Acquiescence, Descriptive Use and “Similar Goods” in Trademark Infringement: A Detailed Commentary on Leayan Global Pvt Ltd v. Bata India Ltd

1. Introduction

The Division Bench of the Delhi High Court (C. Hari Shankar, J. and Om Prakash Shukla, J.) in Leayan Global Pvt Ltd v. Bata India Ltd (FAO(OS)(COMM) 105/2019 & 193/2019, decided on 15 December 2025) delivered an important judgment on several interlinked aspects of trademark law:

• What amounts to infringement under Section 29(2)(b) of the Trade Marks Act, 1999;
• How to determine whether goods are “similar” or “allied and cognate” (canvas vs. leather footwear);
• The boundary between distinctive, suggestive and descriptive marks, and the application of Sections 9, 17, 30(2)(a) and 35;
• The scope of the statutory defence of acquiescence under Section 33 and who may invoke it;
• The effect of delay and acquiescence on the grant of injunction in light of Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia;
• Whether “honest concurrent use” can be a defence in infringement proceedings; and
• Procedural propriety in arraying parties, and whether a plaintiff can be non-suited for not listing the “main” defendant as Defendant No. 1.

The case arose out of Bata’s registered trademark POWER for footwear and Leayan Global’s use of POWER FLEX for leather shoes marketed under its RED CHIEF brand. Bata alleged infringement and sought a broad injunction against any mark where “POWER” formed a dominant part.

A Single Judge of the Delhi High Court granted an interim injunction restraining Leayan from using “POWER” (including “POWER FLEX”) as a mark, but:

• Allowed Leayan to continue using the tagline “THE POWER OF REAL LEATHER”, subject to no undue prominence of “POWER”; and
• Allowed disposal of existing stock, and deleted Bata’s retailer-defendant (Chawla Boot House, “CBH”) from the array of parties.

Both sides appealed:

• Leayan’s appeal challenged the injunction against “POWER FLEX” and attacked Bata’s conduct, delay and alleged acquiescence.
• Bata’s appeal challenged permission to use the tagline, permission to dispose of stock, and deletion of CBH as a defendant.

The Division Bench substantially upheld the Single Judge’s substantive conclusions on infringement, descriptive use, and stock disposal, but overturned the deletion of the retailer. In doing so, it laid down several clarifications of lasting importance for trademark litigation strategy and doctrine.

2. Summary of the Judgment

2.1 Parties and Marks

• Respondent/plaintiff in suit; appellant in cross-appeal: Bata India Ltd (“Bata”), proprietor of registered word and device marks for POWER in Class 25 (footwear) since 1975.
• Appellant/defendant: Leayan Global Pvt Ltd (“Leayan”), manufacturer of leather footwear under the brand RED CHIEF, using the mark POWER FLEX for certain footwear since around 2010–2011.
• Retailer: Chawla Boot House (CBH), one of Leayan’s retailers, originally impleaded as Defendant No. 1.

2.2 Single Judge’s Interim Order (16 April 2019)

The Single Judge:

• Restrained Leayan from using “POWER” in respect of footwear, clothing, accessories or related products, including the mark “POWER FLEX”, or any other mark containing the word “POWER”.
• Permitted use of the tagline “THE POWER OF REAL LEATHER” as a slogan or tagline, provided no undue prominence was given to “POWER”.
• Permitted sale of existing “POWER FLEX” stock (as per inventory filed) subject to filing monthly statements of disposal and values, and subject to final adjudication.
• Expressed disapproval of having a retailer (CBH) as Defendant No. 1 rather than the manufacturer, and directed that in future IP cases the “main contesting defendant” should be arrayed as Defendant No. 1.

2.3 Division Bench’s Disposition

The Division Bench dismissed both appeals, with one limited modification:

• In Leayan’s appeal (FAO(OS)(COMM) 105/2019):
  • Upheld the interim injunction restraining Leayan from using the mark/word “POWER”, including “POWER FLEX”, for footwear and allied goods.
  • Rejected Leayan’s arguments on lack of distinctiveness, descriptiveness, dissimilarity of goods, delay, and acquiescence.
• In Bata’s appeal (FAO(OS)(COMM) 193/2019):
  • Affirmed the Single Judge’s decision to:
    • Allow use of the tagline “THE POWER OF REAL LEATHER” (with no undue emphasis on “POWER”); and
    • Allow disposal of existing “POWER FLEX” stock subject to filing monthly statements and values.
  • Set aside the deletion of CBH from the array of defendants, holding that a retailer offering goods for sale under an infringing mark is as much an infringer as the manufacturer.

