The court upheld the exclusive rights of a registered trademark owner against a similar mark that causes consumer confusion.

1. The Court : - The plaintiff is a manufacturer of shoes.

2. The defendant has a division under the name and style "Max" which deals with fashionable clothing accessories and footwear in India.

3. This is an interim application filed by the plaintiff / petitioner in aid of the above suit complaining of infringement of the trade mark "PRO".

4. The facts stated in the petition are summarized below.

5. The plaintiff has been manufacturing, about three hundred varieties of shoes using the trade mark "PRO". The plaintiff claims to have been using the word mark "PRO" from 10th June, 1997. This word mark was registered on 16th of June, 2005 with effect from 10th June, 1997. The plaintiff is also the owner of a label mark comprising of this word mark "PRO" with a stylized design over it from 13th October, 2009. This label mark was registered on 16th March, 2011. The plaintiff is also the owner of copyright of this mark by virtue of registration on 19th July, 2011.

6. It, however, may be noted that beneath the word "PRO" are written the words "splitting style".

7. It is stated that in August, 2014, the petitioner for the first time became aware that the respondent was selling footwear by using the trade mark "PRO" being the exclusive property of the petitioner. Subsequently, the petitioner has been able to ascertain that the respondent was, in fact, marketing footwear incorporating the whole trade mark "PRO" of and belonging the petitioner with a suffix "ACTIVE". The petitioner issued a cease and desist notice. The defendant responded to it by filing a suit alleging groundless threat. The interim application filed by the defendant was disposed of by recording that the order of injunction would no way prevent the plaintiff herein to initiate any legal proceedings as against the present defendants in accordance with law.

8. Mr. Pratap Chatterjee, the learned Senior Counsel appearing on behalf of the petitioner submits that the word "PRO" is prominently displayed on the tongue of the footwear of the defendant with florescent mark thereby highlighting the word "PRO" which is a clear case of infringement of the word mark "PRO". The learned senior Counsel has referred to S.28, S.29 and S.31 of The Trade Marks Act, 1999 (hereinafter referred to as the "said Act") and submits that being the registered proprietor of the word mark "PRO", the plaintiff has the exclusive right to use the mark. It is submitted that a registered trade mark is infringed by a person if he uses the said mark without authority and in a manner which is likely to cause confusion on the part of the public. The absolute similarity or identity of the two marks are not required. The respondent is using the word mark "PRO" in a highlighted manner with the suffix "ACTIVE" just above the throat line on the tongue of its footwear prominently visible with no other distinctiveness which tantamounts to use of the mark under S.29(6) of the Trade mark Act, 1999. It is submitted that if the distinctive element of a registered trade mark consist of or includes word the trade mark, is infringed by spoken use of those words as well as by their visual representation. It is submitted that the products are identical and the manner in which the said word mark "PRO" is used by the defendant it is likely to cause confusion. In any event, the defendant has not offered any explanation for using the word "PRO" which the plaintiff is using since 1997. The petitioner over the years have spent considerable amount for publicity of the trade mark "PRO" and the said mark has acquired considerable reputation and goodwill