Prima Facie Infringement Made Out: Bombay High Court Temporarily Restrains Pune's Regal Footwear From Using 'Regal' Trademark

Justice R. I. Chagla, while deciding a notice of motion in the suit held,

“The Plaintiffs case of passing off is made out particularly considering that the rival marks are identical and used for identical goods/services……infringement is made out in view of the prima facie findings that the Plaintiffs have been able to establish user since 1954 including goodwill and reputation and the Defendant being a junior user, as well as other prima facie findings of the Defendant failing to establish honest concurrent use as well as its case of acquiescence not having been made out.”

The plaintiffs are the registered proprietor of the mark ‘Regal’ for footwear and leather articles. The plaintiffs claimed that they have been carrying out business since 1954 under the mark Regal/Regal Footwear/Regal Shoes. The mark was registered in 1972.

The defendant claimed to have adopted the trademark ‘Regal’ in 1963 and has been using it since then. The defendant’s 2006 trademark registration application was rejected in 2020.

In 2017, the plaintiffs came to learn that the defendant had started selling footwear with trademark REGAL. Hence the present suit.

According to the plaintiffs, in 2019, two persons complained about the defendant’s product on the plaintiffs’ official website.

The defendant claimed that the Plaintiffs made a false statement that they came to know in 2008 about defendant's use of the mark. This is because the plaintiffs have a shop diagonally opposite to the defendant's shop in MG Road, Pune from 2004. The court said this non-disclosure is irrelevant and at most can imply delay which is not a defense in an infringement action.

The court acknowledged that the plaintiff has produced material to show that they were in open, uninterrupted, and continuous use of their trademark since 1954. The material produced by the defendant has failed to establish their use since 1963 much less open, extensive, and continuous use, the court said.

“The Plaintiffs being prior adopters of their trade mark REGAL hold superior title to the Defendant apart from the Plaintiffs trademarks being registered whereas Defendant has been unsuccessful in obtaining registration of its trade mark”, said the court.

The court rejected the defence of honest concurrent use of the mark as it is only available for trademark registration and not infringement. “Honest concurrent use may defeat a claim of damages, but the relief of injunction should not be refused”, the court noted.

The court further noted that the plaintiffs were operating their shop at Colaba Causeway, a premier shopping address prior to 1963. There are advertisements which refer to Plaintiffs’ shop as a landmark.

The defendant’s predecessor being in the same trade as well has belonging to the same religious community as the plaintiffs, would prima facie show that the defendant and its predecessor knew about the plaintiffs’ use of REGAL trademark, the court said.

The court also noted that in 2017, the defendant was using the mark with the ® symbol to suggest that it was a registered trademark. It was using font and lettering similar to the plaintiffs’ mark. Hence, it failed to establish commercial honesty.

The court said that the defendant’s claim that the plaintiffs had knowledge of the defendant’s business and were tardy in coming to the court does not establish acquiescence.

Therefore, a prima facie case for infringement and passing off is made out, the court concluded.

Case no. – Commercial IPR Suit No. 630 of 2017

Citation: 2023 LiveLaw (Bom) 12

Case Title – Abdul Rasul Nurallah Virjee and Anr. v. Regal Footwear