The Delhi High Court’s decision in Leayan Global Pvt. Ltd. v. Bata India Ltd. turns on the uneasy interaction between exclusive trademark rights and descriptive use defences. Arshiya Gupta probes the Court’s see-saw framing of Sections 17 and 35, and asks whether collapsing these distinct enquiries risks blurring core principles of trademark doctrine. Arshiya is a third-year law student at National Law University, Delhi, with a keen inclination towards PIL, IPR, and criminal law.
Bata v. Leayan: Examining the Interplay of Sections 17 and 35 of the Trade Marks Act
By Arshiya Gupta
In Leayan Global Pvt. Ltd. v. Bata India Ltd., the Delhi High Court addressed a dispute concerning the trademark “POWER” used by Bata for footwear and Leayan’s subsequent use of “POWER FLEX.” The core issues were whether Bata’s mark was entitled to exclusive rights under Section 17 of the Trade Marks Act, 1999, which defines the scope of exclusivity conferred by registration particularly in relation to composite marks, and whether Leayan’s use of POWER FLEX could be protected under Section 35, which preserves the right to bona fide descriptive use of words indicative of the character or quality of goods. The Court ultimately held in Bata’s favour.
This post does not seek to contest the correctness of the outcome. Instead, it interrogates the Court’s see-saw framing and its implications for trademark doctrine. Specifically, it questions whether treating Sections 17 and 35 as mutually dependent enquiries aligns with the statutory scheme, or whether it risks collapsing two analytically distinct safeguards, one concerned with the strength of Bata’s entitlement, and the other with the legitimacy of Leayan’s use, into a single, outcome-driven assessment.
The Court’s Reasoning
The Delhi High Court examined Sections 17 and 35 of the Trade Marks Act, 1999 to determine the extent of Bata’s exclusivity over the mark POWER and whether Leayan’s use of POWER FLEX was protected as descriptive use. Interpreting Section 17 in the context of composite trademarks, the Court held that while registration grants exclusivity over a mark as a whole under Section 17(1), Section 17(2) limits this right by denying exclusivity over individual components that are non-distinctive, common to the trade, or unregistered. Leayan contended that “POWER” was non-distinctive and therefore excluded from protection under Section 17(2)(b). Rejecting this argument, the Court interpreted “non-distinctive character” with reference to Section 9(1)(a), holding that distinctiveness must be assessed in relation to the goods concerned. It reasoned that although POWER may be descriptive for certain goods where it denotes a functional attribute, it does not bear an immediate or direct connection with footwear. Accordingly, the Court held that POWER was distinctive in the context of shoes and not barred by Section 17(2)(b).
The Court then considered Leayan’s defence under Section 35, which protects bona fide descriptive use. Drawing a distinction between descriptive and suggestive marks through the “strain of imagination” test, the Court held that a mark is descriptive only when it immediately conveys the character or quality of the goods. Applying this test, the Court found that POWER FLEX did not directly describe the character or quality of leather footwear. Even if flexibility was a feature of the shoes, the association was not immediate, rendering the mark at best suggestive. Consequently, Leayan was not entitled to protection under Section 35.
The Court characterised the interaction between Sections 17 and 35 as a “see-saw,” wherein Section 17(2)(b) challenges the distinctiveness of the plaintiff’s mark, while Section 35 protects bona fide descriptive use by the defendant. Finding that Bata’s mark was sufficiently distinctive and that Leayan’s mark was not descriptive, the Court held that no statutory bar existed to restraining Leayan’s use of POWER FLEX.
Analysis of the Reasoning
The Court’s use of a “see-saw” metaphor to describe the relationship between Sections 17 and 35 is vivid and intuitive, it captures the idea of competing forces in trademark disputes. However, this metaphor risks flattening a complex statutory scheme. At its core, the image suggests a very zero-sum like relationship, that is, a finding of distinctiveness under Section 17 tilts the balance in favour of the plaintiff and potentially weakens any defence under Section 35, and vice versa. This interdependence, as the Court implies, ensures that only truly protectable marks can enforce exclusivity against even well-intentioned descriptive uses. But the primary contention then becomes whether this framing truly reflects the text and purpose of the Trade Marks Act? A closer look at it shows both strengths and weaknesses, revealing an underlying tension between doctrinal clarity and practical decision-making. To understand the Court’s reasoning, it becomes important to first examine the policy foundations.
Section 17(2)(b) functions as a gatekeeping provision by preventing exclusive rights over generic or descriptive elements that should remain available to the public. As mentioned, by holding that “POWER” is inherently distinctive for footwear, the Court reinforces the Act’s focus on a mark’s capacity to distinguish, whether inherent or acquired. This reasoning serves as a safeguard against excessive monopolisation and ensures that Bata’s registration is not undermined by claims that the term is commonly descriptive. Also, at the same time, Section 35 operates as a safety valve, protecting bona fide descriptive use in commercial speech, and the protection of which in the present case was denied by the Court to Leayan.
At this point, however, it is seen that the see-saw has ended up tipping decisively. This is because distinctiveness under Section 17 did not merely survive scrutiny, it effectively neutralized the Section 35 defence and was seen as preventing defendants from free-riding on the goodwill generated by a suggestive mark. This was of course, because if POWER is entitled to protection as part of a registered mark, allowing POWER FLEX to benefit from it under the label of descriptiveness could dilute the incentives behind trademark registration.
That said, the metaphor invites critique for blurring the lines the Act draws so deliberately. Sections 17 and 35 aren’t supposed to be two twins on a playground; they’re distinct tools in the trademark toolkit, aimed at different vulnerabilities. Section 17 examines the strength of the plaintiff’s entitlement, whether the registered mark deserves protection at all, while Section 35 assesses the defendant’s conduct, whether they can make descriptive use without overstepping, even when a valid registration exists. The statutory language supports this separation. Section 35 begins with the phrase “nothing in this Act shall,” suggesting that it can limit enforceability regardless of how strong the registration may be. Yet, by presenting the provisions as a see-saw, the Court subtly alters this balance because a strong Section 17 finding does not merely affirm Bata’s rights but appears to foreclose Section 35 altogether, reducing descriptiveness from a substantive defence to a secondary consideration.
This approach risks becoming a slippery slope that could discourage bona fide competition. Let us consider a hypothetical case where “Quick Step” is registered for dance shoes and deemed suggestive under Section 17. A competitor using “Quick Step Flex” for adaptive insoles might argue that the terms immediately convey speed and flexibility, invoking Section 35. If courts consistently keep allowing Section 17’s distinctiveness finding to override such claims, defendants are placed in a difficult position: either challenge the plaintiff’s registration, a demanding task, especially after registration, or lose the protection of descriptive use altogether. This could tilt the balance in favour of established players and weaken the Act’s dual objectives of preventing monopolies (through Section 17) and preserving freedom of use (through Section 35).
In the end, the Court’s see-saw metaphor is not completely and inherently flawed, but it highlights the need for clearer limits. It correctly recognises that distinctiveness and infringement analysis are interconnected indeed and that distinctiveness does influence the scope of protection, but it also exposes the risk of one provision overshadowing the other, especially when it can’t if the statutory scheme of things is taken in consideration. It also risks becoming a pendulum that swings too far against legitimate descriptive use.
