                           (1)        On application made in the prescribed manner to the [High Court] or to the Registrar by
                           any person aggrieved, the [Registrar or the High Court, as the case may be,] may make such
                           order as it may think fit for cancelling or varying the registration of a trade mark on the ground of
                           any contravention, or failure to observe a condition entered on the register in relation thereto.
                           (2)        Any person aggrieved by the absence or omission from the register of any entry, or by
                           any entry made in the register without sufficient cause, or by any entry wrongly remaining on the
                           register, or by any error or defect in any entry in the register, may apply in the prescribed manner to
Signature Not Verified     the [High Court] or to the Registrar, and the [Registrar or the High Court, as the case may be,]
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                   32.6.3.4         A registered trade mark cannot, however, be infringing,
                  as we have already noted. There cannot, therefore, be any opposition
                  to use of a registered trade mark (except on the ground of passing
                  off).   When, then, would the bar to injunction on the ground of
                  acquiescence, under Section 33, apply, as it applies only where the
                  plaintiff has acquiesced to the use, by the defendant, of a registered
                  trade mark?


                  32.6.3.5         Or are the words "registered trade mark" as employed in
                  Section 33 to be understood as the registered trade mark of the
                  plaintiff? Besides the fact that such a construction does not strictly
                  flow from Section 33, that would give rise to a further question -
                  Would Section 33 not apply where the defendant is using a
                  deceptively similar trade mark? If, therefore, a plaintiff acquiesces to
                  the use, by the defendant, of a trade mark which is deceptively similar
                  to the registered trade mark of the plaintiff for a continuous period of
                  five years, would, or would not, Section 33 apply?


                  32.6.3.6         These are all issues on which the statute is not clear, and
                  upon which the Court may, in an appropriate case, have to deliberate.
                  In the present case, as we would find hereinafter, no acquiescence can
                  legitimately be pleaded by Leayan, so that we need not enter further
                  into that thicket.


                  32.7 Section 35 - Descriptive marks cannot be injuncted


                          may make such order for making, expunging or varying the entry as it may think fit.
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                   32.7.1Section 35 proscribes an injunction against the use of a
                  defendant's trademark, if the said trademark is a bona fide use of
                         (i)     the name of the defendant,
                         (ii)    the place of business of the defendant,
                         (iii)   the name of the place of business of the defendant,
                         (iv)    the name of the predecessor in business of the defendant
                         or
                         (v)     a description of the character or quality of the goods or
                         services in respect of which it is used.


                  32.8 The sustainability of the impugned judgment has to be assessed
                  on the basis of the above principles. We proceed, therefore, to apply
                  these principles to the facts before us.


                  33.    The aspects of registration and infringement


                  33.1 It is not in dispute that, among others, Bata is the registered

                  proprietor of the word mark POWER and the device mark                   , in
                  Class 25, for "footwear included in Class 25" with effect from 7
                  March 1975. Class 25 is titled "clothing, footwear, headwear". The
                  Explanatory Note to Class 25, as contained in the Nice Classification
                  applicable for registration of trade marks, states that Class 25
                  "includes mainly clothing, footwear and headwear for human beings".
                  All footwear, therefore, falls in Class 25. The goods in respect of
                  which Bata's POWER word and device marks stand registered, and
                  the leather footwear for which Leayan uses the POWER FLEX mark,
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                   therefore, are both in Class 25.


                  33.2 Thus, Bata was the registered proprietor of the word mark of
                  POWER as a word as well as device mark, in Class 25 for footwear
                  with effect from as far as back as 7 March 1975. Leayan, on the other
                  hand, has no registration for any mark, including POWER FLEX, in
                  any class.


                  33.3 Thus, Leayan, cannot claim any right to use the mark POWER
                  FLEX either as its registered user or permissive user within the
                  meaning of Section 29(2)(b) of the Trade Marks Act.


