Case Note & Summary
The dispute arose in the Commercial Division of the Bombay High Court in a suit for trademark infringement and passing off concerning the mark 'REGAL' used in relation to footwear and retail services. The plaintiffs, as registered proprietors of two REGAL trademarks, sought an interlocutory injunction to restrain the defendant from using the identical mark 'REGAL' or 'REGAL FOOTWEAR' for footwear retail. The plaintiffs claimed use since 1954 through their predecessors and permitted users, with total sales from 1954 to 2017 exceeding Rs.425 crore and advertising expenses of about Rs.7.88 crore. Their registrations comprised Registration No.284961 in Class 25 for footwear and Registration No.1278782 in Class 42 for retailing services, both with user claims from 1954. The defendant claimed adoption of the mark 'Regal' or 'Regal Footwear' on 21 April 1963, operating a sole proprietorship store at 26 M.G. Road, Pune, and later converting to a partnership firm in 1994. The defendant also relied on licenses under the Bombay Shops and Establishment Act, 1948, property tax payments, and photographs from 1988. In 2006, the defendant filed a trademark application in Class 35 claiming user since 1963, which the plaintiffs opposed in 2008. The Deputy Registrar of Trade Marks, by order dated 11 February 2020, allowed the opposition and refused the defendant's application, holding the plaintiffs were prior adopters/users and the defendant could not establish earliest adoption and uninterrupted use. The plaintiffs also pointed to consumer complaints in 2019 indicating actual confusion, where products purchased from the defendant's shop were thought to be from the plaintiffs. The core legal issues were whether the defendant's use of an identical trade mark for identical goods/services constituted infringement and passing off; whether the defendant could rely on prior continuous user under Section 34 of the Trade Marks Act, 1999; whether honest and concurrent use was a defence to infringement; and whether equitable acquiescence barred injunctive relief. The plaintiffs argued through senior counsel that their registrations were undisputed and not challenged by rectification, that identical use for identical goods created a presumption of confusion, and that the only defences available were statutory defences under the Act or equitable acquiescence. They contended the Section 34 defence was misconceived and honest concurrent use was not a defence to an infringement action. The defendant, in its counterstatement and procedural history, asserted adoption from 1963 and continuous use, but the available excerpt did not record detailed counter-arguments beyond those assertions. Procedurally, the court passed several interim orders: on 24 July 2017 it directed a reply and did not grant ad-interim relief; in Commercial Appeal (L) No.54 of 2017 the Division Bench recorded the defendant's statement that it would not claim equities from opening a new shop and dismissed the appeal; on 28 July 2017 the defendant opened a shop at Seasons Mall; on 4 September 2018 the court allowed a third shop without claiming equities and required four weeks advance notice for any further shop; on 10 February 2022 the defendant informed the plaintiffs of intent to open a shop in Phoenix Market, Pune. The present notice of motion was thereafter heard. The extracted text ends during the plaintiffs' submissions and does not include the court's final order; therefore the final decision is not stated in the available material.
Headnote
A) Intellectual Property Law - Trademark Registration and Prior User Claim - Plaintiffs' registrations in Classes 25 and 42 with user claims from 1954; Defendant's subsequent Class 35 application refused - Trade Marks Act, 1999, Sections 21(1), 21(2), 34 - Plaintiffs were registered proprietors of 'REGAL' under Registration No.284961 (Class 25) and No.1278782 (Class 42), both with user claims from 1954; Defendant's Application No.1422577 in Class 35 was opposed and the Deputy Registrar on 11 February 2020 allowed the opposition, holding Plaintiffs were prior adopters/users and Defendant could not establish earliest adoption or uninterrupted use (Paras 2, 9, 16, 19, 30). The court noted that Plaintiffs' registrations were undisputed and Defendant had not challenged them by rectification proceedings (Para 34). B) Trademark Infringement - Identical Marks and Presumption of Confusion - Use of identical mark for identical goods/services triggers likelihood of confusion - Trade Marks Act, 1999, Sections 21(1), 21(2), 34 - Plaintiffs argued that use of identical trademark for identical goods/services gives rise to presumption of confusion; injunctive relief can only be resisted by statutory defences or equitable acquiescence (Paras 33-34). The court was addressed on these principles. C) Trademark Defences - Prior Continuous Use and Acquiescence - Defendant claimed adoption since 1963; Plaintiffs asserted defences unavailable - Trade Marks Act, 1999, Sections 21(2), 34 - Defendant filed counterstatement contending adoption on 21 April 1963 and continuous use in retailing; Plaintiffs submitted prior continuous user under Section 34 was misconceived and honest and concurrent use was not a defence to infringement (Paras 7, 20, 34). The court considered these rival submissions.
Issue of Consideration
Whether Defendant's use of identical 'REGAL' mark for footwear retail constituted infringement and passing off; whether Defendant established prior continuous user under Section 34 of the Trade Marks Act, 1999; whether honest and concurrent use is a defence to infringement; whether equitable defence of acquiescence barred injunctive relief; whether interim injunction should be granted
Final Decision
Not mentioned (final order not included in the available excerpt)
Law Points
- Registered proprietor of a trademark is entitled to injunction unless defendant establishes statutory defences under the Trade Marks Act or equitable defence of acquiescence
- use of identical mark for identical goods/services creates presumption of likelihood of confusion
- prior continuous user under Section 34 requires proof of honesty and continuous use
- honest and concurrent use is not a defence to infringement action
