The Bombay High Court has granted significant interim relief to Metro Brands Ltd., restraining a footwear retailer operating under the name Metro Footwear from using the mark “METRO FOOTWEAR” or any deceptively similar mark. The Court held that Metro Brands demonstrated strong prima facie rights arising from its long and well-documented use of the METRO trademark.
Court’s Key Findings
- Established goodwill of Metro Brands:
The Court noted that Metro Brands has used the mark METRO since 1955 and holds longstanding registrations, including one dating back to 1972 in Class 25 for footwear. - Defendant’s prior-use claim rejected:
Metro Footwear’s assertion that it had been operating since 1982 was not backed by adequate evidence, leading the Court to reject the claim. - Use of “Footwear” held descriptive:
The Court observed that the term “Footwear” is purely descriptive. The dominant portion of the defendant’s mark remained METRO, making confusion likely and supporting the infringement claim. - Prima facie case of passing off:
The Court found that Metro Footwear appeared to be leveraging the reputation and market presence of Metro Brands, thereby satisfying the elements of passing off at the interim stage. - Interim injunction granted:
Metro Footwear is restrained from manufacturing, selling, advertising, or dealing in goods under “METRO FOOTWEAR” pending further orders. - Well-known mark question reserved:
While noting Metro’s extensive reputation, the Court deferred deciding whether METRO should be declared a well-known trademark.
Significance
The order reinforces the protection afforded to long-established marks and clarifies that merely adding a descriptive term does not shield an infringing mark from legal scrutiny. The decision is an important reminder for businesses to conduct thorough trademark checks before adopting brand names, especially in sectors where legacy brands command substantial goodwill.
Metro Brands Ltd. v. Metro Footwear, Interim Application (L) No. 21593 of 2024, decided on 10-11-2025