                  33.4 The plea of difference in goods


                  33.4.1Leayan sought to contend that, as the POWER FLEX mark is
                  used for leather footwear and Bata's POWER mark is used for canvas
                  footwear, the goods are not similar, and there is no likelihood of
                  confusion between the marks.


                  33.4.2This plea was rightly rejected by the learned Single Judge on
                  two grounds.


                  33.4.3Firstly, Section 29(2)(b) does not require the rival marks to be
                  used in respect of identical goods. They may be used for identical, or
                  similar, goods. The word "similar" as used in Section 29(2)(b)
                  includes goods which are allied or cognate. In fact, with the
                  advancement and expansion of trade and commerce, the scope of the
                  expression "similar" as used in Section 29(2)(b) has expanded
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                   manifold. We are in an age in which, under one umbrella brand, goods
                  which are completely diverse and unconnected with each other may
                  be manufactured or sold under the same mark. In such a scenario,
                  canvas footwear and leather footwear have necessarily to be regarded
                  as "similar" goods, for the purposes of Section 29(2)(b).


                  33.4.4This conclusion would also stand fortified by the fact that both
                  kinds of footwear fall within Class 25.


                  33.4.5The learned Single Judge has also correctly held that, while
                  examining the aspect of similarity and likelihood of confusion, the
                  Court must take into account the possibility of scope for expansion of
                  the plaintiff's commercial enterprise. Simply put, Bata may today be
                  using the mark POWER for canvas footwear, but there is every
                  possibility of Bata expanding the range of footwear manufactured and
                  sold by it under the POWER brand to include leather footwear or any
                  other kind of footwear.


                  33.4.6This may be easily understood when one applies, to the present
                  case, the perception of the consumer of average intelligence and
                  imperfect recollection, who is the mythical personality from whose
                  point of view the aspect of likelihood of confusion between the marks
                  has to be assessed. There is every likelihood of such an average
                  consumer, who is aware of the POWER brand of Bata used for canvas
                  footwear, on coming across the POWER FLEX brand for leather
                  footwear, presuming that Bata might have expanded its reach to
                  include leather footwear. This likelihood of confusion stands
                  exaggerated by the similarities between the marks POWER and
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                   POWER FLEX. The mark POWER FLEX subsumes, in its entirety,
                  the POWER brand of Bata. An average consumer who is unaware of
                  the realities of the situation has every likelihood of believing that
                  POWER FLEX is a sub-brand of POWER, especially as both the
                  marks are used for footwear.


                  33.4.7In this context, it is also necessary to note that Section 29(2)(b)
                  does not inexorably require likelihood of confusion in the mind of the
                  public, for infringement to be found to exist. Even the likelihood of an
                  association between the marks would suffice. Applying this principle,
                  there is every likelihood of a consumer who comes across, who is
                  aware of Bata's POWER brand, used for canvas footwear, and later
                  comes across Leayan's POWER FLEX brand used for leather
                  footwear, believing an association between the marks. The consumer,
                  it must be remembered, is a man of imperfect recollection.


                  33.4.8The fact that Bata's POWER mark is used for canvas footwear
                  and Leayan's POWER FLEX mark for leather footwear, therefore, is
                  not of any substantial significance.


                  33.5 Two other principles, which apply while examining the aspect
                  of likelihood of confusion, and which further support the finding of
                  the learned Single Judge in that regard, required to be mentioned.


                  33.6 Marks not to be placed side by side

                  The first is that the aspect of infringement is not required to be

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                 examined by placing the rival marks side by side.44 The average
                consumer must have come across Bata's POWER brand at one point
                of time and, later, come across Leayan's POWER FLEX brand. The
                Court, while assessing whether infringement has taken place, has to
                examine the likelihood of confusion or association, in the mind of
                such a consumer, when he chances across Leayan's POWER FLEX
                brand after having known of Bata's POWER mark or come across
                Bata's POWER mark at an earlier point of time.


