Introduction: The Battle of "POWER"
In a significant ruling that dissects the fine line between
generic language and brand exclusivity, a Division Bench of the Delhi High
Court pronounced its judgment on December 15, 2025. The appeals, Leayan Global
Pvt Ltd v. Bata India Ltd and Bata India Ltd v. Chawla Boot House & Anr,
centred on a fundamental question in trademark law: Can a common English word
like "POWER" be monopolised by a brand for a specific product
category? The Court’s detailed analysis reaffirms that in the world of
trademarks, context is king, and long-established commercial use can transform
an ordinary word into a formidable legal right.
The Core Dispute: Bata's POWER vs. Leayan's POWER FLEX
The legal tussle originated from a suit filed by the iconic
footwear giant, Bata India Ltd., against Leayan Global Pvt Ltd. Bata alleged
that Leayan's use of the mark "POWER FLEX" for its leather footwear
infringed upon Bata's registered trademark "POWER," used primarily
for its sports and canvas footwear. Bata, armed with registrations dating back
to 1975, sought a permanent injunction to stop Leayan from using any mark where
"POWER" was a dominant part. In response, Leayan defended its
position, arguing that "POWER" was a laudatory, common dictionary word
incapable of exclusive appropriation and that its use of "POWER FLEX"
had built independent goodwill since 2010-11.
The Interim Order
and the Appeals
A learned Single Judge of the Delhi High Court, on April 16,
2019, granted an interim injunction partly in favour of Bata. The court:
1. Restrained Leayan from using the mark/word ‘POWER’ for
footwear, including in combinations like ‘POWER FLEX’.
2. Permitted Leayan to use the tagline ‘THE POWER OF REAL
LEATHER’ in advertisements, provided no undue prominence was given to the word
‘POWER’.
3. Allowed Leayan to exhaust its existing stock of ‘POWER
FLEX’ branded goods under certain reporting conditions.
Both parties appealed. Leayan challenged the injunction
against using "POWER FLEX," while Bata appealed against the
permissions granted for the tagline and stock disposal, and also against the
deletion of its retailer defendant, Chawla Boot House (CBH), from the suit.
Key Legal Principles Laid Down by the Division Bench
The Division Bench, comprising Justices C. Hari Shankar and
Om Prakash Shukla, began by crystallising the core legal framework applicable
to trademark infringement and interim injunctions. Their analysis serves as a
concise refresher on critical tenets of trademark law:
1. The Anatomy of Infringement (Section 29, Trade Marks Act,
1999):
- Infringement is a statutory tort defined under Section 29.
- For an action under Section 29(2)(b), the plaintiff must
show:
a) A valid
registered trademark.
b) Use of a
similar mark by the defendant in the course of trade.
c) The rival
goods/services are identical or similar.
d) This use is
likely to cause public confusion or an association between the marks.
2. The "Average Consumer" and "Imperfect
Recollection" Tests:
- The Court reaffirmed the "average consumer"
test—a person who is reasonably well-informed, observant, and circumspect but
not an expert.
- This consumer perceives marks as a whole, not dissected
into parts, and operates with an "imperfect recollection." The
critical question is the likelihood of confusion when the marks are encountered
at different times and places, not side-by-side.
3. The Concept of "Initial Interest Confusion":
- The Court
emphasized the doctrine of "initial interest confusion." Even if
confusion is dispelled before a purchase, the initial wonderment or doubt in
the consumer's mind ("Is this connected to the brand I know?") can
itself constitute infringement. This protects the trademark's ability to
clearly and unequivocally indicate a single source of origin.
4. Rights and Limits: Sections 28, 17, 30, and 35:
- Section 28: Grants the registered proprietor the exclusive
right to use the mark and to obtain relief for infringement.
- Section 17: Clarifies that for composite marks,
exclusivity over a part of the mark (like the word "POWER") cannot be
claimed if that part is common to the trade or non-distinctive, unless
separately registered.
- Section 30: Provides exceptions to infringement, such as
using a mark to indicate the kind, quality, or other characteristics of goods
(e.g., descriptive fair use).
- Section 35: Specifically prohibits injunctions against the
bona fide use of a person's name, address, or descriptions of the
character/quality of goods.
5. The Defence of Acquiescence and Delay (Section 33
& Judicial Precedent):
- Section 33 provides that if a trademark proprietor
knowingly acquiesces to the use of a registered later mark for five continuous
years, they lose the right to oppose it.
- The Court clarified that this statutory defence is narrow
and typically unavailable against an unregistered mark like "POWER
FLEX."
- Crucially, the Bench upheld the Supreme Court's ruling in Midas
Hygiene Industries (P) Ltd v. Sudhir Bhatia, which states that in cases of
prima facie infringement, mere delay is not a bar to granting an injunction.
The Court rejected the argument that this principle applies only to cases of
dishonesty, holding it to be of general application.
Court's Analysis: Applying Law to Facts
1. Validity and Strength of Bata's "POWER"
Mark:
- The Court noted
Bata's registrations for the "POWER" word mark and device mark since
1975, with evidence of use since at least 1988. Sales figures showed
substantial goodwill (approx. ₹480 Crores in 2018).
- It rejected
Leayan's argument that "POWER" was descriptive or non-distinctive.
