Bata's Battle Of Power

The Delhi High Court's Division Bench decision in Leayan Global Private Limited v. Bata India Limited marks an important clarification in Indian trade mark law on the interplay between Sections 17 and 35 of the Trade Marks Act, 1999 ("Act"). The judgement revisits a recurring tension in infringement litigation pertaining to the extent to which registration of a composite mark confers exclusivity over its constituent elements and the circumstances in which a defendant may invoke statutory defences of bona fide descriptive use.

While Sections 17 and 35 are often invoked together, they are conceptually distinct and serve different legislative purposes. Section 17 defines the scope of exclusivity conferred by registration, particularly for composite marks, whereas Section 35 acts as a statutory safeguard preserving honest descriptive use and use of personal names. The Bata v. Leayan decision demonstrates how these provisions must be read together, not in isolation, and how equitable doctrines such as acquiescence and delay interact with statutory infringement analysis. The judgment assumes significance beyond the immediate dispute between the parties.

Factual Background

Bata India Limited, one of India's oldest and most recognisable footwear brands is the registered proprietor of several trade marks incorporating the word 'POWER' including composite and label marks used extensively in relation to footwear. The mark 'POWER' has been used by Bata for decades and enjoys substantial goodwill and consumer recognition in the relevant market.

Leayan Global Private Limited adopted and used the mark 'POWER FLEX' for footwear products. Bata instituted infringement and passing off proceedings, contending that the adoption of 'POWER FLEX' amounted to infringement of its registered trade marks and was likely to cause confusion due to the prominence of the word 'POWER' which formed the dominant and distinctive element of Bata's marks.

Leayan resisted the suit on multiple grounds. It argued that Bata's registration was for a composite mark and did not confer exclusivity over the word 'POWER' per se relying on Section 17 of the Act. It further invoked Section 35 contending that 'POWER' was descriptive of the quality or characteristic of footwear and its use of 'POWER FLEX' constituted bona fide descriptive use. Leayan also raised equitable defences of delay and acquiescence arguing that Bata had been aware of its use for several years and was disentitled to injunctive relief. The Single Judge granted injunction in favour of Bata. Leayan appealed to the Division Bench, which dismissed the appeal and upheld the injunction leading to the present decision.

Scope of Exclusivity in Composite Marks

Section 17 of the Act addresses the effect of registration of composite marks. It provides that registration confers exclusive rights in the trade mark taken as a whole but clarifies that where a mark contains matter that is common to the trade or is otherwise non-distinctive, registration does not confer exclusive rights in such matter separately.

Defendants in infringement actions often rely on Section 17(2) to argue that registration of a composite mark does not permit the proprietor to monopolise individual components. However, Indian courts have consistently held that Section 17 cannot be used to defeat infringement where the defendant has appropriated the dominant or essential feature of the registered mark.

The Supreme Court's decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories¹ remains the doctrinal foundation in this regard. The Court held that infringement is established when the essential features of the registered mark are adopted even if other elements differ. This principle has been reiterated in Parle Products Private Limited v. J.P. & Co.² where the Court emphasised that marks must be compared as a whole but that prominence and distinctiveness of components cannot be ignored.

In the present case, the Division Bench applied this settled doctrine. It rejected the argument that Section 17 immunised Leayan merely because Bata's registration was composite. The Court held that the word 'POWER' was not a trivial or incidental part of Bata's mark but its dominant and source identifying element. Adoption of 'POWER FLEX' particularly in the same product category amounted to taking the heart of the registered mark.

The judgement thus reinforces that Section 17 limits the scope of exclusivity only in relation to non-distinctive or common elements not dominant features that have acquired distinctiveness through use.

Defence of Descriptive Use

Section 35 of the Act preserves the right of any person to use bona fide descriptions of the character or quality of goods or services. The provision embodies a balance between trade mark exclusivity and free commercial speech ensuring that registration does not stifle honest descriptive use.

However, the defence under Section 35 is narrowly construed. Courts have consistently held that the defence is unavailable where the impugned use is not descriptive in substance or where it is used as a trade mark rather than as a description. In Marico Limited v. Agro Tech Foods Limited³, the Delhi High Court clarified that descriptive use must be honest, necessary and not calculated to trade upon the goodwill of another.

In the present case, the Division Bench examined the manner of use of 'POWER FLEX' and found that it was used as a brand identifier not as a descriptive phrase. The Court observed that 'POWER' was prominently displayed and functioned as a badge of origin not in a descriptive sense. The addition of 'FLEX' did not convert the mark into a descriptive phrase, rather it reinforced the impression of a sub-brand or variant.

The Court also rejected the argument that 'POWER' was inherently descriptive of footwear. While certain words may carry suggestive overtones, long and extensive use can confer distinctiveness. The judgment aligns with prior authority including ITC Ltd. v. Britannia Industries Ltd.⁴ where the Court held that even suggestive words can acquire secondary meaning and attract protection.

Accordingly, Section 35 was held inapplicable. The decision underscores that descriptive use is a defence of substance and cannot be invoked merely by asserting that a word has a dictionary meaning.

Interplay

One of the key contributions of this judgement lies in its integrated reading of Sections 17 and 35. The Court implicitly recognised that these provisions operate at different stages of analysis. Section 17 addresses what rights registration confers while Section 35 addresses when those rights may be overridden by honest use. It is made clear that Section 35 does not dilute the scope of rights under Section 17 unless its stringent requirements are met. A defendant cannot rely on Section 17 to deny exclusivity over a dominant feature and then simultaneously rely on Section 35 to justify its use unless it is genuinely descriptive. It affirms that statutory defences must be applied contextually, with due regard to consumer perception and market realities.

Likelihood of Confusion and Consumer Perception

The Court also examined likelihood of confusion emphasising that footwear is a mass consumer product and that average consumers are unlikely to exercise a high degree of care. The share use of 'POWER' was likely to create association with Bata given its market presence.

This approach aligns with established principles articulated in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.⁵ where the Supreme Court held that likelihood of confusion must be assessed from the perspective of an average consumer with imperfect recollection.

Implications

The Bata v. Leayan decision has important implications for trade mark strategy and enforcement. It reaffirms that proprietors of composite marks can enforce rights over dominant elements, particularly where those elements have acquired distinctiveness. It also sends a clear signal that Section 35 cannot be used as a safe harbour for brand adoption masquerading as descriptive use. Equally, the judgment underscores that equitable defences will not readily defeat statutory rights in infringement actions. Businesses adopting marks incorporating well-known elements must conduct careful clearance and cannot rely on semantic arguments or delay alone to shield infringing use.

Footnotes

1. AIR 1965 SC 980

2. (1972) 1 SCC 618

3. 2010 (44) PTC 736 (Del)

4. (2016) 65 PTC 1 (Del)

5. (2001) 5 SCC 73

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