                33.7 Initial interest confusion


                33.7.1The second aspect is that the likelihood of confusion or
                association has to be examined from an "initial interest" point of
                view.45 What is pivotal, therefore, is the initial impression that
                Leayan's POWER FLEX mark creates in the mind of the average
                consumer who has earlier come across, or who is aware of, Bata's
                POWER mark. If, at first glance, initial impression that is created in
                the mind of such a consumer is that he has seen the mark earlier, or
                that the two marks may be associated in some way, that by itself
                suffices to make out a case of infringement.


                33.7.2In Shree Nath Heritage Liquor, the Division Bench of this
                Court, speaking through Pradeep Nandrajog, J. has pithily referred to
                the state of mind of such a consumer as one of "wonderment". If, on
                coming across Leayan's POWER FLEX mark, the consumer of
                average intelligence and imperfect recollection is placed in a state of

                44 Refer Pernod Ricard India Pvt Ltd v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701
                45 Refer Pernod Ricard, Shree Nath Heritage Liquor, Under Armour Inc. v. Anish Agrawal, 2025 SCC

                  OnLine Del 3784 (DB)
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                   wonderment as to whether he has seen the said mark earlier, or
                  whether the mark which he has seen earlier is in any way associated
                  with the POWER FLEX mark, that constitutes infringement, with
                  nothing else required to be shown.


                  33.8 Applying these principles, we find ourselves entirely in
                  agreement with the learned Single Judge in her finding that there was
                  deceptive similarity between the POWER FLEX mark of Leayan and
                  POWER mark of Bata. As both the marks were used for goods which
                  were similar, there is also likelihood of confusion. The ingredients of
                  Section 29(2)(b) thereby, stands fully satisfied. A prima facie case of
                  infringement is, therefore, made out.


                  34. Defences as raised by Leayan - The "distinctive-descriptive"
                  see-saw

                  34.1 As we have already noticed, the inquisitorial exercise, in a trade
                  mark infringement action, does not end with the finding that the
                  plaintiff's mark is registered, and that the defendant's mark is
                  infringing. The Court has additionally to consider whether the case
                  falls within one of the exceptions to infringement, or to grant of
                  injunction.


                  34.2 Mr. Bansal has invoked two of these exceptions. He contends
                  that
                         (i)     Bata's POWER mark is not distinctive, and
                         (xi)    Leayan's POWER FLEX mark is descriptive in nature.
                  Mr. Bansal, thereby, invokes both Section 17(2)(b) and Section 35 of
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                   the Trade Marks Act.


                  34.3 We address these submissions individually, as they are
                  fundamentally different. Both are defences. However, Section
                  17(2)(b) is a defence which attacks the plaintiff's mark as lacking in
                  distinctiveness, whereas Section 35 is cited as a defence against
                  injunction of the defendant's mark, even if it were assumed to be
                  infringing. Section 17(2)(b), therefore, applies to the plaintiff's mark,
                  whereas Section 35 applies to the defendant's.


                  34.4 Re. plea that the POWER mark lacks distinctiveness - Section
                  17(2)(b)

                  34.4.1Though Section 17(2)(b) does not permit any claim of
                  exclusivity over a mark which is not distinctive, it does not contain
                  any guideline as to how to decide whether a particular mark is, or is
                  not, distinctive. The Trade Marks Act is, however, thankfully not
                  silent in this regard, as the answer to this query is to be found in
                  Section 9(1)(a)46 of the Trade Maks Act. Section 9 contains the
                  absolute grounds on which registration of a trademark may be refused.
                  Clause (a) of Section 9(1) does not allow registration of trademarks
                  which are devoid of any distinctive character. The expression "devoid
                  of any distinctive character" is explained, in the same clause, as "not
                  capable of distinguishing the goods or services of one person from
                  those of another person". There is no reason as to why this
                  46 9.   Absolute grounds for refusal of registration.--
                          (1)        The trade marks--
                                     (a)       which are devoid of any distinctive character, that is to say, not capable of
                                     distinguishing the goods or services of one person from those of another person;
                                                                     *****
                          shall not be registered:
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                   explanation for the expression "devoid of any distinctive character"
                  should not be applied to understand the expression "non-distinctive
                  character" in Section 17(2)(b).


