India: IP Case Compilation 2019

Last Updated: 17 July 2019
Article by LexOrbis  

H&M Hennes & Mauritz AB & Anr. v. HM Megabrands Pvt. Ltd. & Ors.

Court: High Court of Delhi

Case No.: Interim Application No. 7259 of 2016 in CS (Comm) No. 707 of 2016

Order dated: 31st May 2018


  1. Whether the Defendants' mark infringed the Plaintiff's mark?
  2. Whether the Plaintiff's mark had gained any recognition in India at the time when the Defendants adopted their mark?
  3. Whether the Plaintiff was entitled to claim exclusive rights over the two letters HM or H&M?

Judgement: The Delhi High court granted a permanent injunction in favour of the plaintiff, Hennes & Mauritz, thus securing the rights of a foreign company in their trade mark against the rights of an Indian company. The dispute arose when the plaintiff, proprietor of the famous brand/mark H&M came across the defendants' mark HM and filed a suit seeking injunction to restrain the infringement of their trade mark.

Plaintiff No. 1, is a well-known designer and seller of fashionable clothing having over 4000 outlets worldwide along with online presence in 21 countries. The trade mark H&M was adopted by the plaintiffs in early 1970. The plaintiffs secured the first registration in the said trade mark in UK in 1985, whereas it was registered in India in 2005. The plaintiffs claimed prior and exclusive rights in their trademark and contended that the defendants had represented the letters "H" & "M" in a manner similar to that of the plaintiffs and used the colour combination of red and white as well, thus infringing the plaintiffs' rights in their mark.

On the other hand, the defendants, HM Megabrands, an Indian company engaged in the business of marketing, supplying and selling of garments etc. adopted the mark HM in 2011 and applied for its registration in 2014. In their defence, the defendants argued that the adoption of their mark was honest as the same was derived from the initials of its directors' names. In addition to this, they claimed that the use of "megabrands" in their mark sufficiently differentiated their goods from those of the plaintiff. Further, their primary contention was that the plaintiffs had not entered the Indian market in 2011 i.e. the year of adoption of the defendants' mark and thus had not acquired any reputation with respect to their trademark in India.

The Court while dealing with the question of similarity between the two marks stated that any consumer familiar with the plaintiffs and their brand H&M upon seeing the defendants' brand and seeing it being described as "megabrand" may associate the goods of the latter with the former. Further, it noted that the addition of "megabrands" to the alphabetical letters "HM" in the Defendants' mark creates an impression of association between the two parties and reinforces the impression in the minds of the consumers that the businesses of the rival parties are related to each other. As regards the generic nature of "H&M" or "HM", the Court held that the said trademarks were not generic or publici juris to the trade or businesses of the plaintiffs and defendants. The said trademark was alien to the trade of both the parties which was related to fashion clothing and had been admittedly adopted by the plaintiffs much prior to the defendants. As far as the question of the plaintiffs' presence in India at the time of adoption of the defendants' mark was concerned, the Court noted that for an international mark/brand to have reputation or goodwill in India, setting up of a shop or sale in India is no longer a necessity and the introduction of web-based sales has increased the familiarity of international marks and brands in the Indian market. Thus, the court concurred with the plaintiffs' claim of prior rights in their mark and concluded that the case was prima facie in favour of the plaintiff.

Thus, the court restrained the defendants from using in any manner whatsoever the trade mark/service mark/trade name .HM, .HM, .HM MEGA BRANDS/ .HM or any other deceptive variations of the same in relation to their businesses, products etc.

Arun Chopra v. Kaka-Ka Dhaba Pvt. Ltd. and Ors.

Court: High Court of Delhi

Case No.: CS (Comm) No. 728 of 2018

Order dated: November 28, 2018

Issue: Whether the Defendants have infringed the Plaintiff's rights by adopting trademarks with the expression – Kaka.

Judgement: The famous restaurant Kake Da Hotel has managed to secure its rights in its name and trademarks against Nashik-based food outlets namely Kaka-kaDhaba', 'Kaka-Ka Restaurant' and 'Kaka-Ka Garden'. The Court observed that although there is no doubt that the Plaintiff's user is extremely long and extensive, the question as to whether the word 'Kaka' or 'Kake' can be monopolised by any party could only be adjudicated at trial. Although, the interim order has been granted in favour of the plaintiff whereby the defendants have been prohibited to use the expression 'Kaka-ka' in relation to any new outlet during the pendency of suit, it has permitted the defendants to continue using the names Kaka-ka Dhaba', 'Kaka-Ka Restaurant' and 'Kaka-Ka Garden'. Further, even though, it allowed the operation of the defendants' company, 'Kaka Da Dhaba Pvt. Ltd.', the establishment of any new entity by the name of Kaka was prohibited. The rights of the parties shall be determined in the subsequent hearing.

