Mr. Shravan Kumar Bansal, Mr. Rishi Bansal, Mr. Ajay Amitabh Suman, Mr. Pankaj Kumar v. BATA INDIA LTD

Judgment

1. CS (Comm) 110/20191, instituted by Bata India Ltd2 against Leayan Global Pvt Ltd3, is presently pending before a learned Single Judge on the Intellectual Property Division of this Court.

2. Bata has alleged, in the suit, that Leayan, by use of the mark POWER FLEX, for footwear, has infringed the mark POWER, which is the registered trademark of Bata in respect of footwear. Bata has, therefore, in the suit, prayed for a decree of permanent injunction, restraining Leayan from using any mark of which POWER constitutes a dominant part in respect of footwear or other allied goods.

3. Bata also filed, in the suit, IA 3051/2019 seeking interlocutory injunction against Leayan, pending disposal of the suit from using the mark POWER FLEX or any other mark which may be identical or deceptively similar to the Bata(cid:146)s mark POWER.

4. On 27 February 2019, the learned Single Judge passed an ex parte ad interim order, restraining Leayan from using the mark POWER in respect of footwear either on its own or in combination 1 (cid:147)the suit(cid:148) hereinafter 2 (cid:147)Bata(cid:148) hereinafter 3 (cid:147)Leayan(cid:148) hereinafter Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 with any other word till the next date of hearing.

5. Bata had further prayed that Leayan be also restrained from using the expression POWER OF REAL LEATHER. However, the learned Single Judge deferred the decision on this request completion of pleadings on the application, merely stating that, in the said tagline, no undue emphasis would be placed on the word (cid:147)POWER(cid:148). Leayan was also granted liberty to move the Court for disposal of existing stocks.

6. Leayan moved IA 4472/2019 for being permitted to sell the existing stocks of the allegedly infringing goods. A stock statement was stated to have been filed with the documents filed by Leayan, which indicated 38415 pairs of footwear lying in stock. The learned Single Judge granted the prayer for disposal of the stock in the following terms on 27 March 2019 : (cid:147)5. The Defendants were given liberty to move an application for disposal of any existing stock. Since this was stock which was already manufactured by the Defendants, prior to the grant of injunction on 27th February, 2019, the Defendant is permitted to dispose of the stock as mentioned in the statements subject to the following conditions: The Defendants are directed to file monthly (i) statement of disposal of the said stock; Defendants shall file an affidavit in respect of the (ii) value of the said stock which is disposed of; No fresh manufacturing is permitted with the (iii) impugned marks.

6. The permission to dispose of the stock is subject to further orders in the interim injunction application which is listed for hearing on 3rd April 2019.(cid:148) Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019

7. Leayan also filed IA 3686/2019 under Order XXXIX Rule 4 of the Code of Civil Procedure, 19084 for vacation of the ex parte ad interim order dated 27 February 2019 passed by the learned Single Judge.

8. The learned Single Judge, by order dated 16 April 2019, disposed of IA 3051/2019 filed by Bata under Order XXXIX Rules 1 and 2 of the CPC and IA 3686/2019 filed by Leayan under Order XXXIX Rule 4 of the CPC with the following directions : (cid:147)a) Defendant No.2 is restrained from using the mark/word ‘POWER‟ in respect of footwear, clothing and accessories and other related products including the mark ‘POWER FLEX‟ or any other mark containing the word ‘POWER‟ or a combination thereof; The use of b) the tagline (cid:145)THE POWER OF REAL LEATHER‟ as part of an advertising slogan or a tagline is permitted, however, no undue prominence shall be given to the word ‘POWER‟; c) The existing stock of products as mentioned in para 32 above is permitted to be sold by filing a monthly statement of disposal, including the value of the stock so sold, subject to the final adjudication in the suit.(cid:148)

9. The aforesaid order dated 16 April 2019, of the learned Single Judge, has been challenged before us in the present appeals both by Leayan and by Bata. Leayan has challenged direction (a) in the impugned order whereas Bata has challenged directions (b) and (c).