                  34.4.2Thus, by virtue of Section 17(2)(b), no exclusivity can be
                  claimed over a mark which is not capable of distinguishing the goods
                  of one person from those of another. The aspect of distinctiveness, or
                  the absence of it, has, therefore, to be assessed not merely by
                  referring to the mark in vacuo, but in the context of the goods or
                  services for which it is used. A common dictionary word, which may
                  be part of daily usage, may become distinctive when used for goods or
                  services with which it has no immediate connection.


                  34.4.3We, in this context, are in entire agreement with the learned
                  Single Judge's observation that the word "POWER" does not evoke a
                  connect, in the mind, between the mark and footwear, as it may, for
                  example, evoke, if it were to be used in the context of boxing gloves.
                  While the mark POWER may, therefore, arguendo, not be distinctive
                  when used for an item such a boxing gloves or, for that matter, an
                  electric plug, it is distinctive when used for footwear.


                  34.4.4Leayan's contention that the mark POWER was lacking in
                  distinctiveness cannot, therefore, be accepted.


                  34.5 Re. plea that POWER FLEX is a descriptive mark, and cannot
                  be injuncted - Section 35



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                   34.5.1In the impugned judgment, the learned Single Judge has also
                  gone on to distinguish between descriptive marks and suggestive
                  marks. Marks which are descriptive are not capable of being
                  registered, in view of Section 9(1)(b)47 and cannot be injuncted
                  because of Section 35; however, marks which, though not descriptive,
                  are merely suggestive, may be registered, and can be injuncted. The
                  position in law, in this regard, stands settled by the judgment of the
                  Supreme Court in T.V. Venugopal v. Ushodaya Enterprises48.


                  34.5.2The learned Single Judge has referred to various tests that have
                  been evolved from time to time to decide whether a mark is
                  distinctive or suggestive. In the facts of the present case, we do not
                  deem any detailed discussion on that aspect to be necessary as, in our
                  view, the word POWER FLEX is not even suggestive of footwear.
                  The mark POWER FLEX does not bring, to mind, footwear. It cannot,
                  therefore, be regarded as "(descriptive) of the character or quality" of
                  the leather footwear of Leayan, within the meaning of Section 35.


                  34.6 Even if it were to be assumed that Leayan's POWER FLEX
                  footwear was flexible in nature, which is one of Mr. Bansal's
                  contentions, that would, at the highest, render the mark POWER
                  FLEX suggestive of the characteristics of the leather footwear used by
                  Leayan, and not descriptive thereof. The applicable test, to determine

                  47 9.     Absolute grounds for refusal of registration.--
                            (1)         The trade marks--
                                                                       *****
                                       (b)       which consist exclusively of marks or indications which may serve in trade to
                                       designate the kind, quality, quantity, intended purpose, values, geographical origin or the
                                       time of production of the goods or rendering of the service or other characteristics of the
                                       goods or service;
                                                                       *****
                            shall not be registered:
                  48 (2011) 4 SCC 85
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                   whether a mark is descriptive, or suggestive, of the goods in respect of
                  which it is used, or neither, is, to our mind, the extent to which the
                  imagination must be strained to draw a connect between the mark and
                  the goods. If the connect is immediate, the mark is descriptive; if, by
                  straining the imagination, a connection can be found, the mark may be
                  suggestive; if, however, there is no connect at all - such as, for
                  example, the mark TODAY for perfumes - the mark is neither.
                  Illuminatingly, Pernod Ricard refers to marks such as Air India,
                  Mother Dairy, HMT, Windows, Doordarshan, LIC and SBI as being
                  descriptive.


                  34.7 As the mark POWER FLEX is not descriptive of the
                  characteristics of the leather footwear for which it was used by
                  Leayan, Leayan cannot claim the protection of Section 35.


