1. Plaintiffs H&M; Hennes & Mauritz Ab is one of the most popular designers, dealers, and vendors of a wide variety of fashionable clothing and other products and services for all age groups of Humankind.
2. To flourish in their market in India Plaintiffs had incorporated its subsidiary H & M Hennes & Mauritz Retail Pvt. Ltd., in 2013, and in 2015 plaintiff launched their first-ever store in one of the malls of Delhi by using their trademark 'H&M'.
3. Since 1972, Plaintiff has been manufacturing clothing in India under the name 'H&M' for export and got its trademark registered in the year 2005. Plaintiff had also registered its domain name as 'www.hm.com' in the year 1998.
4. The defendant company was incorporated in the year 2012 and was engaged in marketing clothing and other products and services under the trademark 'HM' since 2011. The defendant had also registered the domain name as HM' viz. 'www.hmmegabrand.com'. Further defendant also enlarged its ambit by marketing its products on the E-commerce portal such as Amazon, Jabong and Myntra etc.
Plaintiffs brought the current claim for infringement of trademark and passing off, as well as an application for interim relief, after being aggrieved by the Defendants actions. The adjudication on the application for interim relief is covered by this ruling.
Below is the Representation of the trademarks of Both the parties:
CONTENTIONS:
1. The Defendants contended that initially, Mr. Hashim Merchant started the HM enterprise for the business of FMCG products. In the year 2012 Defendant with his brother adopted the Trademark 'HM Megabrand' by considering the initials of their name and at that time there was no recognition of the Plaintiff's mark 'H&M' in India in 2011, in response to this Plaintiff stated that though its first store in India was opened in 2015, Plaintiffs had been engaged in manufacturing garments in India for export since 1972.
2. Again Defendant contended that Plaintiffs has no stores in Delhi thereby the Hon'ble Delhi High Court has no territorial jurisdiction and in addition to this Defendant had already filed suit against the Plaintiff therefore the present suit is liable to be stayed, in response to this Plaintiff had stated that in the abovementioned suit the Defendants themselves stated that its products are been sold all around the world via an online platform which includes the selling of their product in Delhi also. Therefore, the Hon'ble Court has the jurisdiction to initiate the suit.
3. Over again Defendant made their contention with respect to the Alphabets used in its Trademark and stated that the same alphabets had been used by numerous manufacturers as their trade name or trade mark and Plaintiff has not used their mark 'H&M' for five years in India from the date of registration, in response to this Plaintiffs stated though the first store in India was opened in 2015 but Plaintiffs have manufactured garments in India for export since 1972.
4. Further Plaintiff contented that we are the first user in the world to use the mark 'H&M'. As a result, members of the trade and the general public are well aware of the reputation and goodwill of the trademark 'H&M' as a result of media, television, or newspaper coverage. Hence the mark has acquired secondary meaning as a result of its widespread use and marketing.
The Court Granted Relief In The Favour Of The Plaintiff By Considering The Following Observations:
a) With respect to the Contention No. 1, that the Defendants adopted the trademark 'HM Megabrand' by considering the initials of their name does not qualify the test of distinctiveness as a mere glance on both the mark of the Plaintiff and Defendant can evidently reveal the similarity between them and the chances of causing confusion in the public at large. Further with respect to the non-use of the trademark 'H&M' for the period of five years, the court specified that sec 47 of the Trademark Act,1999 cannot be applied in this particular instance as Plaintiff marks their presence on the webpages displaying the product is sufficient to show that buyers or Indians travelling abroad are aware of the product and are likely to associate it with Plaintiffs only. Therefore, applying Section 471 will undermine the validity of the registration under Section 312 of the Trademark Act,1999.
b) With respect to Contention No. 2, Court nullifies the contention made by the Defendants with respect to the jurisdiction of the court as the said suit does not lie under Section 142 (2)3 of the Trademark Act, 1999.
After considering the above-stated observations, the Hon'ble Delhi High Court draws its conclusion by granting interim relief in the favour of Plaintiff, as Plaintiff is the prior user and just by not having any sale before the year 2015 will not entitle injunction against Plaintiff.
Takeaway
By drawing interference from the order of the Court, it is well-settled principle that the "Priority in adoption and use prevails over priority in Registration" i.e. In this case the Hon'ble Delhi High Court had considered the "foreign travel and exchange of cultures" of the plaintiff with the presumption that the consumers are aware of the top brands worldwide which demonstrate plaintiff as a prior and honest adopter of the Trademark 'H&M'.
Footnotes
1. Removal from register and imposition of limitations on ground of non-use.
2. Registration to be prima facie evidence of validity
3. The last preceding sub-section does not apply if the registered proprietor of the trademark, or a registered user acting in pursuance of sub-section (1) of section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trademark.
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