The Bombay High Court has granted interim relief to Metro Brands Ltd. The parent company of the well-known footwear brand ‘Mochi,’ in a trademark dispute against Nice Shoes LLP, which operates under the name ‘Desimochi.’ The court restrained the defendants from using the name ‘Desimochi’ or any similar mark, ruling that it infringed upon Metro’s registered trademark, ‘Mochi.’
The Single Judge Bench of Justice R.I. Chagla delivered the verdict on November 18, 2024, holding that the addition of the prefix ‘Desi’ was insufficient to distinguish the rival mark from the established brand ‘Mochi,’ which has been in use since 1977. Justice Chagla observed that the similarity in marks could mislead consumers into believing that ‘Desimochi’ was associated with ‘Mochi,’ thereby causing confusion.
Case Background
Metro Brands Ltd., is one of India’s largest footwear and accessories retailers. It has built a strong reputation for its ‘Mochi’ brand over decades. The company owns several trademarks under the ‘Mochi’ name, registered in various classes since 1977. It operates through multiple platforms, including its website and major e-commerce portals like Amazon, Flipkart, and Myntra.
In August 2022, Metro discovered the existence of a website, “www.desimochi.com,” operated by Nice Shoes LLP. The website sold footwear under the name ‘Desimochi.’ Metro argued that the use of the name ‘Desimochi’ was not only deceptively similar to ‘Mochi’ but also infringed upon its trademark, leading to potential consumer confusion.
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Arguments and Court Analysis
Metro’s legal counsel, Rashmin Khandekar, argued that the ‘Mochi’ brand enjoys significant goodwill. It is recognized as a well-known trademark under the Trade Marks Act, 1999. The company sought an injunction to prevent Nice Shoes LLP from continuing to use the name ‘Desimochi.’
Nice Shoes LLP, represented by advocate Jyoti Pandey, countered that the term ‘Mochi’ is generic and descriptive, referring to shoemakers, and therefore cannot claim exclusivity. The defendants also argued that their website served as a platform aggregating various brands and did not operate in bad faith.
Justice Chagla rejected these arguments, emphasizing that Metro’s trademark registrations were valid and enforceable. The court stated that the presumption of distinctiveness applies to registered trademarks, and the defendant’s use of a similar mark was likely to mislead consumers.
The court further observed that Metro had established open, continuous, and extensive use of the ‘Mochi’ brand since 1977. It dismissed the defendants’ claim that the mark was generic, noting that Nice Shoes LLP. It had itself sought to register ‘Desimochi,’ which undermined their argument.
WIPO Decision and HC Verdict
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre had previously ruled in January 2024. That there was no evidence of bad faith in the use of the ‘Desimochi’ mark. However, the High Court overruled this finding, stating that bad faith is not a prerequisite to establishing trademark infringement.
Justice Chagla declared that the use of ‘Desimochi’ was likely to create an association with Metro’s brand, potentially misleading consumers into thinking it was an Indian subsidiary of the well-known ‘Mochi brand. The court highlighted that the mere addition of the generic prefix ‘Desi’ was insufficient to negate the similarity.
Court’s Ruling
The court granted a temporary injunction, restraining Nice Shoes LLP from using the name ‘Desimochi’ or any other mark deceptively similar to ‘Mochi.’ Justice Chagla held that non-grant of the injunction would cause irreparable harm to Metro. Which had built a significant reputation over decades.
The court also declared ‘Mochi’ a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999. Further solidifying Metro’s rights over the brand.
Legal Representation
Metro Brands Ltd. was represented by advocates Rashmin Khandekar, Anand Mohan, and Alhan Kayser, while Nice Shoes LLP was represented by advocate Jyoti Pandey.
This ruling underscores the importance of protecting well-established trademarks. It highlights the judiciary’s stance on safeguarding brand identities against potential infringement.
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Mochi
Mochi is a brand that includes two separate companies:
All Things Mochi, which is a fashion label, and Mochi Shoes, a footwear brand in India.
Mochi Shoes
Founded in 2000, Mochi Shoes is an Indian shoe brand owned by Metro Brands. It focuses on young customers but also offers a wide variety of fashionable shoes for the whole family, suitable for everyday wear and special events such as weddings. As of 2024, Mochi Shoes had 190 outlets in 95+ cities across India and had built a strong online presence. Known for its stylish designs and high-quality products, the brand has recently improved its online marketing efforts, leading to more website visitors and sales, especially during the COVID-19 pandemic.
All Things Mochi
Founded in 2013 by Ayah Tabari, All Things Mochi is famous for its special mix of cultural styles, making handmade clothes and accessories. The brand focuses on fair production by working with local craftspeople who use old embroidery methods to create modern designs. Every collection has a story, showing the history and community it comes from. The brand has become well-known worldwide, displaying its work at important fashion events like those in London, New York, and Paris. All Things Mochi wants to help communities by providing jobs and building partnerships that improve the lives of the craftspeople making the products.
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Desi Mochi
Desimochi is a Nice Shoes LLP brand located in Jaipur, Rajasthan. Earlier, the desimochi worked in the luxury shoe sector, selling their own shoes on their website. With the quality product and amazing customer service, desimochi gained popularity quickly. In 2024, as per the plan to expand their business and services Nice Shoes LLP decided to launch Desimochi. As a shoe aggregator where multiple vendors can sell their shoes and users can buy from any vendor of their choice.
This shift marked a significant milestone, turning Desimochi into a one-stop destination for diverse footwear options, catering to a broader audience. By onboarding reputed vendors and local artisans, Desimochi has created a platform that combines variety with authenticity. The user-friendly interface and advanced search filters ensure a seamless shopping experience for customers. Additionally, the platform’s vendor management system supports small businesses, helping them showcase their products to a larger audience. With its roots in Jaipur and a vision for nationwide impact. Desimochi is poised to redefine how shoes are bought and sold in India.
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