2019:DHC:2158

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 3rd April, 2019
Date of decision:16th April, 2019
+ CS (COMM) 110/2019
BATA INDIA LIMITED ..... Plaintiff
Through: Mr. Neeraj Grover, Mr. Anmol
Chadha and Ms. Rudrarti Kaur,
Advocates.

versus

CHAWLA BOOT HOUSE & ANR ..... Defendants

Through: Mr. S.K. Bansal, Mr. Pankaj Kumar
and Mr. Somnath, Advocates (M:
8860987189).
CORAM:
JUSTICE PRATHIBA M. SINGH
JUDGMENT
Prathiba M. Singh, J.

I.A. 3051/2019 (u/Order XXXIX Rules 1 and 2 CPC) and I.A. 3686/2019
(u/Order XXXIX Rule 4 CPC)
1. The present order disposes of two applications being under Order
XXXIX Rule 1 and 2 CPC and under Order XXXIX Rule 4 CPC.
2. The Plaintiff – Bata India Limited (hereinafter „Plaintiff‟) has filed
the present suit seeking an injunction restraining infringement of trademark,
passing off, unfair competition, damages, etc. The facts as essential for the
present order are narrated below.

Plaintiff’s case
3. The Plaintiff is a well-known manufacturer and seller of footwear. It

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was incorporated in 1931 in the name of its predecessor – Bata Shoe

Company Private Limited. In the year 1973, it became a Public Limited
Company, and changed its name to M/S Bata India Ltd. It adopted the mark
‘POWER‟ for footwear in the early 1970s and the same has been in
continuous use for almost 50 years. The ‘POWER‟ brand is registered in
favour of the Plaintiff, both in word form and logo form and as a
combination with other marks. The ‘POWER‟ range of footwear of „BATA‟
have been promoted by well-known sporting personalities such as Mr. Kapil
Dev, Mr. Sachin Tendulkar and Ms. Smriti Mandana (Player of Indian
National Women’s Cricket Team). The sales figures of the footwear under
the mark ‘POWER‟ for the last ten years have been mentioned in paragraph
11 of the plaint. In the year 2018, the annual sales of „POWER‟ branded
shoes has been over Rs.480 crores and the publicity expenses are in the
range of Rs.77 crores. The sales for the last decade itself show that
‘POWER‟ branded footwear of more than Rs.2500 crores has been sold in
India and the expenses on publicity are nearly Rs.300 crores for the last
decade.
4. The claim of the Plaintiff is that it came across a trademark
application filed by Defendant No.2 – Leayan Global Pvt. Ltd. (hereinafter,
„Defendant No.2‟) for the mark ‘POWER FLEX‟ in respect of footwear. The
same was opposed by the Plaintiff. When Defendant No.2 filed its evidence
in support of the opposition, it contained invoices and some advertisements,
which showed that Defendant No.2 was using the mark ‘POWER FLEX‟.
Further, the Plaintiff also came across an application for the tagline ‘THE
POWER OF REAL LEATHER‟, which was also opposed. Since Defendant
No.2 claimed actual use of the mark, the Plaintiff claims to have obtained a

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sample of the Defendant No.2’s product and filed the present suit. The
allegation of the Plaintiff is that the Defendant No.2’s use of the mark
‘POWER FLEX‟ and ‘THE POWER OF REAL LEATHER‟ is a violation of
its statutory and common law rights.
5. When the suit was listed before this Court on 27th February, 2019, the
following order was passed:
“I.A. 3051/2019 (u/O XXXIX Rules 1 and 2 CPC)
8. The Plaintiff – Bata India Limited has filed
the present suit seeking injunction restraining
infringement of registered trademark and passing off,
damages and delivery up in respect of its trademark
„POWER‟ used for footwear and other allied
products. The case of the Plaintiff is that it adopted
the mark „POWER‟ in 1971 for footwear and has
since been using the same exclusively and extensively.
The sales and advertising figures for the mark have
been placed in para 11, which shows that the sales in
the last calendar year was approximately Rs.480
crores. The mark „POWER‟ has been used extensively
by the Plaintiff, who has several brand ambassadors
who have promoted the mark.
9. The grievance of the Plaintiff in the present
suit is that the Defendants have adopted the mark
„POWER FLEX‟ and the slogan „THE POWER OF
REAL LEATHER‟ for footwear. It is submitted that
the Plaintiff owns several registrations for the mark
„POWER‟ both in logo and in word form as also in
various derivatives, the oldest of these dating back to
1988. Accordingly, Mr. Neeraj Grover, Ld. counsel
appearing for the Plaintiff submits that the use of the
mark „POWER FLEX‟ and the slogan „THE POWER
OF REAL LEATHER‟ violates the Plaintiff‟s right in
the mark „POWER‟.
10. The Court has perused the documents on
record. It is clear that Defendants have adopted the

