Regal Shoes v. Regal Footwear — Bombay High Court’s Lesson on Why Early Registration Protects Mumbai Businesses

Case analysis by Legismith Partners LLP — IP India Registered Trademark Attorneys, Pune. Author: Santosh Sangle (TM Attorney No. 33801). Published June 2026. Source: 2023 LiveLaw (Bom) 12; Indian Kanoon Doc No. 192304663.

A Mumbai footwear brand had been operating from Colaba Causeway since 1954 — one of the city’s most recognisable retail corridors. Their trademark had been registered since 1972. When a competitor began selling footwear under the identical name decades later, the Bombay High Court’s Commercial Division did not hesitate: it granted an interim injunction within the Notice of Motion itself. This case is a masterclass in how trademark registration converts years of goodwill into immediate legal leverage.

Case at a Glance

Background — What Happened

The Virjee family had been operating Regal Shoes from Colaba Causeway, Mumbai since 1954 — a flagship retail address long associated with premium footwear in the city. The trademark ‘REGAL’ for footwear and leather articles was formally registered in 1972 under the Trade Marks Act then in force. Over the following decades, the mark built substantial goodwill: the shop became a landmark, referenced in advertisements and widely recognised among Mumbai shoppers.

In 2017, the plaintiffs discovered that a Pune-based retailer — Regal Footwear — had begun selling footwear under the identical mark ‘REGAL’. The defendant’s shop was located on MG Road, Pune, diagonally opposite to the plaintiffs’ own Pune outlet. By 2019, customers were filing complaints on the plaintiffs’ official website about the defendant’s products — evidently confusing the two. The defendant had applied for registration of ‘REGAL’ in 2006, but that application was rejected by the Trade Marks Registry in 2020. The plaintiffs filed a suit for trademark infringement and passing off in the Bombay High Court’s Commercial Division.

The defendant contested the suit, claiming that they had been using the ‘REGAL’ mark since 1963 — predating the plaintiffs’ registration — and raised two specific defences: honest concurrent use of the mark, and acquiescence by the plaintiffs (arguing that the plaintiffs knew of the defendant’s use as early as 2008 but failed to act for over a decade).

The Core Legal Issues

Section 29 — Infringement of a registered trademark: Once a trademark is registered, the proprietor has the exclusive right to use it in connection with the goods or services for which it is registered. Any use of an identical or deceptively similar mark by another person in the course of trade, in relation to the same or similar goods, constitutes infringement under Section 29 of the Trade Marks Act 1999 — regardless of the infringer’s intent or knowledge.

Honest concurrent use: Section 12 of the Trade Marks Act 1999 (and its predecessors) allows the Registrar to register more than one mark that are identical or similar in cases of honest concurrent use. The defendant invoked this doctrine as a defence to the infringement suit, arguing that both parties had legitimately used ‘REGAL’ in the footwear trade simultaneously for years.

Acquiescence: Under trademark law, a registered owner who knowingly allows an infringer to continue using an identical mark over a long period, without objection, may be barred from subsequently seeking relief. The defendant argued that the plaintiffs’ knowledge of the defendant’s use since 2008, combined with their delay in filing suit, amounted to acquiescence.

Bombay High Court’s Reasoning and Decision

On senior user and goodwill: The Court found that the plaintiffs had produced consistent evidence of use of the ‘REGAL’ mark from 1954 — sales records, advertisements, landmark references, and the 1972 registration. The defendant, by contrast, produced no credible evidence of continuous, extensive, and open use from their claimed 1963 date. On this alone, the plaintiffs were clearly the senior user.

On honest concurrent use: This was the most significant legal holding of the judgment. Justice Chagla held that the defence of honest concurrent use is available only in proceedings before the Trade Marks Registrar for the purpose of registration — it is not a defence to an action for infringement of a registered mark. The defendant’s predecessor operating in the same trade and belonging to the same religious community as the plaintiffs further indicated that the defendant could not have been unaware of the plaintiffs’ use of the ‘REGAL’ mark — undermining any claim to commercial honesty.

On acquiescence: The Court rejected the acquiescence defence entirely. Acquiescence in trademark law requires more than mere knowledge of another’s use and a delay in filing suit — it requires a positive act of encouragement or a representation by the trademark owner that the other party’s continued use is acceptable. Simple inaction does not meet this standard. The defendant failed to demonstrate any such representation by the plaintiffs.

On balance of convenience: Applying the “comparable strength” principle from the Supreme Court’s judgment in Cadila Healthcare Ltd., the Court found the balance of convenience firmly in favour of the plaintiffs. An interim injunction was granted, restraining the defendant from using the ‘REGAL’ mark for footwear pending the final hearing.

