Back
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
R.I. CHAGLA, J.
Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee - Appellant
Versus
Regal Footwear - Respondent
Notice Of Motion No.516 of 2017, 1841 of 2018 In Com IPR Suit No.630 of 2017 And Com Miscellaneous Petition (L) No.11130 of 2022
Decided on : 02-01-2023
Trade Marks Act, 1999 - Section 21(1), 34, 2(2) (c), 12(3), 30(2) (c) (i), 12, 30(2) (e) - Bombay Shops and Establishment Act, 1948 - Comparable strength – Offence of no equities basis - Whether disclosure of date of knowledge was December, 2006 or February, 2008 – Held, Court of prima facie view that Plaintiffs have made out a case for infringement as well as of passing off - Plaintiffs case of passing off is made out particularly considering that rival marks are identical and used for identical goods/services - Further, case for infringement is made out in view of prima facie findings that Plaintiffs have been able to establish user including goodwill and reputation and Defendant being a junior user, as well as other prima facie findings of Defendant failing to establish honest concurrent use as well as its case of acquiescence not having been made out - Court further find that balance of convenience is also in favour of Plaintiffs considering “comparable strength” principle laid down by Supreme Court in Healthcare Ltd. (Supra) which can be determined at interlocutory stage in trade mark matters - There will be irreparable injury caused to Plaintiffs in event interim reliefs are not granted which far outweighs prejudice caused to Defendant who had only one shop prior to filing Suit and thereafter has opened two shops on “no equities basis” as per ad-interim orders passed by this Court in present Notice of Motion – Ordered Accordingly.
JUDGMENT :
R.I. Chagla, J.
1. By this Notice of Motion, the Plaintiffs have sought relief against the Defendant restraining the Defendant from infringing and passing off the Plaintiff’s registered trade mark “REGAL” by using impugned trade mark “REGAL”/“REGAL FOOTWEAR” upon and in relation to identical goods/services/footwear retail.
2. The Plaintiffs are the registered proprietor of the mark “REGAL” under the Trade Marks Act, 1999 having Registration No.284961 in Class 25 for footwear and Class 42 under Registration No.1278782 for “retailing of footwear, articles made of leather or imitation of leather, travelling bags, belts, socks, shoe polish, shoe brush, accessories of aforesaid goods, running shops/stores for sale of aforesaid goods”.
3. A brief background of facts is necessary.
4. It is the Plaintiffs case that since 1954 they and their predecessor i.e. partners/proprietors of M/s. Regal Footwear have been carrying out business as manufacture, distributor, trader and exporter of footwear. The business is under the name and mark REGAL/REGAL FOOTWEAR/REGAL SHOES. The Plaintiffs and their permitted users which are M/s. Regal Shoes and Regal Shoes (India) Pvt. Ltd. have retail outlets in Maharashtra, Gujarat, Punjab, Rajasthan, Tamil Nadu, Chandigarh, Hyderabad, Chennai and have been exporting footwear to United States of America, Italy, West Indies, Kenya, Sudan, Canada, UAE, Singapore, Uganda, Switzerland, Fiji Islands and other countries. The Plaintiffs have claimed that they have a total sale of Rs.4,25,54,18,433 from 1954 to 2017 and have expended amount of Rs.7,88,83,111/- towards the advertisement expenses. The Plaintiffs had relied upon documents showing number of sales, invoices sales bills and income tax assessment orders which are at Exhibit B1 to B48/Pages 30 to 188 of the Plaint. The advertisements and sales promotional materials are at Exhibit C1 to C18/Pages 189 to 206 of the Plaint.
5. The Plaintiffs have relied upon various advertisements which are from 30th August, 1955 to 31st December, 1978 showing the Plaintiffs’ trading name and mark “REGAL”.
6. On 5th April, 1961 one Habib Dharmashi Shivani (H.D. Shivani) sole proprietor of Defendant entered into leave and license agreement with one Mr. Shamshuddin Ismail in respect of Defendant’s Regal footwear located at 26, M.G. Road, Pune. The leave and license agreement is on record at Exhibit 1 of Written Statement.
7. The Defendant claims to have adopted the trade mark name/trade mark “Regal Footwear”/“Regal” on 21st April, 1963 and have been continuously using the same. The Defendant’s store is located at 26, M.G. Road, Pune since 1963. The Defendant has claimed that the current business/store of Defendant was established initially as a sole proprietorship concern in the year 1963 under the trade mark name Regal/Regal Footwear by H.D. Shivani.
8. On 25th July, 1963, the Defendant claims to have obtained license under the Bombay Shops and Establishment Act, 1948 and the same was subsequently renewed until 2016.
9. The Plaintiffs’ predecessor made an application on 27th December, 1972 for registration of trade mark “REGAL” in respect of the footwear included in Class 25 and secured Registration No.284961 with user claim from 1954. This is at Exhibit E-1 and Exhibit E-2 of the Plaint.
10. The Defendant has claimed to have paid property tax to Pune Cantonment Board in respect to the premises occupied by the Defendant Regal Footwear on 26, M.G. Road, Pune from 1973 to 1984.
11. The Defendant has claimed that Mr. Ismail, brother-in-law of Karim Virjee, founding partner of Plaintiffs’ firm, purchased a property being Shop No.39 in Wonderland Society on 14th September, 1984. It is claimed that the said shop was 300 mtrs. from the Defendant’s store and the Plaintiffs conducted their business from 1984 to 1990.
12. The Defendant has relied upon photographs which they claim to have taken in 1988 with Defendant’s partners and their relatives inside Defendant’s Regal Footwear store at
The appellant's prior use of the trade mark 'Shriphal' and the effect of non-renewal of trade mark registration were central to the court's decision.
The central legal point established in the judgment is the significance of prior use and the principles of honest adoption, delay, and acquiescence in trademark disputes.
Ex-parte ad-interim injunction vacated for suppression of material facts in trademark infringement suit; plaintiff must disclose fully prior ownership, adverse orders, relationships with clean hands;....
Establishing trademark infringement requires valid registration, identity or similarity to the registered mark, and use in relation to identical services, with consumer confusion warranting protectio....
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
The court confirmed that mere similarity in trademarks does not constitute infringement; factors like market presence and distinct branding are critical.
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