The Court expressly declined to treat the plaintiff’s choice to list a retailer as Defendant No. 1 as a ground to refuse injunctive relief and disagreed with the Single Judge’s broader procedural prescription on arraying defendants.

3. Detailed Analysis

3.1 Precedents Cited and Their Role

The judgment is richly interwoven with precedent, both to clarify statutory interpretation and to structure the test for likelihood of confusion.

3.1.1 Micolube India Ltd v. Maggon Auto Centre (Single Judge and DB)

• The Single Judge at first instance had relied on the earlier Single Judge ruling in Micolube India Ltd v. Maggon Auto Centre (2008) to criticise the practice of naming a retailer as Defendant No. 1 and the manufacturer as Defendant No. 2, treating this as an “unhealthy trend” aimed at avoiding appearance by the main defendant on the first date.
• In Micolube I, the Single Judge had gone so far as to suggest that such conduct could disentitle the plaintiff to equitable relief.
• The Division Bench in the present case carefully examined the Division Bench decision in the Micolube appeal (Micolube II) and held that there was no affirmation of the “array of parties” reasoning in para 25 of Micolube I.
• The Court emphatically rejected the idea that the sequence in which defendants are listed (retailer first, manufacturer second) can be a legitimate ground either to:
  • deny injunctive relief, or
  • characterise the impleadment as illegal or irregular.

This is a significant recalibration of the procedural lesson often drawn from Micolube I, and it restores focus to the statutory criteria for injunction under Order XXXIX CPC.

3.1.2 Pernod Ricard India Pvt Ltd v. Karanveer Singh Chhabra (2025 SC)

The Division Bench relied on the Supreme Court’s then-recent exposition in Pernod Ricard India Pvt Ltd v. Karanveer Singh Chhabra to restate the principles governing:

• The “average consumer” test;
• The doctrine of imperfect recollection; and
• The application of the classic Pianotist test for deceptive similarity.

The Pernod Ricard passage recited in the judgment emphasises that:

• The average consumer is reasonably well-informed and observant but not an expert;
• Trademarks are remembered in an overall, impressionistic way rather than dissected into individual elements;
• Imperfect recollection and the “first impression” (or “initial interest”) are central to assessing confusion; and
• The comparison must be realistic, not overtechnical, and must eschew a meticulous side-by-side comparison.

This framework directly informs the Court’s conclusion that “POWER FLEX” subsumes “POWER” and is likely to cause confusion/association when both are used for footwear.

3.1.3 Laxmikant V. Patel v. Chetan Bhai Shah

The Single Judge and the Division Bench invoked Laxmikant V. Patel (2002) 3 SCC 65 to highlight an important principle: while assessing confusion and similarity of goods, courts must consider the reasonable scope for expansion of the plaintiff’s business. It is not sufficient that currently:

• Bata uses “POWER” only for sports footwear; and
• Leayan uses “POWER FLEX” only for leather shoes.

Given the market reality where brands often span multiple categories under one umbrella mark, it is perfectly plausible and foreseeable that Bata might extend “POWER” to leather footwear. This future expansion potential weighs in favour of finding “similarity of goods” and likely confusion.

3.1.4 T.V. Venugopal v. Ushodaya Enterprises Ltd.

The distinction between descriptive and suggestive marks, and their registrability and enforceability, was traced to the Supreme Court’s decision in T.V. Venugopal v. Ushodaya Enterprises (2011) 4 SCC 85. That case recognised:

• Descriptive marks (which directly describe the goods, their quality, kind, etc.) are generally not registrable unless they have acquired a secondary meaning.
• Suggestive marks, which require a mental leap or imagination to connect with the goods, are inherently distinctive and capable of protection.

The Division Bench applies this distinction:

• To hold that “POWER”, in relation to footwear, is at best suggestive (connoting strength, performance etc.) and thus distinctive; and
• To reject the defence that “POWER FLEX” is merely descriptive of the character or quality of the leather footwear.