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mark „POWER FLEX‟ and the slogan „THE POWER

OF REAL LEATHER‟ in respect of footwear. Though,
the word „POWER‟ is a dictionary word, the use by
the Plaintiff since 1971 and the sales turnover shows,
prima facie, that the mark is identified with the
Plaintiff. The Defendants had applied for trademark
registration of the mark „POWER FLEX‟ in 2009 on a
proposed to be used basis, and the same was opposed
by the Plaintiff. The counter statement filed by the
Defendant shows that the earliest invoice of the
Defendants is in 2017, though user is claimed from
2009. The Defendants have adopted the mark being
fully conscious of the Plaintiff‟s rights. The
opposition filed by the Plaintiff also shows that it has
been diligent in protecting the mark. The Plaintiff has
been granted protection in an earlier matter wherein
an interim injunction has been granted restraining the
use of the mark POWER by a third party.
Accordingly, till the next date, the Defendants are
restrained from using the word „POWER‟ in respect
of footwear either solitarily or in combination with
any word. However, insofar as the expression „THE
POWER OF REAL LEATHER‟ is concerned, it
appears to be used as a tagline in respect of the
Defendants‟ products. The prayer for injunction in
respect of the said tagline/slogan would be
considered after summons and notices are issued to
the Defendants. It is however directed that in the said
tagline, no undue prominence shall be given to the
word „POWER‟ till the application is heard finally.
Compliance of Order 39 Rule 3 CPC within one
week, after execution of the local commission.
11. If the Defendants wish to seek permission for
disposal of existing stocks, they are permitted to move
the Court.”

6. The Defendant No.2 moved an application under Order XXXIX Rule

4 CPC where a prayer was made for permission to dispose of the existing

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stock. This application was disposed of on 27th March, 2019 in the following
terms:
“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 27 th
February, 2019, the Defendant is permitted to dispose
of the stock as mentioned in the statements subject to
the following conditions:
(i) The Defendants are directed to file monthly
statement of disposal of the said stock;
(ii) Defendants shall file an affidavit in respect of
the value of the said stock which is disposed of;
(iii) No fresh manufacturing is permitted with the
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.”

7. Thereafter, the matter was heard on merits in the injunction

application and the application for vacation of injunction.

Defendant No.2’s Case

8. Defendant No.2 in its written statement has raised various objections.:
i. That the Plaintiff, in its reply to the examination report for
registration of its various ‘POWER‟ derivative marks has itself
claimed that the mark ‘POWER‟ and similar marks such as
‘POWERGUN‟, „POWER LABEL‟, etc. are “visually,
structurally and conceptually” different. Hence, the Plaintiff
itself having admitted that other ‘POWER‟ derivative marks are
different, cannot today plead to the contrary.
ii. The second ground of Defendant No.2 for resisting the

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injunction is that Defendant No.2 is a well-known company

which sells footwear under the mark „RED CHIEF‟ and has
been in business since 1995. Its annual sales for the last
financial year was more than Rs.250 crores.
iii. The word ‘POWER‟ is laudatory and is a dictionary word,
which is incapable of being exclusively monopolised by any
one party. Various applications for trademark registrations are
relied upon for various registered trademarks and applications
for trademarks with the word ‘POWER‟ in respect of footwear.
iv. The suit is grossly delayed as Defendant No.2 had started use of
the mark ‘POWER FLEX‟ since 2010-11. It has used Mr. Virat
Kohli as its brand ambassador.
v. The mark ‘POWER FLEX‟ has not been used as a trademark in
isolation but always with the mark „RED CHIEF‟. Hence, there
is no chance of confusion with the Plaintiff’s mark.
vi. That Defendant No.2 comes from a very well-known FMCG
group, which sells „GHARI‟ detergent, having sales turnover of
US Dollars 750 million.
vii. That Defendant No.2’s mark ‘RED CHIEF‟ is very well-
known, which does online sales as also sales from 135
exclusive stores across the country.
viii. That there is no chance of confusion as the Plaintiff’s mark
‘POWER‟ is used for sporting footwear, whereas the Defendant
No.2’s mark ‘POWER FLEX‟ is used for leather footwear.
Submission of Ld. Counsels
9. Mr. Neeraj Grover, Ld. counsel appearing for the Plaintiff has

