In a significant decision, the Bombay High Court ruled in favor of Metro Brands Ltd., declaring its ‘Mochi’ trademark a “well-known mark” under Indian trademark law. This comes amidst a legal dispute with Nice Shoes LLP, which had been marketing products under the label ‘DESIMOCHI.’
The court, led by a single judge, ordered an interim injunction against Nice Shoes, prohibiting the use of the contested mark and directing the transfer of the domain “www.desimochi.com” to Metro.
Metro Brands argued that ‘Mochi,’ a name synonymous with their footwear since 1977, enjoys extensive consumer recognition and goodwill. With over ₹236 crores invested in advertising from 2012 to 2022 and a widespread presence in 826 stores nationwide, Metro contended that the use of ‘DESIMOCHI’ could mislead consumers, undermining their brand’s reputation.
Nice Shoes countered by claiming ‘Mochi’ is a common term in India for cobblers and argued that adding ‘Desi’ created a distinct identity. However, the court dismissed this defense, stating that the prefix did not sufficiently distinguish the marks and that the resemblance was likely to confuse consumers.
The ruling emphasized that the addition of a generic descriptor does not negate the core similarity between trademarks, especially when one is an established brand. Metro’s long-standing use and the mark’s association with quality footwear further tipped the scales in its favor.
This decision reaffirms the importance of safeguarding brand identity, especially for trademarks that have cemented their place in consumer consciousness over decades.
