The Bombay High Court has restrained ‘Metro Footwear’ from using the METRO mark, siding firmly with Metro Brands in a major trademark dispute. The ruling strengthens brand protection and reinforces strict action against deceptive similarity in the footwear market.
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MUMBAI: The Bombay High Court restrained Metro Footwear Store from using the mark “Metro Footwear”, reaffirming Indian trademark law principles, particularly the dominance of registered rights, the limits of descriptive additions, and the evidentiary burden on parties claiming prior use.
Justice Sharmila U. Deshmukh, in the order passed on November 10, 2025, granted a strong interim injunction restraining the defendants from using the mark “Metro Footwear”, finding it deceptively similar to the plaintiff’s long-established “METRO” trademark.
The case was argued for the plaintiff by Senior Advocate Venkatesh Dhond, assisted by Advocates Rashmin Khandekar, Alhan Kayser, Varsha Vasave, and Gauri Sansare, and instructed by Advocate Avesh Kayser.
Background of the Dispute
Metro Brands Limited, one of India’s most recognized footwear and accessories companies, approached the court after discovering a store operating under the name Metro Footwear within the same market segment. According to the plaintiff:
- The METRO mark has been in continuous use since 1955.
- The earliest trademark registration dates back to 21 December 1972, in Class 25 for footwear.
- The company holds registrations across Classes 18, 25, 35–42.
- It operates 826 showrooms across 100 cities in India.
- Cumulative turnover (1987–2022) exceeds ₹13,000 crore, and advertising expenditure exceeds ₹380 crore.
These facts collectively demonstrate substantial goodwill, extensive brand presence, and strong statutory rights in the METRO mark.
Defendant’s Arguments
The defendants claimed they had used the mark Metro Footwear since 1982, but:
- No documentary evidence was produced.
- They repeatedly sought adjournments, citing “settlement discussions”.
- They failed to file a reply affidavit despite court orders.
- They remained absent during the hearing.
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Court Observations
The Court took note of this conduct, observing that the defendants’ failure to substantiate their claims critically weakened their defence.
The Court held that the defendant’s mark fully incorporates the plaintiff’s registered trademark METRO, a classic indicator of infringement. The addition of the word “Footwear” was deemed descriptive, offering no distinctiveness and not enough to avoid consumer confusion.
This aligns with established principles under the Trade Marks Act, 1999:
- The dominant portion of a mark carries the most weight.
- Adding descriptive or generic terms does not neutralize similarity.
- The test focuses on overall commercial impression and likelihood of deception.
Under trademark law, registration grants statutory exclusivity. Although prior use can supersede registration, it must be proven through credible evidence.
Here, the defendants provided no evidence to back their 1982 claim. Thus, the plaintiff’s 1972 registration prevailed.
Metro Brands produced strong material:
- Decades-long advertisement portfolio (with proof dating back to 1955)
- Extensive national presence
- High sales turnover
- Substantial promotional investments
This data supported both infringement and passing-off claims by demonstrating:
- Brand recognition
- Consumer association
- Goodwill
- Market dominance
Such evidence satisfies the core legal tests for both infringement and misrepresentation.
The Court found that the defendants’ use of Metro Footwear was likely to mislead consumers into believing that the products originated from or were associated with Metro Brands.
The Court held that Metro Brands had successfully established all essential elements of a passing-off action. The company’s long-standing use of the METRO mark, supported by extensive sales figures, advertising expenditure, and nationwide presence, demonstrated substantial goodwill associated with the brand.
The defendant’s adoption and use of the mark “Metro Footwear” constitute a clear misrepresentation, as the impugned mark created a prima facie likelihood that consumers would assume a connection with Metro Brands. This misrepresentation, according to the Court, was likely to cause damage to the plaintiff’s goodwill by diluting the brand’s distinctiveness and potentially diverting customers.
“The leading presence of the Plaintiff to the market of footwear, bags and accessories requires no reinforcement. The manner in which the Defendants are marketing its goods and services under the impugned mark METRO FOOTWEAR makes it prima facie evident that the Defendants have designed its products in a manner so as to pass off its goods as that of the Plaintiff. The use of the impugned mark by the Defendants is likely to cause injury to the Plaintiff’s goodwill and reputation”,
the court said.
The judge also noted that the manner in which the defendants marketed their goods indicated an intention to ride on the reputation of Metro Brands and pass off their products as those of the plaintiff.
Interim Injunction
The Court granted extensive interim relief, restraining the defendants from:
- Using Metro Footwear
- Using any mark identical or deceptively similar to METRO
- Selling, manufacturing, stocking, or advertising goods under the impugned mark
- Engaging in any act that may amount to passing off
However, the Court excluded the bracketed reference to the METRO mark being “well-known,” stating that this issue will be addressed at a later stage.
Appearance:
For Plaintiff: Senior Advocate Venkatesh Dhond, along with Advocates Rashmin Khandekar, Alhan Kayser, Varsha Vasave and Gauri Sansare instructed by Advocate Avesh Kayser
Case Title:
Metro Brands Limited versus Metro Footwear and others
INTERIM APPLICATION (L) NO. 21593 OF 2024 IN
READ ORDER
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