Section 34 of the Trademarks Act does not disentitle the plaintiff to an injunction against the defendant if the user of the infringing mark by the defendant is not prior in point of time both to the registration as well as the user of the mark by the plaintiff.

JUDGMENT (Oral)

I.A.17325/2022 (under Order XXXIX Rules 1 & 2 of the CPC)

1. The plaintiff Foot Locker Retail, Inc. is a company incorporated in the United States in 1974. The plaintiff claims to be involved in manufacture and sale of footwear, under the "FOOT LOCKER" brand and since 1974 internationally. The plaintiff holds registrations of the brand "FOOT LOCKER" in over 100 international jurisdictions. In India, the device [IMG] was registered in favour of the plaintiff in Class 35, which deals with "shoes, footwear and athletic clothing", with effect from 31st October 1988. The plaintiff also has an online presence through the websites www.footlocker.com and www.kidsfootlocker.com, both created in 1995.

2. The plaintiff has, in the plaint, referred to various awards and encomiums which it has earned over a period of time and contends that it has, by now, become a world famous brand.

3. Though the plaint asserts that the plaintiff was commercially using "FOOT LOCKER" as a brand in India, at least since 2015, the invoices placed on record with the plaint indicate such user since 2018.

4. On 22nd January 2021, the plaintiff applied with the Registry of Trademarks for registration of the word mark "FOOT LOCKER" in Class 35, which covers "retail stores services featuring clothing, footwear and headgear, online retail store services, featuring clothing, footwear and headgear". The registration, as applied, was granted by the Registry to the plaintiff on 24th September 2021.

5. Thereafter, in January 2022, the defendant filed an application before the Registrar of Trademarks under Section 57 of the Trademarks Act, 1999, seeking rectification of the register and removal, therefrom, of the registration granted to the plaintiff of the "FOOT LOCKER" word mark in Class 35. The defendant in the said application, did not disclose any earlier registration for the mark "FOOT LOCKER", whether in word or in device form, granted to it. The application was predicated on a plea of prior user. The defendant claimed user of the "FOOT LOCKER" mark since 2001.

6. The plaint avers that, on the said rectification being filed and on notice thereof being received by the plaintiff, inquiries were made, which revealed that the defendant had, in fact, obtained a registration for the [IMG] mark in Class 25 on 4th February 2013. Ms. Salhotra, learned Counsel for the plaintiff emphasised the fact that, in the rectification application filed by it in March 2022, this earlier registration held by the defendant was not disclosed.

7. The plaintiff came to learn, on further enquiry, that the defendant was also engaged in sale of footwear using the [IMG] mark from a shop in Jaipur. The plaintiff, thereupon, addressed notices to the defendant, calling upon the defendant to cease and desist from using the [IMG] mark as the plaintiff already held valid and subsisting registrations for the said "FOOT LOCKER" mark both in Classes 25 and 35. On the notices failing to elicit any favourable response, the plaintiff has instituted the present suit before this Court, seeking an injunction against the defendant from using the "FOOT LOCKERS" mark whether in word or in device form, apart from ancilliary reliefs of delivery or rendition of accounts, costs and damages.

8. Written statement has been filed by way of response to the suit.

9. The plaintiff has also filed I.A.17325/2022, with the plaint, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking grant of interim relief. I have heard Ms. Anuradha Salhotra, learned Counsel for the plaintiff and Mr. Dhruv Tailor, learned Counsel for the defendant, at length on this application and proceed, by this judgement, to dispose of it.

10. Ms. Salhotra submits that this is a clear case of infringement. The [IMG] mark of the defendant is clearly imitative of, and deceptively similar to, the registered [IMG] mark the plaintiff. The addition of a terminal `S' would make no difference.

11. Ms Salhot