Delhi High Court Upholds Injunction Against Leayan Global in Bata Trademark Infringement Dispute

“No court can ignore that ‘POWER FLEX’ fully incorporates Bata’s registered mark ‘POWER’, used for the same class of goods—this is not mere coincidence but a textbook case of deceptive similarity”, Delhi High Court

In a judgment that reinforces the protective scope of registered trademarks against derivative or subsuming uses, the Delhi High Court dismissed cross-appeals in the case of Leayan Global Pvt Ltd v. Bata India Ltd, while affirming the interim injunction granted to Bata India Ltd against the use of the mark ‘POWER FLEX’ by Leayan Global for footwear. The Court held that Leayan's mark was deceptively similar to Bata’s registered ‘POWER’ mark and therefore infringed the latter's statutory rights under the Trade Marks Act, 1999.

The judgment was delivered by a Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla in FAO (OS) (COMM) 105/2019 & FAO (OS) (COMM) 193/2019, rejecting Leayan’s arguments of honest use, delay, and the descriptive nature of the disputed mark. The Court clarified that suggestive marks like 'POWER' are protectable, and the insertion of an additional term like 'FLEX' does not immunize infringement when the infringing mark completely subsumes the registered one.

“POWER FLEX subsumes the entire Bata trademark, and no reasonable consumer is expected to analyse it in isolation”

At the heart of the dispute was the use of the mark ‘POWER FLEX’ by Leayan Global for leather footwear, which Bata alleged was deceptively similar to its registered and long-used trademark ‘POWER’, in use since 1975. Bata filed a suit seeking permanent injunction and interlocutory relief under Sections 29, 28, and 135 of the Trade Marks Act, supported by Order 39 Rules 1 & 2 CPC.

The Single Judge had granted an interim injunction in April 2019, restraining Leayan from using the mark ‘POWER’ or ‘POWER FLEX’, but allowed the limited disposal of existing stocks and the continued use of the tagline ‘THE POWER OF REAL LEATHER’ with certain caveats.

In appeal, the Division Bench upheld the injunction, ruling that the infringing mark ‘POWER FLEX’ created both a likelihood of confusion and an association with Bata’s mark under Section 29(2)(b). The Court emphasized:

“An average consumer who is aware of Bata’s POWER brand used for canvas footwear, on coming across POWER FLEX for leather footwear, is likely to believe that Bata may have expanded into leather shoes.”

Further, the Bench rejected the notion that the two brands operate in distinct commercial spaces, observing that all footwear—leather or canvas—falls under Class 25 of the Nice Classification. The distinction in material or price point could not, therefore, obviate the risk of confusion or brand association.

Descriptive or Laudatory? Court holds ‘POWER’ is suggestive and entitled to full trademark protection

One of the key defences raised by Leayan was that ‘POWER’ is a common, laudatory word, and therefore, Bata could not claim exclusivity. Invoking Section 35, Leayan argued that its mark ‘POWER FLEX’ described the quality or character of its leather footwear, implying flexibility and strength.

This contention was unequivocally rejected. Relying on legal scholarship and comparative jurisprudence, the Bench held:

“The word POWER does not immediately direct the mind to shoes or footwear. It requires a leap of imagination to connect it with the product. It is, at most, suggestive—not descriptive.”

Quoting from Thomas McCarthy’s Trademarks and Unfair Competition, the Court applied the “imagination test”, noting that suggestive marks require consumers to use imagination to connect the mark with the product, whereas descriptive marks immediately convey information about a characteristic of the goods.

The Court also rejected Leayan’s attempt to invoke prosecution history estoppel, based on Bata’s submissions before the Trademark Registry in relation to other POWER-derivative marks. It held that such submissions made in a different statutory context could not dilute the enforceability of a registered mark when viewed from the perspective of the average consumer.

Plea of Delay and Acquiescence: “No one who objects can be said to acquiesce”

Leayan had contended that it had been using ‘POWER FLEX’ since 2010, and Bata, having known of this, took no legal action until 2019, thereby acquiescing. However, the Bench found no factual or legal basis for such a plea.

Firstly, the Court held that Leayan failed to produce convincing evidence of consistent or significant use of the mark POWER FLEX. It noted that most advertisements lacked dates, invoices did not mention the mark, and no independent sales figures linked to the mark were provided.

Secondly, even if there was some prior use, the Bench stressed that Bata had opposed Leayan’s trademark registration in 2017. This was treated as a clear act of objection, which precluded any allegation of acquiescence:

“Objection and acquiescence cannot go hand in hand. One who objects cannot be said to acquiesce.”

Finally, the Court invoked the principle laid down in Midas Hygiene Industries (2004) 3 SCC 90, which bars the defence of delay in cases of proven infringement:

“In cases of trademark infringement, delay alone cannot defeat the right to injunction. If infringement is found, an injunction must follow.”

Limited Relief to Leayan on Tagline Use and Stock Disposal

While upholding the injunction on trademark use, the Court maintained the Single Judge’s direction permitting Leayan to sell existing stocks of infringing goods, provided monthly reports are submitted and no fresh production is undertaken. The Bench noted:

“The decision to allow Leayan to exhaust existing stock… was within the discretion of the learned Single Judge and does not result in any lasting prejudice to Bata.”

As for the tagline ‘THE POWER OF REAL LEATHER’, the Court held that it did not independently infringe Bata’s rights, as the word ‘POWER’ was not given undue emphasis and the phrase, as a whole, would not mislead or confuse consumers:

“An average consumer would read the tagline as emphasizing the leather content of the footwear, not as a brand origin identifier.”

However, the Bench overturned the Single Judge’s direction deleting Chawla Boot House, a retailer of Leayan’s products, from the array of defendants. It held that retailers selling infringing goods are also infringers under Section 29(6)(b) and must face the suit unless properly dropped under Order I Rule 10 CPC.

Appeals Dismissed, Injunction Upheld, Limited Tagline and Stock Disposal Allowed

Summing up its 121-page judgment, the Delhi High Court concluded that:

“Leayan's mark POWER FLEX is deceptively similar to Bata’s POWER mark; the goods are similar; and there exists a likelihood of confusion or association.”

Consequently, the Bench dismissed both appeals, upheld the interim injunction in full, set aside the deletion of the retailer CBH, and reserved liberty for Bata to move the Single Judge in case of any breach of the conditions imposed on stock disposal.

Date of Decision: 15 December 2025