Single-judge Justice RI Chagla passed the order in a trademark infringement case filed by Metro Brands Ltd. (plaintiff) and Nice Shoes LLP (defendant) seeking relief against the use of the mark ‘DESIMOCHI’.
The Bombay High Court recently declared the trademark ‘Mochi’, a popular footwear brand, as a ‘well-known mark’ in India under the Trademarks Act [Metro Brands Ltd. v. Nice Shoes LLP and Ors].
Single-judge Justice RI Chagla passed the order in a trademark infringement case filed by Metro Brands Ltd. (plaintiff) and Nice Shoes LLP (defendant) seeking relief against the use of the mark ‘DESIMOCHI’.
“Apart from the prayer for infringement and passing off, in my view, the Plaintiff has been able to establish that its registered mark ‘MOCHI’ is required to be declared as a well-known mark under Section 2(1)(zg) of the Act. In view thereof, I declare that the registered mark of the Plaintiff ‘MOCHI’ is a well-known trademark under Section 2(1)(zg) of the Act,” the Court ruled while granting interim relief to Metro Shoes.
The dispute arose when Metro accused Nice Shoes of infringing its trademark ‘MOCHI’ by using the similar mark ‘DESIMOCHI’ for their website that sells several goods including shoes under the mark ‘DESIMOCHI’.
Metro Brands argued that the use of ‘DESIMOCHI’ was likely to confuse consumers and damage the reputation of ‘MOCHI’, which has been a recognized brand since 1977.
Metro Brands presented evidence showing the extensive use and recognition of the ‘MOCHI’ mark, asserting that it had become synonymous with quality footwear in India.
The company also highlighted its significant advertising and marketing efforts, which amounted to over ?236 crores from 2012 to 2022, as well as its presence in more than 826 stores across the country.
Advocate Rashmin Khandekar, representing Metro Brands, argued that adding the prefix ‘DESI’ to ‘MOCHI’ did not reduce the likelihood of confusion between the two marks. It was contended that the mere addition of ‘DESI’ as a prefix is of no consequence and does not obviate the likelihood of confusion and unmistakable overall impression of similarity between the rival marks.
Khandekar further emphasized that ‘DESI’ merely suggested Indian origin and did not alter the core identity of the ‘MOCHI’ brand. He cited legal precedents to support his argument.
On the other hand, Nice Shoes argued that ‘MOCHI’ is a common term in India, referring to cobblers and footwear makers.
Nice contended that the strength of a trademark refers to its distinctiveness and ‘MOCHI’ on its own is a relatively weak mark due to its generic nature.
They claimed that the use of ‘DESIMOCHI’ was legitimate and did not infringe upon Metro Brands’ rights and addition of ‘DESI’ creates a distinct overall impression compared to ‘MOCHI’ alone.
After considering the arguments of both parties, the Court ruled in favour of Metro Brands.
“The use by the Defendants of their impugned mark ‘DESIMOCHI’ is clearly after the Plaintiff’s use of its registered mark ‘MOCHI’ which has been in use since 1977,” the Court noted.
It emphasized that the actions of Nice Shoes were likely to mislead consumers and also said that the addition of a generic prefix did not eliminate the similarity between the two marks.
“Mere addition of a generic prefix by the Defendant will not negate the actionable similarity between the rival marks where the Defendants’ mark contains the whole of the Plaintiff’s mark,” it stated.
Hence, it granted interim injunction to Metro against the Nice Shoes restraining them from using the mark ‘DESIMOCHI’ and ordering them to transfer the domain name “www.desimochi.com” to Metro.
“The balance of convenience is also in favour of the Plaintiff as the Plaintiff has been able to establish that it is a user of the registered mark since 1977, and non-grant of injunction against a rank infringer such as the Defendants will result in the Plaintiff being made to suffer irreparable loss and harm,” the Court ruled.
Advocates Rashmin Khandekar, Anand Mohan and Alhan Kayser instructed by advocate Avesh Kayser appeared for Metro Brands.
Advocate Raj Dani instructed by advocate Jyoti Pandey appeared for Nice Shoes.