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reiterated that the word ‘POWER‟ is registered not just for footwear but also
in respect of leather goods. It has already been granted protection by this
Court in another proceedings being CS(COMM) 1117/2016 where the
Defendant was using the mark ‘POWER‟ for footwear. Further, sales of the
Plaintiff’s footwear under the mark ‘POWER‟ is approximately Rs.450
crores and constitute almost 20% of the total sales of the Plaintiff company
which is in the range of Rs.2,600 crores. The Plaintiff has been extremely
vigilant about its rights and has filed several oppositions against trademarks
which are containing the word ‘POWER‟ or derivatives of the ‘POWER‟
mark. It is further submitted that ‘POWER FLEX‟ is being used by the
Defendant No.2 independently and not in conjunction with „RED CHIEF‟.
10. Photographs of the Defendant No.2’s products have been shown to
the Court. According to the Plaintiff, the cause of action for filing the suit
arose only when the Defendant No.2 filed the evidence of the use of the
mark in the opposition proceedings before the trademark Registry. In fact,
the Plaintiff had no knowledge of the Defendant No.2’s use of the mark
before that. On delay, Mr. Grover submits that the Plaintiff has always been
vigilant and there was no reason for it not to take action against the
Defendants if the use of the mark ‘POWER FLEX‟ by Defendant No.2 had
come to its knowledge. It is further submitted that the Defendant No.2
having itself applied for registration of the mark ‘POWER FLEX‟, is
estopped from arguing that the mark ‘POWER‟ is descriptive or laudatory or
a dictionary word. He relies on the following cases:
 Automatic Electric Limited v. R. K. Dhawan & Ors. 77 (1999) DLT
292;
 Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 49 (Del)

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(hereinafter, „Pankaj Goel‟);

 South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.
2015 (61) PTC 231 (Del);
 H&M Hennes & Mauritz AB and Ors. V. HM Megabrands Pvt Ltd
2018 (74) PTC 229 (Del);
 QRG Enterprises & Anr v. Surendra Electricals & Ors. 2005 (30)
PTC 471 (Del);
 Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. [CS(COMM)
724/2018 decision dated 11th February, 2019];
 Ansul Industries v. Shiva Tobacco Company 2007 (34) PTC 392
(Del);
 The Timken Company v. Timken Services Private Ltd. 2013 (55)
PTC 568 (Del);
 Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories AIR 1965 SC 980
11. On the other hand, Mr. S.K. Bansal, Ld. counsel appearing for the
Defendants submits that he has a three-fold defence:
i) Honest and concurrent adoption in 2009 of the mark ‘POWER
FLEX‟ and continuous use since 2011;
ii) Open and extensive use bars the grant of interim relief;
iii) The admissions by the Plaintiff, especially in the Trademark
Registry, ought to be construed against it, and thus averments to
the contrary ought not to be entertained.
12. It is vehemently contended that the Plaintiff’s stand that it acquired
knowledge only in 2018 is completely false. Open use by the Defendants

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from 2014 and promotion by well-known cricketing personalities like Mr.

Virat Kohli could not have been ignored by the Plaintiff. Regular
advertisements of Defendant No.2’s product are being telecasted on
television. Even airline inflight magazines have advertisements of the
Defendant No.2’s product. Further, advertisements by Defendant No.2 have
been published in major newspapers such as ‘Amar Ujala‟, which could not
have been ignored. He relies on various documents placed on record by the
Defendant No.2 in support of his submissions. Emphasis is placed on the
replies filed by the Plaintiff to the examination report before the Trademark
Registry. It is further contended that the Plaintiff’s plea of acquiring
knowledge of the Defendant No.2’s use of the mark „POWER FLEX‟, only
in 2018 is dishonest and was made with a view to mislead the Court at the
time of obtaining ex-parte injunction. Defendant No.2 relies on the
following judgments:
 Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr. 2018 (75)
PTC 8 (Del);
 S.K. Sachdeva & Anr. v. Shri Educare Limited & Anr. 2016 (65)
PTC 614 (Del) (DB);
 Jain Rubber Industries v. Crown Pvt. Ltd. & Ors. [Suit No.1919/87
decision dates 14th January, 1988];
 Shri Gopal Engg. & Chemical Works v. M/s POMX Laboratory AIR
1992 Del 302;
 Micolube India Ltd. v. Maggon Auto Centre & Anr. 2008 (36) PTC
231 (Del) (hereinafter, „Micolube India SJ‟)
13. In conclusion, Mr. Bansal submits that his client is willing to give an
undertaking that it will only deal in leather footwear with the mark ‘POWER

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FLEX‟ and will always use the mark ‘POWER FLEX‟ with the mark „RED
CHIEF‟ in a composite manner and no special prominence would be given
to the word ‘POWER‟ in the advertisement.
14. Mr. Grover, in rejoinder, submits that the judgment in Pankaj Goel
(supra) completely settles the law in respect of delay. Moreover, the
Defendant No.2’s advertisements are for various variants of the „RED
CHIEF’ brand. The total annual turnover of the Defendant No.2 is itself
Rs.257 crores, out of which, a substantial sale is by way of manufacturing of
leather goods for third parties. There is no mention of the actual sales of the
‘POWER FLEX‟ branded shoes. Further, the user of Defendant No.2 appears
to have been very minimal initially, but recently Defendant No.2 has started
expanding. Most of the advertisements relied upon are for the mark „RED
CHIEF‟ or „FURO‟. It is further submitted that Mr. Virat Kohli, who is now
a celebrated cricketer, was not so prominent at the time of the release of
these advertisements by Defendant No.2. Finally, Mr. Grover emphasizes on
the fact that Defendant No.2 was obviously was well aware of the Plaintiff’s
mark ‘POWER‟ and in such cases, the mark and the class of goods being
identical, confusion should be presumed.