3.1.5 Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia

A critical plank of the decision is the Supreme Court’s ruling in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia (2004) 3 SCC 90. The Division Bench quotes:

“In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.”

The Court rejects the attempt to read this principle as confined only to cases of dishonest adoption. Instead, it treats the rule as a general proposition: once infringement is made out, delay by itself does not bar injunctive relief. Dishonesty may reinforce the conclusion but is not a precondition.

3.1.6 Other Delhi and Calcutta High Court Precedents

The parties cited a range of authorities on delay, acquiescence and prior use, including:

• Qrg Enterprises v. Surendra Electricals (Single Judge and DB);
• Shree Ganesh Besan Mill v. Ganesh Grains Ltd (Calcutta DB);
• Intex Technologies (India) Ltd v. AZ Tech (India) (Del DB);
• Neon Laboratories Ltd v. Medical Technologies Ltd (2016) 2 SCC 672;
• Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd (Del DB);
• Rhizome Distilleries P Ltd v. Pernod Ricard S.A. France (Del DB);
• Sanjha Chulha v. Sanjha Chulha (Del DB).

These cases were primarily relied upon by Leayan to argue that:

• Bata had stood by for years while Leayan built goodwill in “POWER FLEX”;
• Such inaction should either bar or substantially weaken Bata’s claim to interim relief.

The Division Bench acknowledges the jurisprudence on delay and acquiescence but ultimately anchors its decision in the statutory framework of Section 33 and the Midas Hygiene principle, thereby limiting the role these precedents can play in the face of a clear finding of infringement.

3.1.7 Amritdhara Pharmacy v. Satya Deo Gupta and “Average Consumer”

The classic test in Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) is invoked (via Pernod Ricard and other authorities) to emphasise that:

• The relevant viewpoint is that of a person of average intelligence and imperfect recollection;
• Such a person does not engage in a finely tuned, side-by-side comparison of the marks; and
• Overall impression and first recollection are key to assessing deceptive similarity.

3.2 Court’s Legal Reasoning

3.2.1 Framework of Infringement and Remedies

The Court sets out a clear statutory roadmap before applying it to the facts.

(a) Infringement under Section 29(2)(b)

The Division Bench focuses on Section 29(2)(b), which defines one of the core species of infringement:

• Registered mark: Only a registered trademark can be infringed. Bata’s “POWER” word and device marks are registered in Class 25 for footwear since 1975. Leayan’s “POWER FLEX” is unregistered.
• Use in the course of trade: Section 29(6) and Section 2(2)(b), (c) clarify that “use” includes:
  • Affixing the mark to goods or packaging;
  • Offering or exposing goods for sale, putting them on the market, stocking, importing/exporting;
  • Use in business papers or advertising; and
  • Any visual representation of the mark “upon, or in any physical or other relation” to the goods.
• Similarity of marks: The alleged infringing mark must be similar to the registered mark (here, “POWER FLEX” vis-à-vis “POWER”).
• Identity or similarity of goods: The goods covered by the rival marks must be identical or similar.
• Likelihood of confusion or association: Because of the similarity of marks and goods, there must be a likelihood of either:
  • Confusion on the part of the public; or
  • An association being made between the marks.

If these elements are satisfied, infringement follows.

(b) Rights of the Registered Proprietor under Section 28

Once infringement is established, Section 28(1) confers on the registered proprietor:

• Exclusive right to use the mark in relation to the goods/services for which it is registered; and
• Right to relief in respect of infringement “in the manner provided” by the Act.

Reliefs are then dealt with in Section 135(1), which includes:

• Injunctions (on such terms as the court thinks fit);
• At the plaintiff’s option, damages or an account of profits; and
• Delivery up of infringing labels/marks.

(c) Composite Marks and Section 17

Section 17 clarifies that where a trademark consist of several parts:

• Section 17(1): Registration gives exclusivity over the mark “taken as a whole”.
• Section 17(2): No exclusivity is conferred over:
  • Unregistered or unapplied-for parts (sub-clause (a)); or
  • Parts common to trade or “otherwise of a non-distinctive character” (sub-clause (b)).

Leayan invoked Section 17(2)(b) to argue that “POWER” as a common dictionary word cannot be monopolised and lacks distinctive character. The Court deals with this under the distinctiveness analysis (see 3.2.3 below).

