Metro Brands Ltd. Vs. Nice Shoes LLP & ORS.

This case involves a trademark dispute between Metro Brands Ltd. (“Plaintiff”) and Nice Shoes LLP & Ors. (“Defendants”) before the Bombay High Court (“BHC”). Plaintiff, the owner of the renowned “MOCHI” brand, alleged that the Defendants’ use of the term “DESIMOCHI” infringed upon their trademark rights and amounted to passing off. The Plaintiff sought injunctions to restrain the Defendants from using the “DESIMOCHI” mark or any similar variation, along with a transfer of the associated domain name.

Issues

1. Whether the Defendants’ use of the mark “DESIMOCHI” constitutes an infringement of the Plaintiff’s registered trademarks under Section 29 of the Trade Marks Act, 1999?
2. Whether the Defendants’ use of the mark “DESIMOCHI” amount to passing off their goods as those of the Plaintiff?

Rules

The BHC applied the following legal rules:

1. Trademark Infringement (Section 29 of the Trade Marks Act, 1999): Infringement occurs if a registered mark is used without authorization in a manner identical or deceptively similar to the registered mark, causing confusion or association with the proprietor’s goods or services.
2. Passing Off: The Plaintiff must prove (i) goodwill in the mark, (ii) misrepresentation by the Defendant, and (iii) likelihood of damage.
3. Generic Marks: Marks that are common to the trade or descriptive may lack protection unless they have acquired distinctiveness through secondary meaning.

Analysis

Arguments Advanced

The Plaintiff argued that they had been using the “MOCHI” trademark since 1977, which had gained substantial goodwill and recognition. The mark was registered in various classes, including for footwear and accessories, and had become synonymous with the Plaintiff’s brand. The Plaintiff submitted that the Defendants’ use of the mark “DESIMOCHI,” which incorporates “MOCHI” in its entirety, was deceptively similar, creating a likelihood of confusion among consumers. Relying on Ruston & Hornsby, the Plaintiff contended that the addition of “DESI” was inconsequential, as it merely means “Indian” and did not alter the overall impression of the mark.

The Defendants argued that “MOCHI” is a generic term commonly used in India to refer to cobblers or shoemakers and lacked distinctiveness. They further contended that their mark “DESIMOCHI” was distinctive due to the addition of the prefix “DESI,” indicating a local brand. The Defendants also relied on the findings of the WIPO Arbitration and Mediation Centre, which denied the Plaintiff’s complaint regarding the domain name “desimochi.com” because the Plaintiff failed to establish bad faith registration or use.

Ruling

The BHC found the Plaintiff’s submissions persuasive. It observed that Plaintiff had established extensive goodwill and distinctiveness in the “MOCHI” mark through decades of use, marketing, and promotion. The addition of “DESI” to “MOCHI” did not sufficiently differentiate the marks, as “DESIMOCHI” still conveyed an association with the Plaintiff’s brand. They relied on Renaissance Hotel Holdings and Ruston & Hornsby, wherein it was held that minor variations or additions could not mitigate the likelihood of confusion.

The BHC also rejected the Defendants’ arguments regarding genericness, noting that the Plaintiff had secured multiple registrations for the “MOCHI” mark, which created a presumption of distinctiveness under Indian law. The BHC emphasized that the Defendants themselves had sought registration for the “DESIMOCHI” mark, which stopped them from claiming that “MOCHI” was generic or non-distinctive. Furthermore, the delay in initiating the suit was deemed irrelevant, as held in Midas Hygiene Industries, given the prima facie case of infringement and passing off.

Conclusion

The BHC ruled in favour of the Plaintiff, granting interim injunctions restraining the Defendants from using the “DESIMOCHI” mark or domain name and ordering the transfer of the domain to the Plaintiff. The BHC declared “MOCHI” as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, acknowledging its long-standing use and widespread recognition. The Plaintiff successfully established the likelihood of confusion, and the balance of convenience tilted in their favour, as non-grant of relief would cause irreparable harm to their brand.