Justice Chagla held: “The case for infringement is made out in view of the prima facie findings that the plaintiffs have been able to establish user since 1954 including goodwill and reputation and the Defendant being a junior user, as well as other prima facie findings of the Defendant failing to establish honest concurrent use as well as its case of acquiescence not having been made out. I further find that the balance of convenience is also in favour of the Plaintiffs considering the ‘comparable strength’ principle laid down by the Supreme Court in Cadila Healthcare Ltd.”

Source: Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee v. Regal Footwear, High Court of Judicature at Bombay (Commercial Division), Justice R. I. Chagla, decided August 2022. Citation: 2023 LiveLaw (Bom) 12. Available on Indian Kanoon at indiankanoon.org/doc/192304663/.

What This Means for Mumbai Businesses Considering Trademark Registration

The Regal Shoes case carries a direct and concrete lesson for any Mumbai business that has been building a brand without registering it — or that has registered but never thought about documenting use. The Virjee family won this case not simply because they had a registration, but because that registration, combined with seven decades of documented use, gave them an unassailable legal position. Without the 1972 registration, this would have been a far more contested and expensive dispute over prior use — with no guarantee of outcome.

The investment in trademark registration fees in Mumbai is modest relative to the cost of even one round of trademark litigation. Under Trade Marks Rules 2017, government trademark registration fees in Mumbai — as anywhere in India — are ₹4,500 per class for individuals, sole proprietors, and MSME-registered businesses, and ₹9,000 per class for companies and LLPs. A one-class registration for a footwear brand like Regal Shoes would have cost under ₹5,000 in government fees at today’s rates. See the complete trademark filing cost guide for the current fee structure including attorney fees and GST.

The case also illustrates the danger of waiting. The defendant in this case attempted to register the ‘REGAL’ mark in 2006 — 34 years after the plaintiffs’ registration — and was rejected. Any Mumbai business that files first establishes a priority date that automatically blocks subsequent similar applications and forms the foundation of any infringement claim. Filing early is not a precaution; it is a competitive advantage.

What Legismith Recommends

Based on this ruling, Mumbai businesses should take four specific actions before or immediately after launching a brand:

• Register before you build, not after. The Virjee family registered in 1972 after 18 years of use — and it worked. Today, India’s first-to-file system means a competitor who files a day before you has priority. File as early as possible. The priority date runs from the filing date, not the date of registration.
• Document your use from day one. Registration strengthens your claim immeasurably, but evidence of use — dated invoices, advertisement records, photographs of signage, delivery records — determines the “senior user” question in any contest. The Bombay High Court specifically noted the plaintiffs’ evidence of use from 1954. Keep an ongoing record file.
• Honest concurrent use is not a defence to infringement. If a competitor claims they have been using your brand name innocently or simultaneously, that claim cannot shield them once your mark is registered. The defence applies only to registration proceedings before the Registrar, not to infringement suits in the High Court.
• Do not delay in acting against infringers. Acquiescence requires more than your knowledge + their use + your delay — but prolonged inaction does create risk and complicates proceedings. If you discover an infringer, document the discovery date immediately and consult an attorney within weeks, not years.

If your brand is at risk of infringement, or if you have not yet registered, WhatsApp Legismith with your brand name for a free search and assessment within 2 hours.

Frequently Asked Questions

Does a competitor’s long use of my brand name override my registered trademark?

No. Once your trademark is registered, a competitor’s prior or concurrent use of the same mark is not a defence to a claim of infringement under Section 29 of the Trade Marks Act 1999. The Bombay High Court in the Regal Shoes case confirmed this explicitly — the defendant had used the ‘REGAL’ mark for years, but that use could not shield them from an infringement claim by the registered proprietor. Registration converts your goodwill into an enforceable right, regardless of what competitors do in the meantime.

What is honest concurrent use, and can it be used against my registered trademark?

Honest concurrent use is a doctrine under Section 12 of the Trade Marks Act 1999 that allows the Trade Marks Registrar to register two similar marks where both users have been using their marks honestly and simultaneously over a significant period. However — as the Bombay High Court held in this case — this doctrine is available only in registration proceedings before the Registrar, not as a defence in an infringement suit before a High Court. Once your trademark is registered, a competitor cannot invoke honest concurrent use to justify continued infringement.

If I discover an infringer but delay taking action, do I lose my rights?

Not automatically. The defence of acquiescence requires the infringer to prove that you not only knew about their use and delayed, but also that you made some positive representation — through words, conduct, or inaction with encouragement — that their continued use was acceptable. Simple awareness plus delay, without more, does not constitute acquiescence under Indian trademark law. The Bombay High Court in this case rejected the defendant’s acquiescence argument on precisely this basis. That said, filing promptly after discovery is always advisable — delay creates legal risk even if it does not automatically extinguish your claim. For urgent cases, contact Legismith immediately.

Register Your Brand Before Someone Else Does — Free Assessment in 2 Hours

The Regal Shoes case took years to reach court. An early registration would have prevented the dispute entirely. Legismith provides a free trademark availability search, class identification, and cost estimate — confirmed in writing within 2 business hours via WhatsApp.

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