Case Study Of Bata Case

B. THE BATA CASE

The Bata case was an appeal decided by the High Court of Allahabad from an order of the Additional District Judge Meerut. The District Court rejected an injunction requested by the plaintiff, Bata India Limited (Bata), against passing off by the defendants, who were using the mark BATAFOAM for rubber foam used in manufacturing mattresses, sofas, cushions, and automobile seats. Bata’s mark BATA is a famous brand in India for quality footwear. The plaintiff held registrations for this mark for a variety of goods including, e.g., canvas, rubber, rubber plates, and leather shoes. Taking abundant caution, Bata obtained registration of the mark BATA in all major Indian languages in addition to English.

Bata’s suit before the District Court alleged that by using the challenged mark BATAFOAM, the defendants had been deceiving customers and that such fraudulent and bad-faith conduct amounted to unjust enrichment by trading off the plaintiff’s goodwill and reputation. The defendants, however, denied these allegations and argued that the parties’ respective businesses were different, and that because their product was sold as BATAFOAM, there could not be any confusion or deception. The District Court rejected the plaintiff’s claim by holding that the plaintiff had no registration for the mark BATA for mattresses, sofas, cushions, automobile seats, etc., and that because the defendants’ trademark BATAFOAM was not identical in appearance to the plaintiff’s mark BATA, there could be no passing off.

On appeal, the High Court of Allahabad reversed these findings and found in favor of the plaintiff. It found that there was no plausible explanation as to why the name “BATA” was being used by the defendants and that the user of the...

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...e the benefit of someone else’s reputation with reference to goods, especially when such reputation extended worldwide. The Court further went on to hold:

‘18. In the instant case, “Benz” is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name “Benz” with respect to a product like under-wears’.

This judgment is still regarded as a milestone decision on trademark dilution in India and its findings continue to be cited in trademark disputes involving well-known marks. This is perhaps the first and only case in India enjoining a defendant from using the plaintiff’s well-known mark on the sole ground of free-riding, without analysis of likelihood of confusion or deception. In fact, the High Court ruled out confusion and deception by acknowledging the ubiquitous reputation of the name