(d) Exceptions to Infringement: Section 30(2)(a)

Section 30 carves out situations where an act, even if falling within Section 29, will not amount to infringement. Relevant here is Section 30(2)(a):

“A registered trade mark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production … or other characteristics of goods or services.”

Thus, purely descriptive use of a term indicating characteristics of goods may be protected, even if similar to a registered mark.

(e) Additional Constraints on Injunction: Sections 33 and 35

• Section 33 (Acquiescence): Bars the proprietor of an earlier trade mark from challenging a later registered mark if the former has, being aware of its use, acquiesced in it for a continuous period of five years.
• Section 35: Prevents a registered proprietor from restraining the bona fide use by a person of:
  • His own name, address or predecessor’s name; or
  • A description of the character or quality of his goods or services.

These provisions are central to the Court’s treatment of delay and descriptive use.

3.2.2 Application to “POWER” vs. “POWER FLEX”

(a) Registration and Prior Use

• Bata has multiple registrations for “POWER” (word and device) in Class 25, covering footwear, dating back to 1975.
• The earliest invoice showing use of “POWER” for footwear dates to 29 September 1988; extensive advertising and goodwill build-up (including endorsements by prominent cricketers) was evidenced.
• Leayan has no registration for “POWER FLEX” or any “POWER”-formative mark. Its application for “POWER FLEX” in Class 25 was filed in 2009 on a “proposed to be used” basis. Bata opposed the application in 2017.

The Court notes that Leayan cannot claim any statutory right as a registered or permissive user. The entire edifice of its defence must therefore rest on non-infringement and statutory exceptions (Sections 30, 33, 35).

(b) Similarity of Goods: Canvas vs. Leather Footwear

Leayan argued dissimilarity on the basis that:

• Bata uses “POWER” for sports/canvas footwear; and
• Leayan uses “POWER FLEX” for leather shoes, at higher price points.

The Court rejects this defence for several reasons:

• Same class & category: Both fall in Class 25, which covers all footwear (“clothing, footwear, headgear”). The Court treats all footwear as at least “similar” for Section 29(2)(b).
• Allied and cognate goods: The concept of “similar” is broad, particularly in modern markets where brands span multiple, diverse goods under a single mark. Canvas and leather shoes are quintessentially allied goods.
• Expansion of business: Relying on Laxmikant V. Patel, the Court stresses the reasonable possibility that Bata could expand “POWER” to leather footwear. This must be kept in mind when assessing confusion.

Accordingly, the requirement of similar goods is clearly met.

(c) Similarity of Marks and the “Initial Interest” Standard

The Court emphasises two important doctrines:

• No side-by-side comparison: The average consumer does not place the two marks next to each other and compare. They encounter marks at different times and rely on imperfect recollection.
• Initial interest confusion / wonderment: As recognised in cases like Shree Nath Heritage Liquor and Under Armour Inc. v. Anish Agrawal, if the consumer’s initial reaction to “POWER FLEX” is “haven’t I seen this earlier?” or a sense of association with Bata’s “POWER”, that suffices to establish confusing similarity.

Applying these:

• “POWER FLEX” fully incorporates “POWER”, which is the entirety of Bata’s mark.
• Given both are used for footwear, an average consumer is likely to:
  • Assume “POWER FLEX” is a sub-brand or variant (e.g. flexible line) of Bata’s “POWER” brand; or
  • At least sense an association between them.

This satisfies the test under Section 29(2)(b): similarity of the marks, similarity of goods, and likelihood of confusion or association. The Court therefore finds a strong prima facie case of infringement.

3.2.3 The “Distinctive–Descriptive” See-saw: POWER and POWER FLEX

(a) Is “POWER” Non-Distinctive under Section 17(2)(b) and Section 9(1)(a)?

Leayan argued that “POWER” is:

• A laudatory and common dictionary word;
• Common to trade; and
• Therefore non-distinctive, disentitling Bata to exclusivity over it.

The Court responds by tying Section 17(2)(b) to the concept of “distinctive character” in Section 9(1)(a). A mark is devoid of distinctive character if it is not capable of distinguishing one trader’s goods from another’s. Crucially:

• Distinctiveness must be judged in relation to the goods or services, not in abstraction.
• A common word can be distinctive when applied to goods with which it has no immediate, descriptive connection.