                  34.8 Thus, as
                         (i)     Bata's POWER mark cannot be said to be lacking in
                         distinctiveness and
                         (ii)    Leayan's POWER FLEX mark is not entitled to the
                         protection of Section 35,
                  there is no statutory impediment against the grant of injunction in
                  favour of Bata and against Leayan for use of the mark POWER FLEX
                  in respect of footwear.


                  35.    Re. plea of delay and acquiescence


                  35.1 One of Mr. Bansal's principal arguments was predicated on the
                  principles of delay and acquiescence. He submitted that Leayan has
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                   been using the POWER FLEX since 2010-11, i.e. for eight years
                  before the suit was instituted by Bata. During this period, Leayan
                  garnered considerable goodwill and reputation in the mark POWER
                  FLEX. Having thus permitted Leayan to acquire goodwill and
                  reputation in the mark POWER FLEX over an extended period of
                  time, despite knowing the fact that Leayan was using the said mark,
                  Bata was proscribed from seeking to injunct the mark at a belated
                  stage, on the principles of delay and acquiescence.


                  35.2 There are multifarious reasons why this submission cannot be
                  accepted, both of facts as well as of law.


                  35.3 No evidence of goodwill or reputation of POWER FLEX mark
                  of Leayan


                  35.3.1The first is that, as the learned Single Judge has correctly held,
                  the evidence of the mark POWER FLEX or Leayan having garnered
                  goodwill and reputation was sketchy. Mr. Bansal has taken serious
                  exception to the use of this expression by the learned Single Judge.
                  We, however, are in entire agreement with the learned Single Judge in
                  this regard.


                  35.3.2Mr. Bansal essentially sought to predicate his plea of goodwill
                  and reputation on
                         (i)     newspaper advertisements
                         (ii)    invoices,
                         (iii)   TV advertisements and
                         (iv)    the presence of over 135 stores of Leayan, pan-India.
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                   35.3.3As the learned Single Judge has correctly held, we are
                  concerned, here, not with Leayan's goodwill and reputation, but with
                  the goodwill and reputation of Leayan's mark POWER FLEX.


                  35.3.4When one examines the material on which Mr. Bansal has
                  placed reliance, in this context, the following picture emerges:

                         (i)     Out of 97 newspaper advertisements, on which Mr.
                         Bansal placed reliance, only 10 newspaper advertisements have
                         dates printed on them and all of them have the same date, which
                         is 13 October 2013. No date of printing of any of the other
                         newspaper advertisements is visible. As such, it is unknown as
                         to when the said newspaper advertisements were issued.


                         (ii)    Though Leayan has placed on record 81 invoices, the
                         mark POWERFLEX does not figure on even one of them. Mr.
                         Bansal sought to contend that it was a matter of trade practice
                         that invoices referred only to Article Numbers of the goods in
                         respect of which they were issued. No material, to support this
                         submission, is forthcoming. Nor is there any material on record
                         to connect the Article Numbers mentioned in the invoices with
                         the POWER FLEX brand of the Leayan. As such, the invoices
                         on which Mr. Bansal has placed reliance are of no value at all.

                         (iii)   None of the TV advertisements, cited by Mr. Bansal, has
                         any reference to the mark POWER FLEX.


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                  35.3.5We, therefore, are of the view that, if anything, the learned
                 Single Judge has been charitable in her use of the word "sketchy"
                 with reference to the evidence placed by Leayan on record to
                 demonstrate goodwill and reputation of the mark POWER FLEX.
                 The material is, to our mind, as good as nil.


                 35.3.6Though in the context of passing off actions, the Supreme Court
                 has, in Brihan Karan Sugar Syndicate (P) Ltd v. Yashwantrao
                 Mohite Krushna Sahakari Sakhar Karkhana49 has held that "the
                 volume of sale and extent of advertisement made ... of the product in
                 question will be a relevant consideration for deciding whether the
                 appellant had acquired a reputation or goodwill". In the present case,
                 Leayan has not placed, on record, its sales figures or the promotional
                 expenses incurred by it in respect of sales of footwear bearing the
                 POWER FLEX mark, as would suffice to demonstrate acquisition of
                 goodwill and reputation.


