Delhi High Court Upholds Injunction Restraining Use of 'POWER FLEX' Trademark in Suit by Bata India Ltd: FAO(OS)(COMM)-105/2019

The High Court of Delhi has reaffirmed the strength of registered trademark protection, upholding a significant injunction against Leayan Global Pvt Ltd in a dispute involving the footwear brand 'POWER'. In a consolidated appeal, the bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla dismissed challenges to a Single Judge’s order that had previously limited Leayan’s use of the contested taglines and marks.

The Conflict: A Collision of 'POWER' and 'POWER FLEX'

The legal battle originated from a suit filed by shoe giant Bata India Ltd, which has held registrations for the mark 'POWER' in Class 25 (footwear) for decades. Bata alleged that Leayan infringed upon this trademark by employing the mark 'POWER FLEX' for their own range of footwear.

Bata, whose 'POWER' brand is a global sports asset, argued that the use of 'POWER' as the dominant component in Leayan's mark was a deliberate attempt to ride on the back of their massive, long-established reputation. Conversely, Leayan contended that their mark 'POWER FLEX' was used exclusively in conjunction with their own brand, 'RED CHIEF', and argued that 'POWER' was a common, laudatory, and dictionary word incapable of being monopolized.

Legal Reasoning: Beyond the Dictionary

The Court’s analysis delved deep into the nuances of trademark law. Eschewing a granular dissection of the words, the Division Bench applied the 'average consumer' test. The judges noted that the consumer of average intelligence and imperfect recollection is the benchmark. Even if Bata uses 'POWER' for canvas sporting goods and Leayan uses 'POWER FLEX' for leather shoes, the Court ruled these goods to be "allied and cognate."

In a critical finding, the Court observed: > "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."

Key Observations

The High Court’s ruling provides essential guidance for trademark litigation:

• On Deceptive Similarity and Association: "The likelihood of confusion or association between the marks... must be examined from an 'initial interest' point of view. 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."
• On the Misuse of Procedural Rules: The Court clarified that while Bata was criticized for arraying a retailer (Chawla Boot House) as the first defendant, such a naming order is neither a ground for denying interim relief nor inherently illegal under the Code of Civil Procedure (CPC).
• On Statutory Defences: The judgment clarified that delay and acquiescence—a common defence in IP matters—were not applicable here, as there was no evidence Leayan had acquired independent repute that would bar the registered owner from protecting its mark.

The Verdict and Its Impact

Ultimately, the High Court sustained the injunction on Leayan, prohibiting them from using the mark 'POWER FLEX' or any other mark where 'POWER' constitutes a dominant part. However, it allowed for the disposal of existing stocks, subject to strict reporting and audit conditions.

By rejecting the argument that 'POWER' is merely descriptive or laudatory, the Delhi High Court has fortified the position of established brand owners. The ruling serves as a stark reminder that even in an expansive market, the "subsumption" of a famous brand mark into a new, similar product line will likely cross the threshold of infringement, regardless of ancillary brand names or minor adjustments to the trademark.