Analysis and Findings

15. At the outset, this Court notices the fact that Defendant No.1 which
has been impleaded in the present suit is a shopkeeper called - Chawla Boot
House, based out of Gandhi Nagar, Delhi. The main Defendant is ‘Leayan
Global Pvt. Ltd.’ which is Defendant No.2. This is a practice usually
adopted in order to avoid detection in the cause list. A Ld. Single Judge of
this Court in Micolube India SJ (supra) has shunned such a practice by

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observing as under:
“25. Another factor which goes against the plaintiff is
the manner in which the parties have been arrayed.
The defendant No. 2 is the main defendant who has the
registration of the well known mark 'MICO' in respect
of automotive parts. However, the plaintiff has chosen
to array Maggon Auto Centre as the main defendant
when, according to the averments made in paragraph
17 of the plaint, it is averred that the defendant No. 1 is
only a dealer of the impugned goods of the defendant
No. 2 and that the exact relationship between them is
not known to the plaintiff and that the defendant No. 2
is called upon to disclose the exact relationship
between them. It is unfortunate that the main defendant
(Motor Industries Co. Ltd.) has been arrayed as
defendant No. 2 and Maggon Auto Centre, who is
alleged to be a dealer of the main defendant and whose
exact relationship is unknown to the plaintiff is arrayed
as defendant No. 1. It is not only in this case, but in
several other cases that this Court has noticed this
unhealthy trend on the part of the plaintiffs to array the
main defendant as defendant No. 2 or defendant No. 3
while naming some innocuous dealer or retail outlet as
defendant No. 1. The object is easily discernible. When
the counsel for the main defendants scan the list of
cases, they would not be able to know as to whether
any case has been filed against them so as to enable
them to appear on the very first date on which the case
is listed before court. The very fact that the plaintiff
has also indulged in this practice is also an indicator
that it did not want the counsel for the defendant No. 2
to appear on the first date on which the matter was
taken up for consideration of the grant or non-grant of
ad interim injunction. This fact also disentitles the
plaintiff to any equitable relief. I am of the view that
the plaintiff has concealed and suppressed material
facts from this Court.”

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The Ld. Division Bench has upheld this view in Micolube India Ltd. v.
Maggon Auto Centre 2008 (38) PTC 271 (Del).
16. It is noticed that, despite this being the settled legal position, in most
cases, an unknown Defendant or an employee or Director is impleaded as
the first Defendant to avoid detection in the cause list. Such a practice
having been held to be impermissible by the Division Bench, the same
cannot be permitted to continue in any manner. Defendant No.1 is only a
retailer, like the other hundreds of retailers of Defendant No.2 across the
country. Defendant No.1 is accordingly deleted from the array of parties.
Registry is directed to ensure strict compliance of the judgment in the
Micolube India SJ (supra) cited above and seek an undertaking of the
Plaintiff in IPR cases where there are multiple Defendants that the
Defendant No.1 being arrayed is the main contesting Defendant in the suit.

Findings on Merits
17. The Court at the interim stage has to take merely a prima facie view
of the matter, on the basis of the documents on record. The Plaintiff has
placed on record several trademark registrations for the mark ‘POWER‟ and
‘POWER‟ derivative marks. While some of the ‘POWER‟ marks of the
Plaintiff have not been renewed and have been abandoned, a large number
of ‘POWER‟ marks are still in operation and are valid. At the interim stage,
the Court is not to go into dissection and analysis of each registration.
Broadly, the list of trademark registrations contained in para 9 of the plaint
shows that the earliest registration dates back to 1971 for the mark
‘POWER‟ – with the arrow logo and the mark „BATA‟. The standalone
‘POWER‟ mark registration for the device and the word, in respect of