                 35.3.7Thus, on facts, there is nothing to substantiate Mr. Bansal's
                 contention that the mark POWER FLEX, of Leayan had amassed
                 goodwill or reputation. Even on facts, therefore, the principle of
                 acquiescence, as advanced by Mr. Bansal, is without substance.


                 35.4 Plea not statutorily available as POWER FLEX mark is not
                 registered

                 35.4.1Besides, even statutorily, this plea is not available to the
                 petitioner. As we have already noted, the effect of acquiescence is

                  49 (2024) 2 SCC 577
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                   statutorily covered by Section 33 of the Trade Marks Act.
                  Acquiescence is a defence only for the proprietor of a registered trade
                  mark. A plaintiff, who has acquiesced to the use by a defendant, of its
                  registered trademark for a continuous period of five years or more
                  cannot, thereafter, seek to oppose use of the said mark by the
                  defendant for the said goods or services.


                  35.4.2Inasmuch as the Trade Marks Act itself restricts the availability
                  of the plea of acquiescence as a defence against injunction, only to the
                  proprietor of a registered trade mark, we are of the opinion that a mark
                  such as Leayan's POWER FLEX, mark not being a registered trade
                  mark, cannot seek the protection of Section 33.


                  35.5 No acquiescence in fact


                  Yet another reason why the plea of acquiescence is not available to
                  Leayan is the filing of the opposition by Bata, to Leayan's application
                  for registration of the POWER FLEX mark. Objection and
                  acquiescence cannot go hand in hand. One who objects, cannot be
                  said to acquiesce. The opposition, filed by Bata to Leayan's
                  application for registration of the POWER FLEX mark, amounts to an
                  objection to the use of the POWER FLEX mark by Leayan. Bata
                  having objected to the use of the POWER FLEX mark by Leayan, the
                  plea of acquiescence has necessarily to fail.


                  35.6 Delay and acquiescence no ground in view of Midas Hygiene
                  Industries

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                   35.6.1Besides, the plea that Bata cannot be granted injunction on the
                  ground of delay and acquiescence also stands defeated by the
                  judgment of the Supreme Court in Midas Hygiene Industries. Paras 5
                  and 6 of Midas Hygiene Industries read thus:

                         "5.     The law on the subject is well settled. In cases of
                         infringement either of trade mark or of copyright, normally an
                         injunction must follow. Mere delay in bringing action is not
                         sufficient to defeat grant of injunction in such cases. The grant of
                         injunction also becomes necessary if it prima facie appears that the
                         adoption of the mark was itself dishonest.

                         6.      In this case it is an admitted position that the respondents
                         used to work with the appellants. The advertisements which had
                         been issued by the appellants in the year 1991 show that at least
                         from that year they were using the mark laxman rekha on their
                         products. Not only that but the appellants have had a copyright in
                         the marks krazy lines and laxman rekha with effect from 19-11-
                         1991. The copyright had been renewed on 23-4-1999. A glance at
                         the cartons used by both the parties shows that in 1992 when the
                         respondent first started he used the mark laxman rekha on cartons
                         containing colours red, white and blue. No explanation could be
                         given as to why that carton had to be changed to look almost
                         identical to that of the appellant at a subsequent stage. This prima
                         facie indicates the dishonest intention to pass off his goods as those
                         of the appellants."
                                                                          (Emphasis supplied)


                  35.6.2Mr. Bansal has sought to submit that the enunciation of the law,
                  in Midas Hygiene Industries, that wherever infringement is found to
                  exist, injunction must follow, and that delay cannot stand in the way
                  of grant of injunction, must be read as limited to cases of dishonesty.
                  He seeks to submit that a conjoint reading of paras 5 and 6 of Midas
                  Hygiene would lead to this conclusion.


