INTRODUCTION
The present case was an appeal by Leayan Global Pvt. Ltd. against the 2019 orders of the single bench of the Delhi High Court, which stated that the use of ‘Power Flex’ on their footwear constituted a trademark infringement of Bata India Limited’s registered trademark ‘Power’.
BACKGROUND
The issue arose when Bata filed a suit against Leayan Global Pvt. Ltd and its retailers, for trademark infringement. According to the respondents, i.e., Bata, it had been using the mark ‘power’ since the 1970s, and the use of ‘power flex’ by the appellants would confuse the customers and would add to the search cost, which is against the objective of the trademark laws. However, Leayan Global Pvt. Ltd argued that “Power” was a common dictionary word and thus, a monopoly of the word could not be granted to any entity. It also argued that the word ‘Power Flex’ was used in conjunction with their master brand “Red Chief”.
KEY POINTS
Highlighted the legislative intent of the Act.
The legislative intent of the Trademark Act is to eliminate any confusion in the minds of consumers. The court rightly held that an average consumer, aware of Bata’s ‘Power’ brand, would likely perceive ‘Power Flex’ as a sub-brand of Bata’s product line in leather footwear. Thus, the court ordered an injunction on the use of the mark ‘Power Flex.’
Rejection of the common word defense.
The Bench did not accept the contention put forth by Leayan Global in respect of ‘Power’ being a generic mark. The Bench stated that given Leayan Global’s application for the mark ‘Power Flex’, they were estopped from making this contention, since they admitted it to be a distinctive mark. The court also highlighted the similarity of the products, i.e., footwear being sold, which would further add to the confusion among consumers.
Legal Use of Tag Line.
Although this order was affirmed when it came to not using the brand name, nevertheless, in this case, the court permitted “The Power Of Real Leather” to be used by Leayan Global. The rationale behind this is that this phrase in totality highlights matter over brand.
RECENT DEVELOPMENTS
The Division Bench of the Delhi High Court, comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, dismissed the appeal filed by Leayan Global Private Limited. It aligned with the order of the Single Judge of the Delhi High Court and stated Leayan Global had no statutory right to use the mark, which is already registered by another company selling the same goods, i.e., footwear.
Additionally, the court also dismissed the cross appeal filed by Bata for the use of the tag line by the appellants, stating the line to suggest the quality of leather rather than the brand.
CONCLUSION
Thus, the Delhi High Court has once again sent a strong message on the protection of well-known trademarks. It effectively brought out the distinction between the trademark infringing use and descriptive use in a sentence, hence maintaining the exclusive rights of Bata over the ‘Power’ mark while balancing with the right of the defendant to describe its goods.
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WRITTEN BY: Sharanya M