10. We have heard Mr. S.K. Bansal, learned counsel for the Leayan and Mr. Neeraj Grover, learned counsel for the Bata, at length. Signature Not Verified 4 (cid:147)CPC(cid:148) hereinafter Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 Proceedings before the learned Single Judge Rival contentions of Leayan and Bata before the learned Single Judge Contentions of Leayan

11. Before the learned Single Judge, Leayan submitted as under: (i) In its reply to the First Examination Report issued by the Trade Marks Registry, in response to Bata(cid:146)s application for registration of its various POWER derivative marks, Bata had claimed that the mark POWER and similar marks such as POWERGUN and POWER LABEL were visually, structurally and conceptually different from each other. Bata could not, therefore, be heard to plead that the mark POWER FLEX of Leayan was deceptively similar to the mark POWER of Bata. (ii) POWER was a laudatory expression and could not be monopolized. (iii) The word POWER was a common dictionary word, over which exclusivity could not be claimed. (iv) Various applications had been filed before the Trade Marks Registry for registration of trade marks of which POWER was a part in respect of footwear. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (v) Leayan had commenced use of the mark POWER FLEX

in 2010-2011. Mr. Virat Kohli was its brand ambassador. The suit which was instituted only in 2019 was, therefore, grossly belated. (vi) POWER FLEX was never used by Leayan in isolation as a trade mark but was always used in conjunction with the mark RED CHIEF. (vii) There was, therefore, no chance of confusion between the marks. (viii) Leayan used the mark POWER FLEX for leather footwear whereas Bata used the mark POWER for sporting footwear. This, again, obviated the possibility of any confusion between the marks. (ix) Leayan had used the mark POWER FLEX in an honest and concurrent fashion since 2011. Such open and extensive use itself operated as a bar to grant of interim relief restraining use of the mark. (x) Given the extent of user of the mark POWER FLEX by Leayan and the extent to which the mark was advertised, using celebrities amongst others, Bata could not have been unaware of the said mark. Signature Not Verified (xi) The advertisements depicting the mark POWER FLEX Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 were also published in leading newspapers such as (cid:147)Amar Ujala(cid:148).

12. Without prejudice to these submissions, Leayan undertook, before the learned Single Judge to use the mark POWER FLEX only for leather footwear and only in conjunction with the mark RED CHIEF, in a composite fashion, without any special prominence to the word POWER. Contentions of Bata

13. Responding to Leayan(cid:146)s submissions, Bata contended before the learned Single Judge as under: (i) The mark POWER, both as a word mark and as a device mark, was registered in favour of Bata, not only for sports footwear but also for leather goods. (ii) Bata had enormous goodwill in the mark POWER. The sale proceeds of goods using the mark POWER by Bata for the year 2018, were to the tune of approximately ₹ 480 Crores, which was 20% of the total sales of Bata. (iii) Leayan had contended, falsely, that it was not using the mark POWER FLEX independently and it was only using the mark in conjunction with the mark RED CHIEF. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (iv) The suit could not be said to be belated. The cause of action for instituting the suit arose only when Leayan filed evidence of use of the mark POWER FLEX in the opposition proceedings before the Trade Marks Registry. Prior thereto, Bata had no knowledge of Leayan(cid:146)s use of the mark POWER FLEX. (v) Having itself applied for registration of the mark POWER FLEX, Leayan was estopped from contending that the mark POWER was descriptive or laudatory or was disentitled to exclusivity being a common dictionary word. (vi) The advertisements cited by Leayan were for the RED CHIEF brand. (vii) No separate sales turnover figures from sale of goods bearing the mark POWER FLEX effected by Leayan were provided.

14. Premised on these contentions, Bata pressed its prayer for grant of interlocutory relief. Findings of the learned Single Judge

15. The learned Single Judge commences her observations and findings with a note of disapproval at Bata having impleaded Chawla Boot House5, who was a retailer of Leayan as the first defendant, and Leayan itself as the second defendant. The learned Single Judge has Signature Not Verified 5 (cid:147)CBH(cid:148) hereinafter Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 gone on to issue directions to the Registry and seek undertakings from all plaintiffs in Intellectual Property Rights matters that the main contesting defendant in the suit has to be arrayed as the first defendant.

16. Though Mr. Grover, learned counsel the Bata took exception to this note of disapproval, Bata can really have no grievance against the practice directions to the Registry issued by the learned Single Judge. We, however, have our reservations as to whether, in the absence of any mandate, in the CPC or in any other statute, plenary or subordinate, requiring the (cid:147)main contesting defendant(cid:148) to be arrayed as Defendant 1, such a direction could be issued by the learned Single Judge. Besides, as Mr. Grover, points out, the manufacturer of the infringing goods and the seller of the infringing goods are equally infringers within the meaning of Section 29 of the Trade Marks Act, 1999, as both use the infringing mark in the course of trade. It might be doubtful, therefore, whether merely on the basis of the size of the enterprise, one of them can be treated as the main defendant and the other as the subsidiary defendant. More on this hereinafter.