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footwear, dates back to 1975. Though, these marks may have lapsed due to
non-renewal and abandonment, etc., the evidentiary value of the same
cannot be ignored. They, at the very least, show adoption of the mark
‘POWER‟ and ‘POWER‟ derivative marks by the Plaintiff since 1971 i.e., 48
years ago. Subsequent registrations of the mark ‘POWER‟ show that the
word ‘POWER‟ is registered as a word mark, as a device mark, as a
combination mark and in various derivative forms such as ‘POWER
SPORTS‟, „POWER POINTS‟, „POWER ULTIMO‟, „POWER FOOTBED‟,
„POWER SPORTS FOOTWEAR‟, „POWER TUNNEL SYSTEM‟, „POWER
BODYLINE‟, etc. This shows that the mark ‘POWER‟ is not only being used
in isolation, but in conjunction with several words, depending on the
business and commercial needs of the Plaintiff. A perusal of the documents
filed by the Plaintiff also show the following:
a) That several oppositions have been filed by the Plaintiff to protect the
mark ‘POWER‟;
b) The oldest invoice on record is dated 29th September, 1988 for
footwear under the ‘POWER‟ mark;
c) The annual report of the Plaintiff company for the years 2017-18 in
respect of marks ‘POWER‟ reads as under:
For decades, Bata was synonymous with quality and
comfort. Now, the legendary shoe brand has been
bestowed with one more accolade - Stylishly Ahead.
The game-changing styles, the hottest fashion trends
and a matchless craftsmanship to boast of, the new
age Bata has it all. And this is being reflected in the
awe and admiration of its consumers; old and new.
To drive home this cool new image, Bata has teamed
up with India's young style icons - Smriti Mandhana,
the opener of the Indian Women's Cricket Team, as

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the brand ambassador for its iconic sports/fitness

brand 'Power', and Kriti Sanon, the Bollywood diva,
as the new face of the brand, reaching out to modern
Indian women. On the back of this momentum, the
Company opened many new stores and took its much
loved articles to stores In Tier-II and Tier-III towns
across the country. At the same time, Bata India took
inspiration from the brand's global retail concept,
launching its internationally conceptualized 'Red
Angela Store Concept' in Kolkata and Delhi. Bata
also made its presence felt in the Milan Fashion
Weekend, attracting fashion enthusiasts, influencers
and ambassadors from all over the world.
Bata has transformed itself into a vibrant and modish
lifestyle brand, successfully adding onto its beloved
legacy. But the journey never ends, only the
destination changes. So, it's time to head towards the
next part of this journey. It's time to step ahead and
stay ahead.”

d) The various advertisements dating back to 1980’s are on record which

show use of the mark ‘POWER‟ in association with the Indian Cricket
Team. One such story reads ‘Cricket Stars in Power Galaxy‟. The
arrow logo is called the „POWER FLASH‟. An exclusive window with
the ‘POWER‟ branded footwear is also depicted that cricketers like
Mr. Kapil Dev and Mr. Sachin Tendulkar, have used the word
‘POWER‟ on their bats;
e) ‘BATA’ has also used various taglines and slogans and derivative
words such as ‘FIND YOUR POWER‟, „POWER IN WALK‟, „CHALO
INDIA MAKE POWER WALK;
f) ‘POWER‟ branded shoes are sold for various sports including cricket,
football and tennis;

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g) The ‘POWER‟ mark has been positioned as the international sports

wear brand of the Plaintiff and some of the shoes are claimed to be
designed in Canada. There are various stores which sell only
‘POWER‟ branded footwear. The first such store was launched in
March, 2018
h) The endorsement agreements with various celebrities have also been
placed on record.
i) Invoices showing advertisements on television have also been filed;
j) Oppositions have been filed against marks such as ‘CASH IS
POWER‟, „E-POWER‟, „FULL POWER‟, „POWER CELL‟, ‘POWER
OF ROAD‟, „POWER GOLD‟, „POWER STRAP‟, „SINE POWER‟,
„POWER PULSE‟, „POWER POINT‟, etc. Two of these marks were
applied for by SKETCHERS USA and PUMA.
18. On the other hand, a perusal of Defendant No.2’s documents show
that the name/trademark of Defendant No.2 is ‘RED CHIEF‟. However,
within the inside of the shoe, the mark ‘POWER FLEX’ is used on a
standalone basis. The stores of Defendant No.2 are exclusive „RED CHIEF‟
stores. The endorsement by Mr. Virat Kohli of the „RED CHIEF‟ branded
products is dated 2nd February, 2011, and shows that it is not an endorsement
of ‘POWER FLEX‟ branded products. There are some advertisements which
depict the tagline ‘THE POWER OF REAL LEATHER‟ with Mr. Virat
Kohli. The advertisements in the various inflight magazines relate to
‘FURO‟ and in some advertisements, the tagline ‘THE POWER OF REAL
LEATHER‟ is used. There is no advertisement in an inflight magazine for
‘POWER FLEX‟ branded products. The best documents of Defendant No.2
are the advertisements in AMAR UJALA where the mark ‘POWER FLEX‟ is

