The recent trademark dispute between Metro Shoes and Nice Shoes LLP over the brand name “Mochi” has highlighted critical issues surrounding intellectual property rights in India. The Bombay High Court’s ruling, which favored Metro Shoes, underscores the importance of protecting established trademarks and preventing consumer confusion in a competitive marketplace. Metro Shoes, a prominent player in the Indian footwear industry, has been using the “Mochi” brand since 1977. The company argued that it has built significant goodwill and recognition associated with this brand, supported by substantial marketing efforts amounting to over ₹236 crores from 2012 to 2022. In contrast, Nice Shoes LLP launched its “Desimochi” brand in 2017, prompting Metro to file a lawsuit for trademark infringement and passing off. The core of Metro’s argument was that the use of “Desimochi” was likely to mislead consumers into believing that there was an affiliation between the two brands, thereby damaging Metro’s reputation and market position.
The court’s decision to grant interim relief to Metro was based on several key observations. Firstly, Justice R.I. Chagla declared “Mochi” as a well-known trademark under Section 2(1)(zg) of the Trademarks Act, emphasizing its established identity within the footwear sector. The court noted that adding the prefix “Desi” to “Mochi” did not sufficiently differentiate the two marks; rather, it created a deceptive similarity that could confuse consumers. This ruling is significant as it reinforces the premise that minor alterations to a registered trademark do not absolve infringement liability. In its defense, Nice Shoes contended that “Mochi” is a common term in India associated with cobblers and shoemakers, arguing that their use of “Desimochi” was generic and therefore not infringing. However, the court rejected this argument, asserting that the entirety of Metro’s “Mochi” mark was present in “Desimochi,” making it inherently similar and likely to mislead consumers. The ruling emphasized that even if a mark contains generic elements, its overall impression remains crucial in determining infringement. The court also addressed previous findings from the World Intellectual Property Organization (WIPO), which had dismissed Metro’s complaint on grounds of lack of bad faith by Nice Shoes. The Bombay High Court criticized this perspective, stating that bad faith is not a prerequisite for establishing trademark infringement under Indian law. This clarification is vital as it establishes a more robust framework for protecting trademarks without requiring proof of malicious intent. Moreover, the court highlighted the balance of convenience in favor of Metro Shoes. It recognized that failing to grant an injunction would result in irreparable harm to Metro’s brand integrity and consumer trust. By issuing a temporary injunction against Nice Shoes’ use of “Desimochi,” the court aimed to safeguard both Metro’s interests and consumer rights. This case serves as a critical reminder of the judiciary’s role in upholding intellectual property rights and ensuring fair competition in the marketplace. The Bombay High Court’s ruling not only protects Metro Shoes but also sets a precedent for future trademark disputes in India. It reinforces the notion that established brands must be vigilant against potential infringements that could dilute their identity and market share.
In conclusion, the trademark dispute between Metro Shoes and Nice Shoes LLP reflects broader themes within intellectual property law concerning brand protection and consumer rights. The Bombay High Court’s decision underscores the necessity for businesses to respect established trademarks while also providing clarity on legal standards for assessing trademark infringement. As India continues to evolve as a significant player in global commerce, such rulings will be instrumental in shaping a fair and competitive business environment where innovation can thrive without compromising established rights.
Deevanshu Shrivastava, Associate Dean, School of Law, GD Goenka University, Gurugram.