17. In so far as the merits of the matter are concerned, the learned Single Judge has observed and held as under: (i) Bata was the registered proprietor of several registrations for the word mark POWER as well as for POWER derivative marks. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (ii) The earliest registration of 1971, was for the mark POWER with the arrow logo . (iii) As a standalone mark, POWER was registered in Bata(cid:146)s favour, both as a word mark and a device mark since 1975. (iv) The earliest invoice furnished by Bata evidencing use of the mark POWER, for footwear, dated back to 29 September

1988. (v) Bata had also produced considerable evidence of goodwill having been amassed by its mark POWER. Advertisements, dating back to 1980s, were on record, showing use of the mark POWER in association with the Indian Cricket Team. An exclusive window, with the POWER branded footwear, also depicted that cricketers such as Kapil Dev and Sachin Tendulkar, had used POWER on their cricket bats. The POWER mark had also been positioned as the international sports brand of Bata. There were various stores which exclusively retailed POWER branded footwear, the first of which was launched in March 2018. (vi) Leayan(cid:146)s contention that it was not using the mark POWER FLEX in isolation, but was always using it conjunction with the mark RED CHIEF, was incorrect. The mark POWER FLEX was used, in isolation, on the inside of the Signature Not Verified footwear manufactured by Leayan. Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (vii) The advertisement dated 2 February 2011, featuring Virat Kohli, on which Leayan relied, indicted that it was for RED CHIEF branded products and not for products bearing the mark POWER FLEX. (viii) Bata had at least 40 years(cid:146) priority of user of the mark POWER over the use the mark POWER FLEX by Leayan. (ix) The evidence of use of the mark POWER FLEX by Leayan was sketchy. No independent sales turnover had been provided for goods bearing the mark POWER FLEX. There were only six or seven advertisements, in the (cid:147)Amar Ujala(cid:148) periodical, and no other evidence of any major publicity of the mark POWER FLEX. (x) In accordance with the law declared by the Division Bench of this Court in Pankaj Goel v. Dabur India Ltd6, it could, therefore, be stated that Bata had acquiesced to the use of the mark POWER FLEX by Leayan and had thereby allowed Leayan to build up a reputation. (xi) The plea of Leayan that there was no likelihood of confusion as the mark POWER FLEX was used by it for leather footwear, whereas the mark POWER was used by Bata for sports goods, was without merit. Signature Not Verified 6 (2008) 38 PTC 49 (DB) Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (xii) There was always reasonable scope of Bata expanding the use of the mark POWER to include leather footwear. Courts were required to bear in mind such reasonable scope of expansion, as held by the Supreme Court in Laxmikant V. Patel v. Chetan Bhai Shah7. (xiii) Moreover, sports goods and goods in leather footwear were goods which were allied and cognate. It was a matter of common knowledge that companies used to manufacture both kinds of goods under one brand. (xiv) It could not be reasonably believed that, while adopting the mark POWER FLEX, Leayan was unaware of the POWER brand of the Bata. (xv) Having applied for registration of the mark POWER FLEX, Leayan was estopped from contending that the mark POWER was laudatory, a dictionary word or otherwise not entitled to any claim for exclusivity. (xvi) Even on merits, it could not be said that the mark POWER was descriptive of the footwear manufactured by Bata. At the highest, it was only suggestive. In this context, reliance was placed on Trademarks and Unfair Competition by Thomas Mc Carthy, which opined that the aspect of whether a mark was descriptive or suggestive, could be decided by examining (a) the degree of imagination required to connect the Signature Not Verified 7 (2002) 3 SCC 65 Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 mark with the product, and (b) the competitors(cid:146) need to use the mark. The word POWER did not immediately direct the mind to shoes or footwear. It required a leap of mind to connect the word POWER with footwear. The dictionary meaning of the word POWER was essentially related to ability, control or authority, dominance, etc. As such, POWER could, at best, be treated as a suggestive mark for footwear. Thereby, it was rendered inherently distinctive. (xvii) Even if one were to apply instead of the aforenoted two tests suggested in Mc Carthy, the intuitive perception test devised in Union Carbide Corp. v. Ever-Ready, Inc.8, the word POWER, when used for footwear, was distinctive and not descriptive.

18. Based on these findings, the learned Single Judge arrived at the conclusion that the mark POWER was exclusively associated with Bata(cid:146)s brand of footwear and that use of the mark POWER, either in isolation or in combination with other words, footwear, accessories, clothing etc. violated the statutory or common law rights of Bata in the said mark.