Applied to footwear:

• The dictionary meaning of “power” (ability, control, dominance) does not directly describe shoes.
suggestive, not descriptive marks.

Therefore:

• “POWER” is not “devoid of distinctive character” for footwear.
• Section 17(2)(b) cannot be invoked to deny Bata exclusivity over the mark.

(b) Is “POWER FLEX” Descriptive and Protected under Sections 30(2)(a)/35?

Leayan also tried to characterise “POWER FLEX” as describing a characteristic of its footwear (their flexibility and strength), and thus protected as descriptive use under Sections 30(2)(a) and 35.

The Court rejects this:

• The mark “POWER FLEX” does not immediately and directly describe footwear. It does not by itself tell the consumer that the product is a shoe, or of any particular technical feature.
• Even if Leayan’s footwear is in fact flexible, “POWER FLEX” at most suggests that the shoes combine power and flexibility. That still does not amount to a direct description of goods’ character or quality under Section 35.

The Court applies a practical test: how much imagination is required to connect the mark to the product?

• If the connection is immediate and obvious, the mark is descriptive.
• If a mental leap is necessary, the mark is suggestive.
• If no real connection exists (e.g. “TODAY” for perfumes), the mark is arbitrary or fanciful.

On this scale:

• “POWER FLEX” is not descriptive of footwear or its characteristics; at best it may be suggestive.
• Therefore, Sections 30(2)(a) and 35 do not protect Leayan’s use of “POWER FLEX” as a mark.

3.2.4 Acquiescence and Delay: Narrow Reading of Section 33 and Broad Reading of Midas Hygiene

(a) Factual Allegation of Delay and Acquiescence

Leayan contended that:

• It started using “POWER FLEX” in 2010–2011, with high-profile endorsements (Virat Kohli) and wide advertising;
• Bata only opposed its registration in 2017 and sued in 2019;
• In the interim, Leayan had built substantial goodwill in “POWER FLEX”; and
• Bata, having stood by, should now be barred from injunctive relief on principles of delay and acquiescence.

(b) Evidentiary Failure: No Proven Goodwill in “POWER FLEX”

The Court is unsparing in its scrutiny of the alleged goodwill:

• Of 97 newspaper advertisements produced, only 10 bore printed dates (all 13 October 2013). For the rest, the dates were not visible or ascertainable.
• The TV and magazine advertisements largely related to the broader “RED CHIEF” brand, with “POWER FLEX” either absent or marginal.
• 81 invoices filed did not mention “POWER FLEX” at all—only article numbers were used, and no correlation was provided between those numbers and the “POWER FLEX” line.
• No certified turnover data showing sales specifically under the “POWER FLEX” mark, nor promotional budgets tied to it, were placed on record.

The Court therefore concludes that the material is “as good as nil” for establishing that “POWER FLEX” itself, as a mark, had acquired substantial goodwill or reputation. General reputation of Leayan or of “RED CHIEF” does not equivalently prove goodwill in “POWER FLEX”.

(c) Statutory Unavailability of Section 33 to Unregistered Users

Crucially, the Court grounds its analysis in the text of Section 33(1), which speaks of:

“Where the proprietor of an earlier trade mark has acquiesced … in the use of a registered trade mark … he shall no longer be entitled … to oppose the use of the later trade mark…”

The Division Bench reasons:

• The defence of acquiescence under Section 33 is confined to situations where:
  • The defendant’s mark (the “later” mark) is registered; and
  • The proprietor of the earlier registered mark has knowingly allowed its use for five years.
• Because “POWER FLEX” is unregistered, Leayan cannot invoke Section 33 at all.

This is a key holding: the Section 33 defence is statutorily unavailable to proprietors of unregistered marks. Acquiescence, as a statutory bar to infringement claims, is not a general equitable defence but a targeted one tied to registration.

(d) No Acquiescence in Fact: Opposition to Registration

Independently of the formal bar, the Court notes that Bata:

• Opposed Leayan’s application for registration of “POWER FLEX” in 2017; and
• Filed the infringement suit in 2019.

Opposition and acquiescence are conceptually incompatible. One who formally opposes a mark’s registration cannot be said to have silently tolerated its use. Thus, even on first principles, no acquiescence can be inferred.

