Mumbai: The Bombay High Court recently declared the footwear brand ‘Mochi’ as a ‘well-known trademark’ under the Trademarks Act, 1999. Justice Riyaz Chagla passed the order in a trademark infringement case filed by Metro Brands Ltd., owner of the ‘MOCHI’ mark, against Nice Shoes LLP, which used the mark ‘DESIMOCHI’.
The suit filed by Metro accused Nice Shoes of infringing its trademark by selling goods, including footwear, under the name ‘DESIMOCHI’. Metro argued that the use of ‘DESIMOCHI’ was likely to confuse consumers and harm its brand’s reputation.
Established in 1977, ‘MOCHI’ has become synonymous with quality footwear in India, supported by significant advertising investments of over Rs236 crores between 2012 and 2022 and its presence in over 826 stores nationwide.
Metro’s Advocate Rashmin Khandekar contended that adding the prefix ‘DESI’ to ‘MOCHI’ did not create sufficient distinction, as ‘DESI’ merely suggested Indian origin and failed to alter the core identity of the ‘MOCHI’ mark. Citing legal precedents, Khandekar argued that the overall impression of similarity remained intact.
Nice Shoes, however, argued that ‘MOCHI’ is a generic term in India referring to cobblers, making it a weak trademark. They claimed their use of ‘DESIMOCHI’ was legitimate and sufficiently distinct. It further contended that the strength of a trademark refers to its distinctiveness and ‘MOCHI’ on its own is a relatively weak mark due to its generic nature.
Justice Chagle, after hearing both the sides, said: “The use by the Defendants of their impugned mark ‘DESIMOCHI’ is clearly after the Plaintiff’s use of its registered mark ‘MOCHI,’ which has been in use since 1977”. The judge noted that the addition of a generic prefix like ‘DESI’ did not eliminate the actionable similarity between the two marks.
Granting an interim injunction, the Court restrained Nice Shoes from using ‘DESIMOCHI’ and directed them to transfer the domain name “www.desimochi.com” to Metro. It concluded, “Non-grant of injunction against a rank infringer will result in the Plaintiff being made to suffer irreparable loss and harm.”