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used with the tagline ‘THE POWER OF REAL LEATHER‟ in 2011-12. The
list of pending trademark applications using the word ‘POWER‟ in class 25
shows that apart from the word ‘POWER RANGERS‟, that there are several
other registered trademarks and pending applications containing the word
‘POWER‟, some in a prominent manner and some in a not so prominent
manner. However, there is not a single footwear product sample or
photograph or advertisement with the word ‘POWER‟ filed by Defendant
No.2 to show third party use. The primary reliance by Defendant No.2 is on
the admissions by the Plaintiff in the Trademark Registry.
19. A perusal of the documents and pleadings show that the Plaintiff’s use
of the mark ‘POWER‟ is indisputably prior to that of Defendant No.2, by at
least four decades. The ‘POWER‟ range of products, along with the use of
the „POWER FLASH‟ device have established a reputation in the market,
owing to the extensive use, advertising and celebrity endorsements. The
‘POWER‟ mark has a sales turnover of approximately Rs.500 crores a year
with a large advertising/publicity budget.
20. On the other hand, the use of the mark ‘POWER FLEX‟ by the
Defendant No.2 is sketchy. The sales turnover of ‘POWER FLEX‟ range
products has not been given in the written statement. Barring the six or
seven advertisements in AMAR UJALA, there is no other major publicity to
the mark ‘POWER FLEX‟. The celebrity endorsements of Mr. Virat Kohli is
also for „RED CHIEF‟ products. The argument that ‘POWER FLEX‟ is
being used only with „RED CHIEF‟ is also not correct. Though, the mark
‘POWER FLEX‟ is not shown on the box of the product, it is seperately
printed in the inside sole of the shoe without the trademark „RED CHIEF‟.
21. The clear impression that the Court gets while looking at the

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documents of Defendant No. 2 is that it is adopting a clever, tactical and a

`camel-in-the-tent‟ approach and slowly attempting to expand the mark
‘POWER‟ in respect of its footwear. The Plaintiff’s „POWER‟ brand is on
the other hand, a brand that is being used prominently and extensively for
almost five decades. In Pankaj Goel (supra), a Division Bench of this Court
held as under:
“12. As far as back to back advertisement of Appellant
and Respondent/plaintiff products are concerned, the
Respondent/plaintiff stated that there are 419 TV
channels on which 34,27,000 TV commercials are
telecast each month. It was pointed out that
Respondent/plaintiff itself had 450 products out of
which 72 products are exclusively advertised on 129
TV channels. According to Respondent/plaintiff there
are 20,000 TV ads in a month of Respondent/plaintiff
itself on 129 TV channels and therefore, it was not
possible for any company, including the
Respondent/plaintiff, to monitor TV commercials on all
the TV channels. Consequently, it was contended that
no knowledge can be attributed to the
Respondent/plaintiff of any TV commercial of the
Appellant. In this connection the Respondent/plaintiff
relied upon a judgment/order of this Court in
Automatic Electric Limited v. R.K. Dhawan reported in
1999 PTC (19) 81.
……………………
24. In the present case we also do not find that
Respondent/plaintiff's suit is either barred by delay or
laches or acquiescence. In fact, from the documents on
record, specially at pages 217, 352 and 361 in Paper
Book, we find that the Appellant's sales under the mark
RASMOLA till the year 2004 were rather insignificant.
Even in the cause of action paragraph the
Respondent/plaintiff has averred that though it had
filed a notice of opposition dated 25th July, 2007, yet it

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did not find the Appellant's goods in the market till the
first week of December 2007. Consequently, at this
stage we cannot draw the inference that the present
suit is barred by delay or laches. In any event, passing
off is a recurring cause of action and delay being a
defence in equity would not be available if the
Defendant's conduct is fraudulent - as is in the present
case. Consequently in the present facts, delay and so
called concurrent use, if any, cannot be a ground for
refusing interim injunction.”

22. Defendant No.2’s main brand is „RED CHIEF‟ and not ‘POWER‟ or
‘POWER FLEX‟. It has a range of other marks which it uses for its footwear
and ‘POWER FLEX‟ does not define the Defendant No.2’s product range.
The distinction sought to be drawn between sporting footwear and leather
footwear, is no distinction in the eyes of law. This is so because the
manufacturer of a product is entitled to a reasonable scope for expansion.
The Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah and Anr.
(2002) 3 SCC 65 held as under:
“8. It is common in trade and business for a trader or
a businessman to adopt a name and/or mark under
which he would carry on his trade or business.
According to Kerly (Law of Trade Marks and Trade
Names, 12th Edn., para 16.49), the name under which a
business traders will almost always be a trade mark
(or if the business provides services, a service mark, or
both). Independently of questions of trade or service
mark, however, the name of a business (a trading
business or any other) will normally have attached to it
a goodwill that the courts will protect. An action for
passing-off will then lie wherever the defendant
company‟s name, or its intended name, is calculated
to deceive, and so to divert business from the plaintiff,
or to occasion a confusion between the two businesses.