(e) Delay No Bar where Infringement Made Out: Midas Hygiene Applied

The Court then addresses the broader argument that long delay should, as a matter of equity, militate against an injunction. Here it relies squarely on Midas Hygiene:

• It reads para 5 as laying down a general rule that, in clear cases of infringement, an injunction “must normally follow”.
• Delay in approaching the court is, by itself, not enough to defeat injunctive relief.
• The reference to dishonest adoption in para 6 is viewed as an additional aggravating factor, not a limiting qualifier.

Accordingly, once the Court finds a strong prima facie infringement of Bata’s registered mark by “POWER FLEX”, the alleged 8–9 years’ delay does not bar the grant of an injunction.

3.2.5 Honest Concurrent Use: Limited to Registration Proceedings

Leayan also invoked the concept of honest concurrent use, more specifically under Section 12 of the Act, to justify continued use of “POWER FLEX”.

The Court, echoing Bata’s submissions and not contradicting them, accepts that:

• The doctrine of “honest concurrent use” under Section 12 is a registration-stage concept, empowering the Registrar to permit registration of similar/identical marks in special circumstances.
• It is not a substantive defence in an infringement suit.

Thus, even assuming honest concurrent use, it does not prevent the Court from injuncting use of an infringing mark.

3.2.6 Descriptive Use and the Tagline “THE POWER OF REAL LEATHER”

A central point in Bata’s cross-appeal was the Single Judge’s refusal to enjoin Leayan’s use of the tagline “THE POWER OF REAL LEATHER”. The Division Bench agrees with the Single Judge and gives a nuanced justification.

• The tagline, as used by Leayan, does not give undue visual or conceptual prominence to the word “POWER”. It is perceived as a whole phrase.
• To an average consumer, the dominant impression is about the quality of leather (emphasising that the shoes are made of real leather with strong attributes) rather than about Bata’s “POWER” brand.
• There is neither:
  • Any real likelihood of confusion between the tagline and Bata’s “POWER” mark; nor
  • Any likelihood of association with the “POWER” footwear line.

In effect, this is a controlled application of the descriptive use principle of Sections 30(2)(a) and 35:

• The Court tolerates use of the word “POWER” as part of a bona fide, descriptive sentence about product quality (real leather) as long as it is not used as a trademark or given special prominence.
• At the same time, it prohibits “POWER FLEX” as a mark for footwear, because that crosses the line into functioning as a source identifier rather than descriptive language.

This distinction is commercially very significant: it indicates that advertisers can, within limits, use ordinary laudatory words (even those registered as marks) in sentences describing product attributes, provided they do not appropriate such words as stand-alone or dominant marks.

3.2.7 Procedural Issues: Array of Defendants and Retailer Liability

(a) Order of Defendants Cannot Affect Injunction

The Division Bench strongly disagrees with the notion that the order in which defendants are listed (retailer as Defendant No. 1, manufacturer as Defendant No. 2) can:

• Be treated as irregular or illegal; or
• Be a basis to deny interim relief to a plaintiff.

Key points:

• The Code of Civil Procedure (CPC) does not prescribe any order in which defendants must be arrayed.
• Order XXXIX CPC allows injunctions based solely on:
  • Prima facie case;
  • Balance of convenience; and
  • Irreparable injury (and public interest in certain categories).
• Adding extra, judge-made considerations such as the sequence of defendants is contrary to these basic principles.

Thus, while the Single Judge’s criticism may be noted, it cannot translate into substantive prejudice against the plaintiff.

(b) Retailer as Infringer: CBH’s Deletion Set Aside

On CBH, the Division Bench firmly holds:

• Section 29(2) read with Section 29(6)(b) treats offering for sale or stocking goods under an infringing mark as “use in the course of trade”.
• Therefore, both:
  • The manufacturer affixing the mark; and
  • The retailer offering those goods for sale
  are infringers.
• There is no concept of “main” vs. “lesser” infringers in the statute.
• CBH was shown to have issued at least one invoice for “POWER FLEX” goods and is therefore a proper party.
• Deleting CBH without any application under Order I Rule 10 CPC, and without a proper determination of its role, was unwarranted.

The Court, therefore, sets aside the deletion of CBH but otherwise leaves the interim order intact.

