Bombay High Court Issues Interim Injunction Against 'DESIMOCHI' Over Trademark Infringement Of Metro Footwear's 'MOCHI'

The plaintiff Metro stated that it has been using the 'MOCHI' mark since 1977 and its goods are sold through various e-commerce platforms. In 2016, Metro began selling goods with 'MOCHI' marks under the domain name 'mochishoes.com'. It said that in 2022 it came to know about Nice Shoes LLP's (defendants) website 'desimochi.com', which sold footwear. The website sold the goods under the 'DESIMOCHI' mark.

Justice R.I. Chagla in its order said, "Having considered the rival submissions, in my prima facie view, the Plaintiff has established that the Plaintiff has secured registration of the “MOCHI” word marks in Classes 18, 25 and 35 with a user claim since 1977. Further, in my prima facie view, the Plaintiff has been able to establish there has been open, continuous and extensive use of the said 'MOCHI' which has become well known among members of the public in India and globally as markers / identifiers exclusively associated with the Plaintiff's business and brand".

Metro said that it had sent a cease and desist notice to the defendants, informing them that the use of 'DESIMOCHI' mark was an infringement of its registered trademark 'MOCHI' as well as passing off. Metro asked the defendants to stop using the mark and the domain name.

In a reply to the cease and desist notice, the defendants claimed to the proprietor of the 'DESIMOCHI' mark, stating the marks 'MOCHI' and 'DESIMOCHI' are not similar.

Metro then filed a complaint to the WIPO Arbitration and Mediation Centre. However, the WIPO Centre rejected Metro's complaint despite finding that the impugned mark had confusing similarity with the Metro's mark. WIPO held that Metro was not able to establish that there was bad faith on the part of the defendants in adopting their domain name which contains the word 'MOCHI'.

Metro thus filed a trademark infringement lawsuit and an interim application seeking an injunction restraining the (defendants) from using its registered 'MOCHI' trademarks.

The Court noted that as the defendant's mark contains the entirety of Metro's 'MOCHI' mark, it would be estopped from contending that Metro's mark is generic, descriptive or common to the trade.

The Court observed that a mere addition of a general prefix would not negate the defendant's liability when the marks are deceptively similar.

It noted that the pre-fixing MOCHI' with 'DESI' created confusion among the public that the defendant's goods are associated with Metro's brand.

“The Plaintiff holds valid and enforceable rights to the trade mark 'MOCHI', including exclusive rights to prevent others from using the same or confusingly similar marks in relation to footwear. Further, even pre-fixing 'MOCHI' with 'DESI' triggers an association and business connection with the Plaintiff's mark and is likely to be interpreted by an ordinary member of the public and those also in trade to mean that the goods are associated with the Plaintiff's brand 'MOCHI' which is one of the largest and most reputed brands in the footwear industry. In my prima facie view, 'DESIMOCHI' would suggest that it is the Indian brand of the Plaintiff's mark 'MOCHI'.”

On WIPO's decision, the Court observed that it has no bearing on the present suit. It remarked, “In any event, I find that an inconsistent finding has been arrived at by WIPO from the well settled intellectual property law of India.”

It noted that the WIPO's decision failed to consider the settled law that a case for trademark infringement is made out when a deceptively similar mark or domain name is being used for identical goods and services. It stated that the existence of 'bad faith' is per se not required to secure an order of infringement for a registered trade mark.

The Court held that Metro made out a strong prima facie case for the grant of an injunction for infringement and passing off. It stated that the balance of convenience lies in favour of Metro and that non-grant of the injunction would cause it irreparable loss and harm.

It noted that Metro's mark has been in open, continuous and extensive use since 1977. It declared the MOCHI mark to be a 'well-known mark' under Section 2(1) (zg) of the Trademarks Act.

The Court thus issued a temporary injunction, restraining the defendants from using the MOCHI mark or any other deceptively similar mark. It also directed the defendants to hand over the domain 'desimochi.com' and any other domain name incorporating the MOCHI marks to Metro.

Case title: Metro Brands Ltd. vs. Nice Shoes LLP & Ors.

(INTERIM APPLICATION (L) NO.14867 OF 2024 IN COM IPR SUIT (L) NO.14360 OF 2024)