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If this is not made out there is not case. The ground is

not to be limited to the date of the proceedings; the
court will have regard to the way in which the business
may be carried on in the future, and to its not being
carried on precisely as carried on at the date of the
proceedings. Where there is probability of confusion in
business, an injunction will be granted even though the
defendants adopted the name innocently.”

23. After using the mark ‘POWER‟ for almost 48 years, it cannot be said
that the Plaintiff does not have a reasonable expectation of expansion into
leather goods. Moreover, permitting the Defendant No.2 to use the mark
‘POWER FLEX‟ today would also create a reasonable promise for
Defendant No.2 to expand the use of the mark ‘POWER FLEX‟ in the
sporting footwear. Thus, dissection of the product range, cannot be made so
minutely i.e. sporting footwear versus leather footwear. Broadly these
products fall under the class of footwear. It is a known fact that footwear
brands usually use their brands for accessories/clothing like T-shirts, shorts,
socks, belts, wallets, etc. Thus, in modern day usage, the brand is always
evolving and the product category cannot be cast in stone.
24. Moreover, while adopting the mark ‘POWER FLEX‟, it cannot even
remotely be believed that Defendant No.2 was unaware of the Plaintiff’s
brand. The presence of the Plaintiff’s „POWER‟ brand of footwear is quite
prominent and conspicuous. Defendant No.2 could have simply done a
search of the Trademark Registry, which would have revealed at least 25
marks of the Plaintiff with the mark ‘POWER‟. The adoption by Defendant
No.2 of the mark „POWER FLEX’, in such a situation, could be termed as
fraught with risk owing to the high standing of the ‘POWER‟ mark of the
Plaintiff.

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25. Moreover, Defendant No.2 has itself applied for registration of the
mark ‘POWER FLEX‟ in the year 2009 and is completely estopped from
arguing that the word ‘POWER‟ is laudatory or a dictionary word and
cannot be monopolised. This is the settled position as per Procter and
Gamble Manufacturing (Tiajin) Co. Ltd. & Ors. v. Anchor Health &
Beauty Care Pvt. Ltd. (2014) 211 DLT 466 (DB) which followed Indian
Hotels Company Ltd. v. Jiva Institute of Vedic Science & Culture 2008
(37) PTC 468 (Del) and Automatic Electric Ltd. v. R.K. Dhawan 1999 (19)
PTC 81. The relevant observations of the Ld. Division Bench are set out
below:
“(xix) As far as the contention, of Automatic Electric
Ltd. (supra) having stood overruled by Marico
Limited (supra) is concerned, we have perused Indian
Hotels Company Ltd.(supra) and are unable to agree
that the reference therein to Automatic Electric Ltd. is
without affirming the same. It was the contention
in Indian Hotels Company Ltd. also that the word
“JIVA” therein was a descriptive word which could
not be protected as a trade mark. The Division Bench
however negated the said argument by holding that the
appellant therein having itself applied for registration
of “JIVA” as a trade mark, could not argue that the
mark was descriptive. Reference to Automatic Electric
Ltd. was made in support of the said reasoning.
Unfortunately, neither Automatic Electric
Ltd. nor Indian Hotels Company Ltd. were noticed in
the subsequent judgment of the Division Bench
in Marico Limited. We, at this interim stage are
inclined to go along with the affirmation by the
Division Bench in Indian Hotels Company Ltd. with the
view in Automatic Electric Ltd.”

26. The spectrum of distinctiveness of marks clearly explains how

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distinctiveness of marks is to be judged. The spectrum as explained in

McCarthy on `Trade Marks and Unfair Competition’1, can be illustratively
depicted as below:
GENERIC – Least Distinctive

DESCRIPTIVE – Secondary Meaning Required

SUGGESTIVE – Inherently Distinctive

(No Secondary Meaning Needed)

ARBITRARY/ INVENTED MARKS – Inherently Distinctive

(No Secondary Meaning Needed)

27. Even if one considers the nature of the mark ‘POWER‟, it cannot be
held to be a descriptive mark. As the well-known author Mr. J. Thomas
McCarthy, in the treatise on `Trademarks and Unfair Competition’2, opines,
the question as to whether the mark is descriptive or suggestive, can be
based on the following tests:
a) Degree of imagination required to connect the mark with the
product; and
b) The competitor’s need to use the mark.
28. In the present case, the mere mention of the word ‘POWER‟ does not
direct any one immediately to shoes or to footwear. The imagination could
at best lead to products related to electricity, batteries or related products. It