3.2.8 Existing Stock: Judicial Discretion in Moulding Interim Relief

On the question of existing stock, the Division Bench takes a pragmatic view:

• Permitting sale of already manufactured inventory, subject to strict conditions (no fresh manufacture, monthly statements of quantities and values, and subject to final outcome), is “well within” the trial court’s discretion.
• This arrangement causes no lasting prejudice to Bata, since:
  • No fresh infringing goods can be created; and
  • The sales and values are being recorded for possible future reliefs (damages/account of profits).

Bata’s allegation that Leayan has misused this liberty by selling more than the originally declared stock is left open. The Court explicitly reserves Bata’s liberty to seek relief on that aspect before the Single Judge through appropriate applications.

3.3 Likely Impact and Significance

3.3.1 For Trademark Owners

• Strengthening of Registered Rights: The decision reinforces that once a mark is registered and a clear case of infringement is made out, courts will be reluctant to deny injunction merely because the plaintiff delayed suing, especially where the defendant is unregistered.
• Value of Early Opposition: Bata’s opposition to the “POWER FLEX” registration was critical in negating any narrative of acquiescence. Brand owners should actively monitor and oppose conflicting applications at the Registry stage.
• Scope of Exclusivity over Common Words: The case confirms that common words like “POWER” can be distinctive and enforceable when used in a non-descriptive manner for specific goods. Registration strategy for such marks is vindicated.

3.3.2 For Defendants and Users of “Common” or Laudatory Terms

• Registration Matters for Acquiescence: Users of unregistered marks cannot rely on Section 33 to shield themselves. They must either:
  • Register their marks (risking opposition); or
  • Rely on other defences (non-infringement, descriptive use, non-trademark use) with proper evidence.
• Evidence Threshold for Goodwill: Anyone pleading long, honest concurrent use or acquiescence must marshal:
  • Clear, dated advertisements showing the mark;
  • Invoices or sales data where the mark is specifically referenced or can be cogently correlated;
  • Certified turnover and advertising figures attributable to the impugned mark.
  Vague, undated, or brand-level materials (without the specific mark) will not suffice.
• Taglines vs. Trademarks: Use of registered words in non-prominent, descriptive taglines may pass muster, but adopting them as standalone or dominant features of a mark for similar goods is risky.

3.3.3 For Litigators and Procedural Strategy

• Array of Parties: Plaintiffs are free to implead manufacturers, distributors and retailers as defendants. The order in which they are listed has no substantive legal consequence for interim relief.
• Retailer Liability: Retailers and stockists who sell infringing goods can be held liable as infringers under Section 29(6)(b). They are proper parties and cannot be casually dropped.
• Honest Concurrent Use: Counsel should be mindful that Section 12 arguments are confined to registration proceedings before the Registrar or on rectification, not as a standalone defence at the infringement stage.

3.3.4 Doctrinal Clarifications

• Section 33 confined to registered later marks: The judgment provides a clear, text-based clarification that the statutory acquiescence defence is not available to unregistered users.
• Descriptive Use vs. Trademark Use: The differential treatment of “POWER FLEX” (prohibited) vs. “THE POWER OF REAL LEATHER” (permitted) offers a practical template for assessing when a registered word can still be used descriptively in advertising.
• Expansive view of “similar goods” and “association”: By holding that canvas and leather footwear are similar, and that even association (not just confusion) suffices, the Court underscores a robust protective approach toward well-established marks.

4. Complex Concepts Simplified

4.1 Deceptive Similarity and the “Average Consumer”

Deceptive similarity is not about a meticulous side-by-side comparison by a trademark lawyer. Instead, the law asks:

• What would a reasonably careful but not expert shopper think when they see the defendant’s mark, having a hazy memory of the plaintiff’s mark?
• Would they:
  • Think the goods come from the same source?
  • Wonder whether there is some connection between the two traders?

In this case, if a consumer knows Bata’s “POWER” sports shoes and then encounters “POWER FLEX” leather shoes, they might easily assume that “POWER FLEX” is a new, flexible line from Bata. That “wonderment” is enough for confusion/association.

4.2 Distinctive vs. Descriptive vs. Suggestive Marks

• Descriptive marks directly tell you something essential about the product:
  • “SWEET SUGAR” for sugar;
  • “FAST PAIN RELIEF” for a painkiller.
  These are usually not registrable unless they have become uniquely associated with a single source over time.
• Suggestive marks hint at qualities but require some imagination:
  • “POWER” for shoes suggests strength and performance but does not literally describe shoes;
  • “JAGUAR” for a car suggests speed and style, not the product category itself.
  Such marks are inherently distinctive and protectable.
• Arbitrary/fanciful marks bear no apparent relation to the goods:
  • “APPLE” for computers;
  • “TODAY” for perfumes.
  These are the strongest marks.