19. On the basis of this conclusion, the learned Single Judge went on to issue direction (a) in the impugned order, reproduced in para 8 supra. Signature Not Verified 8 531 F. 2d. 366 Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019

20. The issuance of directions (b) and (c) was sought to be justified on the following findings: the Court is also conscious of the fact (cid:147)33. However, Defendant No. 2’s use in the last 4-5 years, has not been as restricted as the Plaintiff made it out to be in the plaint. The documents which have been filed by Defendant No. 2 do show that Defendant No. 2 has had at least some years of use even though not very prominent, prior to the filing of the present suit. The Plaintiff’s stand that Defendant No. 2’s usage came to its knowledge only through the in the opposition proceedings, seems a bit farfetched when seen in the context of the documents placed on record by Defendant No. 2. While holding interim injunction, is entitled to grant of Defendant No. 2 is permitted to exhaust the entire stock of (cid:145)POWER FLEX(cid:146) branded goods, available with it. (cid:133) the Plaintiff evidence Vide order dated 27th March, 2019, this Court had already 34. permitted the Defendant to sell the existing stock, subject to certain conditions. The said conditions are again reiterated in this order. Further, while Defendant No. 2 would not be permitted to 35. use the mark (cid:145)POWER FLEX(cid:146) as a trademark, the English language use of the word (cid:145)POWER(cid:146) as part of an advertising slogan or as in tagline (cid:145)THE POWER OF REAL LEATHER(cid:146) cannot be injuncted. The case laws cited by both the sides are well settled.(cid:148)

21. Aggrieved thereby, Leayan is before us in the present appeal. Rival Contentions Submissions of Mr. S. K. Bansal

22. Assailing the impugned judgment, Mr. Bansal, learned Counsel for Leayan advances the following submissions: Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 (i) Bata had deliberately impleaded CBH, one of retailers of Leayan, as Defendant 1. This was in order to avoid Leayan noticing the matter in the cause list and was, even otherwise, not permissible as held by the Division Bench of this Court in Micolube India Ltd v. Maggon Auto Centre9. (ii) The impugned judgment does not take stock of the extensive goodwill and reputation which Leayan(cid:146)s POWER FLEX products had acquired even prior to the filing of the suit. Our attention was invited, in this context, to various advertisements, on pan-India basis, both in the print media as well as on televisions and invoices of POWER FLEX products manufactured by Leayan, which were on record before the learned Single Judge. Moreover, Leayan operated through over 135 stores all over India. Having thus acquiesced to the use, by Leayan, of the POWER FLEX mark for an extended period of time, by which the mark had acquired goodwill and reputation, Bata could not belatedly seek to injunct use of the mark. (iii) In this context, it was pointed out that Leayan had submitted its application for registration of the word mark POWER FLEX in Class 25 on 7 September 2009. The opposition to the application was filed by Bata only on 15 September 2017. Counter-statement by way of response to the opposition was filed by Leayan on 22 March 2018. The suit came to be instituted by Bata only in February 2019. Between 2010 and 2019, Leayan had extensively used the POWER Signature Not Verified 9 (2008) 38 PTC 271 (DB) Digitally Signed By:AJIT KUMAR Signing Date:15.12.2025 12:06:53 FAO(OS) (COMM) 105/2019 and FAO(OS) (COMM) 193/2019 FLEX mark and garnered considerable goodwill therein. Reliance was placed, for this purpose, on para 29 of the judgment of a learned Single Judge of this Court in QRG Enterprises v. Surendra Electricals10, the appeal against which was dismissed in QRG Enterprises v. Surendra Electricals11. Apropos the judgment of the Supreme Court in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia12, it was submitted that the proposition that delay could not stand in the way of grant of injunction in a case in which infringement was found to exist, as enunciated therein, was applicable only to cases where the defendant had acted dishonestly. In this context, reliance was further placed on the following authorities (a) paras 57, 62 and 83 of the judgment of the Division Bench of the High Court of Calcutta in Shree Ganesh Besan Mill v. Ganesh Grains Ltd13, (b) paras 3, 25, 37, 41 and 43 of the judgment of the Division Bench of this Court in Intex Technologies (India) Ltd v. M/s AZ Tech (India)14, (c) para 6 of the judgment of the Supreme Court in Neon Laboratories Ltd v. Medical Technologies Ltd15, (d) paras 16, 18 and 19 of the judgment of the Division Bench of this Court in Shree Nath Heritage Liquor Pvt Ltd v. M/s Allied Blender & Distillers Pvt Ltd16,