Bigtree Entertainment Pvt. Ltd. v. D. Sharma and Anr

Court: High Court of Delhi

Case No.: CS (Comm) No. 609 of 2016

Order dated: January 21, 2019

Issue: Whether the mark 'BOOKMY' has attained an exclusive meaning and that the plaintiff can claim exclusive rights on the same

Judgement: The Court refused to grant injunction in favour of the plaintiff. The plaintiff, Bigtree Entertainments, proprietor of the 'BOOKMYSHOW' mark had filed a suit for trademark infringement, seeking restraint of use of mark 'Book My Event' or prefix 'Bookmy' by the Defendants. The Court ruled that the plaintiff's mark "BOOKMYSHOW" has not attained exclusivity and that the prefix 'BOOKMY' is a common English term and its link with booking for shows, events, films, etc. is obvious which makes it descriptive of the services in respect of which it is claimed for. It noted that the visual effects namely, font and colour schemes of the rival marks are different and therefore, it is unlikely that the customers would be confused by the said trade names or marks.

Carlsberg Breweries v. Som Distilleries and Breweries Limited

Court: High Court of Delhi

Case No.: CS (Comm) No. 690 of 2018

Order dated: December 14, 2018

Issue: Whether a composite suit that joins infringement of a registered design and passing off of a trademark is maintainable?

Judgement: The Delhi High Court has held that a composite suit dealing with infringement of a registered design and passing off is maintainable, thus overruling its judgment in Mohan Lal v. Sona Paint wherein it was held that these actions cannot be combined in one suit as the causes of action on which both the matters were premised on were different.

The Court observed that in the instant matter, the cause of action pertaining to the infringement of a design as well as passing off emanated from the same transaction and therefore to avoid multiplicity of proceedings, the claims for infringement and passing off could be clubbed together in one suit.The Court observed that since the sale of products by the defendant would be in question in both causes of action, a substantial part of the facts of the two actions would be the same as to whether the article being sold by the defendant of a particular design is or is not a fraudulent or obvious imitation of the article of the plaintiff. Thus, it was held that to a considerable extent, the evidence of two causes of action would be common and therefore, in order to avoid multiplicity of proceedings, a joinder of the two causes of action should take place.

Crocs Inc Usa v. Bata India Ltd & Ors

Court: High Court of Delhi

Case No.: FAO (OS) (COMM) 78/2018 & CM APPL. 17358-61/2018 and

others Order dated: January 24, 2019

Issue: Whether a design can also function as trademark?

Judgement: The plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit was filed were found to be not new or original and therefore the Plaintiff pressed for the injunction on the ground of passing off which is an action in common law. It was settled by an earlier judgment of five judge bench that as long as the elements of design are not used as a trade mark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a passing off claim can sustain. A passing off action has been held to be maintainable with respect to elements of trade dress and overall get up, other than registered design and not with respect to registered design. It was argued by the Defendant that if the passing off is claimed of elements of the design as a trade mark, no passing off action lies. Since the plaintiff itself relied on use of its registered designs as a shape trade mark and no additional features qualifying as trade dress, which are not part of the registered design have been pleaded or pointed out, the passing off suit is not maintainable. The court agreed with the Defendant that the plaintiff has not been able to show any extra features, besides the design, which is used as a trade mark.

The Court interpreted the legislative intent of the Design Act which is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said design. The legislative intent will be defeated if the design after its term was allowed to be used as trademark. The court used the analogy of patents rights which is granted for a limited period and observed that the intention to give design protection for a limited time cannot be extended to protection in perpetuity by claiming trademark rights. Therefore, the court gave an opinion that not only the registered design cannot be a trade mark during the period of design registration but even thereafter. Accordingly, the court held that a registered design cannot constitute a trade mark; however if there are features other than those registered as a design and are shown to be used as a trade mark and with respect to which goodwill has been acquired, it is only those extra features which can be protected as a trade mark. If there has been a copy of registered design, only an action for infringement under the Designs Act would lie.

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