                  35.6.3We do not agree. To our mind, the opening sentences in para 5
                  of Midas Hygiene Industries postulate an absolute proposition, which
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                   is that where infringement is found to exist, injunction must follow,
                  and delay in bringing the action before the Court is not a defence
                  against such injunction. The Supreme Court has only gone on to
                  clarify that where dishonesty is found to exist, the principle applies
                  with additional force. The judgment cannot, in any manner of
                  speaking, be read as limiting the applicability of the principle only to
                  cases of dishonesty.


                  35.6.4The exposition of law in para 5 of Midas Hygiene Industries is,
                  therefore, a complete answer to the proposition that a period of eight
                  years, which had elapsed between the commencement of user, by
                  Leayan, of the POWER FLEX mark, and the institution of the suit by
                  Bata, would operate as a bar to grant of injunction as sought by Bata
                  against Leayan. As the case is one prima facie of infringement, and no
                  statutory exception to grant of injunction applies, the decision in
                  Midas Hygiene Industries eminently justifies the grant, by the
                  learned Single Judge, of injunction in favour of Bata and against
                  Leayan.


                  35.7 Mr. Bansal's submission that Bata is not entitled to injunctive
                  relief against Leayan on the ground of delay and acquiescence too,
                  therefore, fails.


                  The Sequitur


                  36.    The appellant has, therefore, failed to make out any case for us
                  to interfere with the impugned judgment of the learned Single Judge.

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                   Re. FAO (OS) (Comm) 193/2019


                  37.    We now advert to Bata's appeal. Mr. Grover has objected to
                         (i)     the refusal, by the learned Single Judge, to injunct the
                         use, by Leayan, of the tag line THE POWER OF REAL
                         LEATHER,
                         (ii)    the deletion of CBH from the array of defendants, and
                         (iii)   the permission granted, to Leayan, to exhaust the existing
                         stock subject to filing a monthly disposal statement.


                  38.    On these aspects, our views are as under:

                         (i)     We find no reason to interfere with the decision, of the
                         learned Single Judge, not to grant any injunction against the
                         use, by Leayan, of the tag line THE POWER OF REAL
                         LEATHER. It is clear, from the tag line as it is used by Leayan,
                         that there is no emphasis on the word POWER. That being so,
                         an average consumer would read, and recollect, the tagline as a
                         whole, as emphasizing the leather content of the footwear. He is
                         unlikely, merely because of the use of POWER as a part
                         thereof, to link the tagline to Bata's POWER range of products.
                         There is, therefore, neither any chance of confusion, or of
                         association, between the tagline THE POWER OF REAL
                         LEATHER and the mark POWER of Bata.


                         (ii)    We agree, however, that CBH could not have been
                         deleted from the array of defendants. Even without a trial, or
                         any application under Order I Rule 10 of the CPC, the learned
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                            Single Judge, to our mind, ought not to have come to a final
                           conclusion that CBH was not a necessary or proper party. The
                           decision to delete CBH is, therefore, liable to be set aside.


                           (iii)   The decision to allow Leayan to exhaust existing stock,
                           subject to furnishing a statement with the Court, was well
                           within the discretion vested in the learned Single Judge, and
                           does not result in any lasting prejudice to Bata. We see no
                           liberty, therefore, to interfere with this direction either.


                  39.      Mr. Grover contends, however, that, in the garb of acting under
                  the said liberty, Leayan has been clearing and selling goods which are
                  far in excess of the stock available with it. He, therefore, prays that
                  Leayan be directed, at the very least, to deposit the sale proceeds with
                  this Court.


                  40.      We are not inclined to examine either of these pleas, as they
                  would appropriately have to be urged by Bata by filing separate
                  applications before the learned Single Judge, in accordance with law.
                  We reserve liberty with Bata to do so.


                  Conclusion


                  41.      Resultantly, both appeals are dismissed, except to the extent of
                  the direction to delete CBH from the array of defendants, which is set
                  aside.



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                   42.    There shall be no orders as to costs.



                                                                           C. HARI SHANKAR, J.

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