1
J. Thomas McCarthy, “McCarthy on Trademarks and Unfair Competition”, Vol.2, Thomson West, 2003,
§11:1
2
J. Thomas McCarthy, “McCarthy on Trademarks and Unfair Competition”, Vol.2, Thomson West, 2003,
§11:67 & §11.69

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could also lead to other various other connotations. It requires a „leap of

mind‟ to connect the word „POWER‟ with footwear. The connection is not
automatic or immediate. The dictionary meaning of the word POWER, as
per the Shorter Oxford English Dictionary3 is:
“I 1. Ability (to do), capacity (of doing, to do); an
active property or principle. ME. b A particular mental
or physical faculty, capacity, or ability.
2. (Possession of) control or authority over other:
dominance: government, command; personal, social,
or political influence or ascendency. ME. b (With
specifying word.) A movement to enhance the status or
influence of a specified group, lifestyle, etc.
3. Ability to act or affect something strongly: strength,
might: vigour, energy, effectiveness.
4. Legal authority to act for another, esp. in a
particular capacity: delegated authority:
authorization: an instance of this.”

29. ‘POWER‟, could at best be termed as a `SUGGESTIVE’ mark for

footwear, which would make it an inherently distinctive mark. In the context
of footwear, it would at best be considered as a laudatory epithet. It is not
immediately connectable to footwear. Even if one applies the competitors’
need test, Defendant No.2 has not shown a single footwear product using the
word ‘POWER‟. Though, some pending applications have been shown, it is
a well-known fact that mere filing of applications or registering marks does
not create any goodwill and also does not imply any use of the mark. The
Plaintiff has been taking action against the marks which it considers
conflicting to its interest, vigilantly.
30. By applying the above two tests, the word ‘POWER‟ is held to be a

3
Shorter Oxford English Dictionary, Volume 2, 5th Edn., 2003, page 2307.

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distinctive mark in respect of footwear. In Union Carbide Corp. v. Ever-

Ready, Inc., 531 F. 2d 366, 188 U.S.P.Q. 623 (7th Cir. 1976) the Court
applied the `intuitive nature basis’, rather than a logical analysis, as the basis
for deciding as to whether a mark is descriptive or suggestive. While
descriptive marks can acquire a secondary meaning and attain the status of a
trademark, suggestive marks are inherently distinctive marks. This Court,
therefore, holds that in every case where the defence of non-distinctiveness
of marks is raised, the Court after analysing the evidence on record has to
finally apply its own intuitive perception and there can be no objective
formula to determine descriptiveness.
31. On the basis of the above, this Court has no hesitation in coming to
the conclusion that the mark ‘POWER‟ is exclusively associated with the
Plaintiff’s brand of footwear. The use of the said mark, either in
combination with other words or in isolated manner in respect of footwear,
accessories and clothing, etc., violates the statutory and common law rights
of the Plaintiff.
32. However, the Court is also conscious of the fact that 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 evidence in the opposition proceedings, seems a bit far-
fetched when seen in the context of the documents placed on record by
Defendant No.2. While holding that the Plaintiff is entitled to grant of
interim injunction, Defendant No.2 is permitted to exhaust the entire stock

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of ‘POWER FLEX‟ branded goods, available with it. The Defendant has
placed on record a stock statement which shows the following stock:
“STOCK POSITION OF FOOTWEAR UNDER
“REDCHIEF POWERFLEX” TRADEMARK AS ON
13.03.2019 AT EXCLUSIVE STORES &
WAREHOUSE OF THE COMPANY ALSO IN
TRANSIT
1) IN WAREHOUSE AND EXCLUSIVE
STORE :384185 PAIRS
(sic. 38415 pairs)
2) IN TRANSIT :1805 PAIRS”

33. Vide order dated 27th March, 2019, this Court had already permitted
the Defendant to sell the existing stock, subject to certain conditions. The
said conditions are again reiterated in this order.
34. Further, while Defendant No.2 would not be permitted to use the
mark ‘POWER FLEX‟ as a trademark, the English language use of the word
‘POWER‟ as part of an advertising slogan or as in tagline ‘THE POWER OF
REAL LEATHER‟ cannot be injuncted. The case laws cited by both the sides
are well settled. The analysis at the interim stage is primarily on facts, as
judgments have been cited on both sides which lay down settled positions of
law. Thus, the two applications are disposed of with the following
directions:
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;
b) The use of the tagline ‘THE POWER OF REAL LEATHER‟ as part
of an advertising slogan or a tagline is permitted, however, no

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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.
35. Both the I.As are disposed of in the above terms.
36. A copy of this order be given to the Registry for compliance of
directions given in paragraph 16 above.
CS (COMM) 110/2019
37. List on the dates already fixed, i.e., 29th April, 2019 before the Joint
Registrar, and 7th May, 2019 before Court.

PRATHIBA M. SINGH
JUDGE
APRIL 16, 2019
Rahul

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