In the bustling world of commerce, where brands battle for supremacy, the case of Abdul Rasul Nurallah Virjee and Another vs. Regal Footwear stands as a testament to the fierce protection of intellectual property rights. Decided on January 2, 2023, by the Bombay High Court, this legal skirmish revolves around the trademark "REGAL," a name synonymous with footwear for over half a century.

The plaintiffs, claiming proprietorship since 1954, sought to restrain the defendant from using an identical mark, alleging infringement and passing off. The defendant countered with claims of prior use since 1963 and defenses of honest concurrent use and acquiescence. This case study delves into the intricate details of this trademark dispute, unraveling the factual tapestry, procedural journey, legal issues, arguments, judicial reasoning, and the final verdict that shaped the outcome.

Detailed Factual Background:

• The plaintiffs, Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee, traced their use of the "REGAL" trademark to 1954 via M/s. Regal Footwear.
• Registered under Trade Marks Act, 1999:
  • Reg. No. 284961 (Class 25 - footwear), dated Dec 27, 1972
  • Reg. No. 1278782 (Class 42 - retailing services), dated Apr 15, 2004
• Business spanned manufacturing, distribution, retail across India, and exports to USA, Italy, UAE.
• Sales from 1954–2017: ₹425.54 crore; Advertisement expenses: ₹7.88 crore.
• Evidence: Sales invoices, IT assessments, advertisements from 1955 onward.
• The defendant, Regal Footwear (Pune), claimed use from April 21, 1963, via founder Habib Dharmashi Shivani.
• Relied on:
  • Leave and license agreement (1961)
  • Shop license (1963) with renewals
  • Post-1999 documents due to fire destroying early records
• Plaintiffs opposed the defendant’s 2006 TM application (No. 1422577); rejected in 2020.
• Consumer complaints in 2019 due to confusion over product source intensified the dispute.

Detailed Procedural Background:

• Plaintiffs filed Commercial IPR Suit No. 630 of 2017 in Bombay HC with Notice of Motion No. 516 of 2017.
• Ad-interim order on July 24, 2017: Directed defendant to file reply; no relief granted immediately.
• Plaintiffs’ Commercial Appeal (L) No. 54 of 2017 was dismissed, maintaining status quo.

Issues Involved in the Case:

• Trademark infringement of "REGAL"
• Passing off by defendant
• Validity of prior continuous use under Section 34
• Applicability of honest concurrent use as defense
• Whether plaintiffs acquiesced
• Effect of alleged suppression of facts by plaintiffs

Detailed Submission of Parties:

• Plaintiffs:
  • Relied on registration and continuous use since 1954
  • Evidence: Ads from 1955, IT orders (1956–1998), invoices
  • Claimed Section 29 infringement; denied Section 34 defense
  • Cited: KEI Industries v. Raman Kwatra, Hindustan Pencils v. India Stationary
  • Argued no acquiescence per Power Control Appliances, Torrent Pharma v. Wockhardt
• Defendant:
  • Alleged suppression of prior knowledge by plaintiffs (1984 cease & desist)
  • Claimed use since 1963, gaps due to fire
  • Cited: Essel Propack v. Essel Kitchenware, Unichem v. Eris, Yonex v. Philips
  • Denied confusion/goodwill, urged denial of interim relief due to factual disputes

Judgments and Their Context:

• Plaintiffs Cited:
  • Kamat Hotels v. Royal Orchid – Section 34 requires use predating plaintiff’s
  • Consolidated Foods v. Brandon – Prior adoption claim
  • Satyam Infoway v. Siffynet Solutions – Reinforced superior rights
  • Other cases: KEI Industries, Hindustan Pencils, Cadila Health Care
• Defendant Cited:
  • Brihan Karan Sugar Syndicate v. Karma Veer – Suppression argument
  • Essel Propack, Warner Bros v. Kohli – Acquiescence/delay defenses
  • Gujarat Bottling v. Coca-Cola – Interim relief considerations

Detailed Reasoning and Analysis:

• Court dismissed suppression allegation—plaintiffs’ 2008 knowledge not fatal.
• Defendant’s 1984 claim lacked evidence; 1954 use by plaintiffs substantiated.
• Defendant failed to meet Section 34 requirement (pre-1954 use).
• Honest concurrent use rejected per KEI Industries, Hindustan Pencils.
• Acquiescence argument failed—no positive act shown per Power Control.
• Infringement and passing off established—identical marks, goodwill, confusion.

Final Decision:

• Interim injunction granted (Notice of Motion No. 516 of 2017)
• Defendant restrained from using "REGAL" in footwear trade/retail
• Notice of Motion No. 1841 of 2018 disposed as redundant
• Four-week stay granted recognizing defendant’s business continuity

Law Settled in This Case
This case reaffirmed that prior use and registration confer superior trademark rights under Section 34, honest concurrent use is not a defense to infringement under the 1999 Act, and acquiescence requires positive acts, not mere delay, per Power Control and Torrent Pharmaceuticals. Suppression claims must materially affect the case to bar relief, and the comparable strength test guides interim relief.

Case Title: Abdul Rasul Nurallah Virjee Vs. Regal Footwear
Date of Order: January 2, 2023
Case No.: Commercial IPR Suit No. 630 of 2017
Neutral Citation: Name of Court: High Court of Judicature at Bombay
Name of Judge: Justice R.I. Chagla

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539