The Court places “POWER” (for footwear) and “POWER FLEX” at least in the suggestive category, not descriptive, thereby supporting Bata’s rights.

4.3 Acquiescence vs. Simple Delay

• Delay means the plaintiff took a long time to sue. Standing alone, delay usually does not bar relief in clear infringement cases (Midas Hygiene).
• Acquiescence goes further. It means the plaintiff:
  • Knew of the defendant’s use of the mark;
  • Stood by silently (or otherwise indicated consent); and
  • Allowed the defendant to build up goodwill under that mark for years.
• Under Section 33, acquiescence is a special, statutory form of delay applicable only where the defendant’s mark is registered and the plaintiff has acquiesced for five years while aware of that use.

Because “POWER FLEX” is not registered, and because Bata opposed its registration, the Court finds no acquiescence in this statutory sense.

4.4 Honest Concurrent Use

“Honest concurrent use” under Section 12 allows the Registrar, at the registration stage, to permit two similar marks to coexist if:

• Both have been honestly adopted and used for some time; and
• Special circumstances justify registration despite conflict.

This does not mean that once infringement is alleged, a defendant can always escape injunction because of honest use. In infringement suits, the core question remains: does the defendant’s use cause a likelihood of confusion or association with the registered mark?

4.5 Descriptive Use Defence

The law recognises that:

• Traders must be able to describe their products—e.g., “pure cotton”, “low sugar”, “extra strong”.
• Even if some of these words are part of a registered trademark, they can be used descriptively by others in normal language, as long as they are not used as distinctive marks.

In this case:

• “POWER FLEX” is used as a mark on shoes and is therefore infringing.
• But “THE POWER OF REAL LEATHER” is a sentence praising the leather quality. “POWER” is not singled out as a mark. This usage can pass as permissible descriptive or laudatory language.

4.6 “Use in the Course of Trade” and Retailer Liability

A mark is used “in the course of trade” when:

• It is applied to goods;
• Goods bearing the mark are offered for sale or stocked; or
• The mark appears on invoices, advertisements or packaging.

Therefore:

• The manufacturer who applies the mark is an infringer.
• The retailer who sells or offers those marked goods for sale is also an infringer.

This is why CBH remains a proper defendant in Bata’s suit.

5. Conclusion

The Division Bench’s judgment in Leayan Global Pvt Ltd v. Bata India Ltd is a significant addition to Indian trademark jurisprudence on several fronts:

• It affirms a robust approach to infringement under Section 29(2)(b), particularly where the defendant fully incorporates the plaintiff’s mark into its own for similar goods, and clarifies that “similar goods” includes allied products like canvas and leather footwear.
• It clarifies that the defence of statutory acquiescence under Section 33 is available only in favour of proprietors of registered later marks. Unregistered users cannot invoke Section 33 to resist injunctions.
• It endorses the broad reading of Midas Hygiene that delay alone does not defeat an otherwise meritorious claim for injunction in infringement cases, without confining the rule to dishonest adoption scenarios.
• It draws a careful line between:
  • Prohibited trademark use of registered words (e.g., “POWER FLEX” for shoes); and
  • Permissible descriptive use in taglines without undue prominence (e.g., “THE POWER OF REAL LEATHER”).
• It reaffirms the protectability of common words like “POWER” when used in a non-descriptive, suggestive manner for specific goods such as footwear.
• Procedurally, it disapproves the practice of using the order of defendants as a ground to deny interim relief, and confirms that retailers offering infringing goods are proper defendants and infringers under Section 29(6)(b).

For brand owners, the case underlines the importance of timely opposition, registration and consistent enforcement of their marks. For defendants, it is a warning that unregistered reliance on common or laudatory words, even with some history of use, will not easily defeat a registered proprietor’s rights—especially where the evidence of goodwill is weak. For the courts and practitioners, the judgment offers a structured, statute-led template for analysing infringement, distinctiveness, descriptiveness, acquiescence and relief in trademark litigation.