Bombay High Court Temporarily Restricts Pune's Regal Footwear from using 'Regal' Trademark

Bombay High Court Temporarily Restricts Pune's Regal Footwear from using 'Regal' Trademark

The Bombay High Court in the case of Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee v. Regal Footwear found prima facie infringement and imposed a temporary restriction on the Defendant-Regal Footwear from using the mark 'Regal' in a trademark infringement suit filed by the owners of Mumbai's Regal Shoes.

The plaintiffs- Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee are the registered owner of the mark 'Regal' for footwear and leather articles. The plaintiffs asserted that since 1954 they been carrying out its business under the mark Regal/Regal Footwear/ Regal Shoes and that the mark was registered in 1972. According to the plaintiffs, in 2017 they found that the defendant had started selling footwear with trademark REGAL. Consequently, in 2019 complaints were filed on the plaintiff's official website about the defendant's product.

The defendant argued that the trademark REGAL was adopted by them in the year 1963 and since then it has been used by them. In 2020 the defendant's 2006 trademark registration application stood rejected. The defendant asserted that the plaintiffs made a false statement that they came to know in 2008 about defendant's use of mark and highlighted that the plaintiffs shop situated diagonally opposite to the defendant's shop in MG Road, Pune from 2004.

The Court recognized that the plaintiff had produced evidence to demonstrate that they had been using their trademark continuously and openly since 1954. There was no credible evidence provided by the defendant that they have been using their products since 1963, much less having used them continuously, extensively, and openly. The Court denied the defence of honest concurrent use of the mark as it was only available for trademark registration and not infringement.

The single judge Justice R. I. Chagla while deciding a notice of motion clarified, "the case for 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. I further find that the balance of convenience is also in favor of the Plaintiffs considering the 'comparable strength' principle laid down by the Supreme Court in Cadila Healthcare Ltd."

The Court acknowledged advertisements which referred the plaintiff's shop is a landmark shop as they were operating their shop at Colaba Causeway, a premier shopping address prior to 1963. The defendant's predecessor being in the same trade as well has belonging to the same religious community as the plaintiffs, prima facie showed that the defendant and its predecessor knew about the plaintiffs' use of REGAL trademark, the Court added, hence it failed to establish commercial honesty.

The Court observed, the defendant's case of acquiescence on the part of the Plaintiffs, prima facie view, did not satisfy the tests that establish a defense of acquiescence. The defendant's case of acquiescence was that the plaintiffs had knowledge of the defendant coupled with tardiness of coming to the Court and which according to the defendant amounted to the plaintiff's acquiescence to the defendant's use of its mark REGAL.

Consequently, the Court concluded that a prima facie case for infringement and passing off was made out.