Case Name: Metro Brands Ltd. v. Metro Footwear
Citation: 2025 SCC OnLine Bom 4447
Court: Bombay High Court
Bench: Justice Sharmila Deshmukh
Date of Judgment: 10 November 2025
Acts/Sections Referred: Trade Marks Act, 1999, Sections 29, 31 and 134
Case Type: IPR / Trademark / Infringement / Passing Off / Interim Injunction
1. Introduction
The case of Metro Brands Ltd. v. Metro Footwear concerned a trademark infringement and passing off action filed by Metro Brands Limited, a well-established entity in the footwear and accessories industry operating under the “METRO” trademark since 1955, against a retail store operating under the name “Metro Footwear.” The Plaintiff sought an interim injunction restraining the Defendant from using the trademark on the ground that such use constituted infringement of the Plaintiff’s registered trademark under the Trade Marks Act, 1999 and amounted to passing off. The case raises important questions about the protection of long-established trademarks against use by smaller traders claiming prior local use, the impact of a generic descriptive word such as “Footwear” added to a registered mark, and the standard for grant of interim injunctions in trademark disputes.
2. Summary of Facts
Metro Brands Limited has been using the trademark “METRO” in connection with footwear, bags, leather accessories, and related products since 1955. The Plaintiff has secured registration of the “METRO” trademark in various product categories under the Trade Marks Act, 1999 and has built substantial goodwill and reputation through decades of advertising, a widespread retail network across India, and consistent quality. In December 2022, the Plaintiff discovered a retail store operating under the name “Metro Footwear” selling footwear and related products. The Plaintiff sent a cease and desist notice demanding discontinuation of the name.
The Defendant responded to the notice claiming to have been operating under the name “Metro Footwear” since 1982, asserting rights through prior use. The Defendant continued to operate under the name after the notice, and the Plaintiff filed a suit for trademark infringement and passing off along with an application for interim injunction before the Bombay High Court. The Plaintiff contended that the addition of the generic and descriptive term “Footwear” to the registered “METRO” mark was insufficient to distinguish the Defendant’s mark and that consumer confusion was inevitable.
3. Issues Before the Court
(i) Whether the Defendant’s use of “Metro Footwear” constituted infringement of the Plaintiff’s registered “METRO” trademark under the Trade Marks Act, 1999 and whether it amounted to passing off, warranting grant of an interim injunction.
4. Arguments by Both Parties
Arguments on behalf of the Plaintiff:
The Plaintiff contended that the “METRO” mark is a well-known and registered trademark with enormous goodwill built over seven decades. The addition of the generic and purely descriptive word “Footwear” to the registered mark does not create any meaningful distinction and consumers would naturally associate “Metro Footwear” with the Plaintiff’s extensive retail chain. The Plaintiff argued that the prima facie case, balance of convenience, and irreparable harm all favoured grant of an interim injunction, and that the Defendant’s unregistered user claim could not override the Plaintiff’s registered trademark rights.
Arguments on behalf of the Defendant:
The Defendant contended that it had been operating under the name “Metro Footwear” since 1982, predating the Plaintiff’s national expansion, and had therefore acquired prior common law rights through use in the local area. The Defendant argued that consumers in the relevant market were aware of the distinction between its small retail establishment and the Plaintiff’s large chain, and that there was no real likelihood of confusion.
5. Reasonings and Findings
The Bombay High Court allowed the application and granted an interim injunction restraining the Defendant from using the mark “Metro Footwear.” The Court found that the Plaintiff had established a prima facie case of trademark infringement. The registered “METRO” mark and the Defendant’s “Metro Footwear” mark were deceptively similar, as the only difference was the addition of the purely descriptive and generic word “Footwear” which described the nature of the goods. Such an addition did not create any meaningful distinction capable of preventing consumer confusion.
On the question of passing off, the Court found that the Plaintiff had established substantial goodwill and reputation in the “METRO” mark through nearly seven decades of continuous use, extensive advertising, and a widespread retail presence. The Defendant’s use of a substantially identical mark in the same trade was likely to cause consumers to believe that the Defendant’s establishment was associated with or franchised by the Plaintiff, which would damage the Plaintiff’s goodwill and mislead consumers.
The Court addressed the Defendant’s claim of prior use since 1982, finding that even if established, prior local use in a limited area could not override the Plaintiff’s nationwide registered trademark rights. Under the Trade Marks Act, 1999, a registered trademark holder’s rights extend throughout India, and registration confers a presumption of validity and exclusive right to use.
6. Judgment and Conclusion
The Bombay High Court granted an interim injunction restraining the Defendant from using the mark “Metro Footwear” during the pendency of the suit. The judgment affirms that addition of a generic and descriptive word to a well-known registered trademark does not avoid infringement, that long-established registered trademarks command strong protection against local or smaller traders, and that prior local use does not override national registered trademark rights.
7. Frequently Asked Questions
Q1. What constitutes trademark infringement under the Trade Marks Act, 1999?
Trademark infringement under Section 29 of the Trade Marks Act, 1999 occurs when a person uses in the course of trade a mark that is identical with or deceptively similar to a registered trademark in relation to goods or services for which the trademark is registered, without the authorisation of the registered owner, in a manner that is likely to cause confusion in the minds of the public.
Q2. Does adding a descriptive word to a registered trademark avoid infringement?
No. The addition of a generic or descriptive word to a registered trademark does not avoid infringement if the dominant element of the mark is the registered trademark and consumers would naturally associate the combined mark with the registered trademark owner. Courts look at the overall impression of the mark rather than individual components.
Q3. What is passing off?
Passing off is a common law cause of action that protects the goodwill and reputation of a trader from misrepresentation by another trader who uses a similar name or mark in a manner that causes or is likely to cause consumers to believe that the two businesses are associated. Passing off does not require registration of the mark and is available where substantial goodwill has been established.
Q4. Can prior local use defeat a claim based on a registered trademark?
Under the Trade Marks Act, 1999, a registered trademark confers exclusive rights throughout India. Prior local use in a limited area may be a defence in passing off proceedings based on the prior user’s own goodwill in that area, but it generally cannot override the statutory rights conferred by a registered trademark valid throughout the country.
Q5. What is the standard for granting an interim injunction in a trademark dispute?
The standard for an interim injunction in a trademark dispute requires the applicant to establish a prima facie case of infringement or passing off, demonstrate that the balance of convenience favours grant of the injunction, and show that it would suffer irreparable harm if the injunction is not granted. Courts also consider the relative strength of the parties’ claims and the consequences of granting or refusing relief.
