Bombay High Court: In an issue to determine whether the defendants, by using the impugned mark METRO FOOTWEAR, had violated the proprietary rights of the registered owner of the trade mark ‘METRO’, a Single Judge Bench of Sharmila U. Deshmukh, J., while allowing the interim application, held that the registered mark ‘METRO’ had been continuously used since 1955, with its registration in 1972, and therefore, granted temporary injunctions to restrain the defendants from using the impugned mark and passing off its goods as that of the plaintiff’s.
Background:
The plaintiff, engaged in the business of footwear, bags, accessories, leather goods and services, and having over 826 showrooms in about 100 cities in India, claimed the extensive use of the mark ‘METRO’ since 1955. It registered the mark ‘METRO’ in class 25 on 21-12-1972 and stated a cumulative turnover of over Rs 13,000 crore and advertisement and promotional expenses of over Rs 380 crores between 1987 and 2022. The plaintiff submitted that it came to know, on 01-12-2022, that the defendant was operating a store under the name and style of METRO FOOTWEAR carrying on business in the same class as that of the plaintiff. Many Cease-and-Desist notices were issued, to which Defendant 1 asserted prior use of the name METRO FOOTWEAR since 1982.
The plaintiff submitted that the defendant’s mark was an unregistered mark, with the plaintiff’s entire registered mark subsumed in the defendant’s mark METRO FOOTWEAR, and that the addition of the word ‘footwear’ was immaterial as the same was descriptive. The plaintiff further alleged that the defendants had stalled the proceedings under the pretext of settling the matter, and neither the settlement had taken place, nor had any reply been filed. It contended that the material-on-record, prima facie, established his proprietary right in respect of the registered mark ‘METRO’, and the infringement by the defendants by use of the impugned mark in respect of the same class.
Analysis and Decision:
The Court noted that the earliest registration of the ‘METRO’ mark was in 1972 in class 25 and that the plaintiff’s domain name also used the trade mark. The Court opined that the defence of prior use since 1982 was not available to the defendants considering the registration of the plaintiff’s mark ‘METRO’ in 1972, and further, no material was produced by the defendants to substantiate such a claim.
The Court clarified that the registration of the plaintiff’s mark in the year 1972 prima facie granted an exclusive right to the plaintiff to use it, which was infringed when the defendants used the impugned mark METRO FOOTWEAR. The Court opined that the manner in which the defendants marketed their goods and services under the mark METRO FOOTWEAR made it evident that they intended to pass off their products as those of the plaintiff, which was likely to cause injury to the plaintiff’s goodwill and reputation.
The Court also noted that the plaint showed an advertisement published in 1955 as regards the plaintiff’s mark that established that the plaintiff had been using the mark ‘METRO’ continuously and uninterruptedly since 1955.
Therefore, the Court, while allowing the present interim application, granted temporary injunctions, restraining the defendants from manufacturing, selling, distributing, advertising, or stocking products under the mark ‘METRO FOOTWEAR’ or any similar mark that infringed or passed off as plaintiff’s registered trade mark ‘METRO’. However, the Court stated that the issue of whether the plaintiff’s mark ‘METRO’ would be a well-known mark would be addressed subsequently.
[Metro Brands Ltd. v. Metro Footwear, 2025 SCC OnLine Bom 4447, decided on 10-11-2025]
Advocates who appeared in this case :
For the Plaintiff: Venkatesh Dhond, Senior Advocate a/w Rashmin Khandekar, Alhan Kayser, Varsha Vasave & Gauri Sansare i/b Avesh Kayser.