Applying the "imagination test," the Court held that
"POWER" does not immediately describe footwear; it requires a mental
leap to connect the two. Therefore, it is, at best, "suggestive," and
suggestive marks are inherently distinctive and protectable.
- The fact that
"POWER" is a common dictionary word was deemed irrelevant.
Distinctiveness is assessed in relation to the specific goods.
"POWER" for footwear was found to be distinctive and capable of
distinguishing Bata's goods.
2. Infringement: Deceptive Similarity and Likelihood of
Confusion:
- The Court found
"POWER FLEX" to be deceptively similar to "POWER." The
dominant, memorable part of the defendant's mark was "POWER," which
was wholly subsumed within Bata's registered mark.
- It dismissed
Leayan's contention that the goods were different (Leayan's leather shoes vs.
Bata's canvas/sports shoes). Both are "footwear" under Class 25 of
the Nice Classification and are "similar goods" for trademark
purposes. The Court also considered the natural potential for brand
extension—nothing stops Bata from launching leather footwear under its POWER
brand.
- Applying the
"average consumer with imperfect recollection" and "initial
interest confusion" tests, the Court agreed with the Single Judge that
there was a clear likelihood of confusion and association between the marks.
3. Scrutiny of Leayan's Defences:
- Descriptive Mark
Defence (Section 35): The Court held that "POWER FLEX" was not a bona
fide description of the character/quality of leather shoes. It was not
descriptive (which requires an immediate link) and was not even clearly
suggestive of flexibility in footwear. Hence, Section 35 protection was
unavailable.
- Acquiescence
& Delay: This defence failed spectacularly for three reasons:
a) Insufficient
Evidence of Goodwill: The Court agreed with the Single Judge that Leayan's
evidence of building reputation in "POWER FLEX" was "sketchy."
The alleged advertisements were often undated, invoices did not mention the
brand name, and no certified sales/turnover figures were provided.
b) Statutory Bar:
Section 33 applies to acquiescence in a registered later mark. Leayan's
"POWER FLEX" was unregistered.
c) Active
Opposition by Bata: Bata had formally opposed Leayan's trademark application
for "POWER FLEX." An objecting party cannot be said to be
acquiescing.
4. Procedural Side-Notes: Array of Parties
- The Court addressed
the Single Judge's criticism of Bata for impleading the retailer (CBH) as
Defendant No. 1 and Leayan as Defendant No. 2. The Division Bench disagreed,
holding that there is no legal requirement under the CPC or court rules to
implead defendants in a specific "main defendant" order. Both
manufacturer and seller can be equally liable for infringement under the Act.
The manner of arraying parties is not a relevant factor for granting or denying
interim relief, which depends solely on the tripartite test of prima facie
case, balance of convenience, and irreparable injury.
Disposition of the Appeals
In Leayan's Appeal (FAO(OS)(COMM) 105/2019):
- Dismissed. The Court found no error in the Single Judge's
grant of an interim injunction restraining Leayan from using the "POWER
FLEX" mark. The prima facie case of infringement was strong, and none of
Leayan's defences succeeded.
In Bata's Appeal (FAO(OS)(COMM) 193/2019):
- Partially Allowed.
1. Tagline 'THE POWER OF REAL LEATHER': The Court upheld the
Single Judge's decision to allow its use. It reasoned that in this descriptive
tagline, "POWER" was not used as a trademark but as part of an
English phrase emphasizing leather quality, with no undue prominence. No
likelihood of confusion was found.
2. Exhaustion of Existing Stock: The Court declined to
interfere with the discretionary relief allowing Leayan to sell existing stock
with reporting conditions. However, it granted Bata liberty to approach the
Single Judge if it suspected Leayan was selling goods beyond the genuine
existing stock.
3. Deletion of CBH (Chawla Boot House): The Court set aside
this part of the Single Judge's order. It held that CBH, as an alleged seller
of infringing goods, was a proper party. Deleting it at an interim stage
without a trial or formal application was premature.
Conclusion: The Verdict's Resonance
The Delhi High Court's judgment is a robust affirmation of
well-established trademark principles in the digital/commercial age. It
underscores that:
- Distinctiveness is Contextual: A common word can acquire
formidable trademark significance through long, exclusive, and extensive use in
connection with specific goods.
- Consumer Perception is Paramount: Legal tests like
"imperfect recollection" and "initial interest confusion"
protect the consumer's marketplace experience from ambiguity, which is the very
harm trademark law seeks to prevent.
- Defences are Narrowly Constructed: Pleas of
descriptiveness, acquiescence, and delay must be backed by concrete evidence
and must fit within the strict statutory frameworks. Incontestable
registrations and prima facie infringement often tilt the scales decisively in
favour of the plaintiff at the interim stage.
The ruling provides clarity for brand owners, reinforcing
that investment in building brand equity around even a simple word can secure
strong legal protection. For new market entrants, it serves as a cautionary
note to conduct thorough trademark clearance searches, looking beyond
dictionary meanings to the commercial and legal reality of brand landscapes.
Case Title: Leayan Global Pvt Ltd vs. Bata India Ltd
& Connected Appeal [FAO(OS)(COMM) 105/2019 & FAO(OS)(COMM) 193/2019],
Delivered by the Delhi High Court on December 15, 2025.
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