Prima Facie Violation: Bombay High Court bans Pune’s Regal Footwear from using ‘Regal’ trademark
A trademark infringement lawsuit brought by the proprietors of Mumbai’s Regal Shoes requested that the Bombay High Court temporarily prohibit Pune’s Regal Footwear from using the mark “Regal.”
The plaintiffs’ case of passing off is made out particularly considering that the competitor marks are identical and utilised for identical goods/services, according to Justice R. I. Chagla in his ruling on a notice of motion in the lawsuit.
“Infringement is made out in light of the prima facie findings that the Plaintiffs have been able to establish use since 1954, including goodwill and reputation, and the Defendant is a junior user, as well as other prima facie findings that the Defendant has failed to establish honest concurrent use as well as the lack of merit in its case of acquiescence,”
A trademark infringement lawsuit brought by the proprietors of Mumbai’s Regal Shoes requested that the Bombay High Court temporarily prohibit Pune’s Regal Footwear from using the mark “Regal.”
The plaintiffs’ case of passing off is made out particularly considering that the competitor marks are identical and utilised for identical goods/services, according to Justice R. I. Chagla in his ruling on a notice of motion in the lawsuit.
“Infringement is made out in light of the prima facie findings that the Plaintiffs have been able to establish use since 1954, including goodwill and reputation, and the Defendant is a junior user, as well as other prima facie findings that the Defendant has failed to establish honest concurrent use as well as the lack of merit in its case of acquiescence,”
The plaintiffs learned in 2017 that the defendant had begun selling shoes under the REGAL brand. Thus, the current lawsuit.
On the plaintiffs’ official website, the plaintiffs claim that two people filed complaints regarding the defendant’s goods in 2019.
The defence asserted that the plaintiffs misrepresented their knowledge of the defendant’s use of the mark in 2008 in their statement. This is due to the fact that, as of 2004, the plaintiffs’ store is located directly across from the defendant’s store in MG Road, Pune. According to the court, this non-disclosure is irrelevant and can only infer delay, which is not a defence in an infringement lawsuit.
The plaintiff’s production of evidence demonstrating their open, uninterrupted, and ongoing use of their trademark since 1954 was acknowledged by the court. The court stated that the defendant’s materials failed to demonstrate their usage since 1963, much less open, extensive, and ongoing use.
Apart from the fact that the Plaintiffs’ trademarks are registered whereas the Defendant has been unable to register its trade mark, the court stated that “The Plaintiffs being prior adopters of their trade mark REGAL enjoy superior title to the Defendant.”
Honest concurrent use of the mark is only permissible for trademark registration, not infringement, hence the court dismissed this defence. The court stated that while “honest concurrent use may defeat a claim for damages, the remedy of an injunction should not be rejected.”
The plaintiffs were running their store at Colaba Causeway, a prestigious shopping location before 1963, the court further found. Advertising has referred to Plaintiffs’ store as a landmark.
According to the court, it would be prima facie evidence that the defendant and its predecessor were aware that the plaintiffs were using the REGAL trademark because they were in the same line of work and belonged to the same religious group as the plaintiffs.
The defendant was utilising the ® sign with the mark in 2017 to imply that it was a registered trademark, the court further noted. It made use of lettering and a font that were similar to the plaintiffs’ mark. Therefore, it was unable to prove business integrity.
The defendant’s assertion that the plaintiffs were tardy in showing up to court because they knew about the defendant’s business was rejected by the court as lacking evidence of acquiescence.
The court determined that there is therefore enough evidence to establish both passing off and infringement.
Abdul Rasul Nurallah Virjee
vs.
Regal Footwear
