Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors

The case H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors is based on the point of having a similar trademark to that of another brand. The harm it causes to the reputation of one brand which another brand has adopted is one of reputation. The Plaintiff, in this case in a well-known trademark, and would have lost its reputation at the hands of the Defendant, due to having a similar trademark in the same business circle which would cause the consumers to be misled. This is an unhealthy and unethical means of earning goodwill and reputation at the hands of another brand. Hence, when a trademark is imitated then it is a must to grant and injunction, which is what, was held. The Ld. Single Judge after hearing both the parties, accepts the interim application of the Plaintiffs and rules in favour of the Plaintiff, stating that the Defendants discontinue the business as they were earning goodwill wrongfully, and restrained the defendant from using their trademark in any manner.

Analysis of H&M Hennes & Mauritz AB & ANR v. HM Megabrands Pvt. Ltd. & Ors

Found in almost every shopping mall are the low-cost, trend-specific clothes and accessories of H&M. The Swedish company quickly made its place in India and became popular and successful, especially with the young girls. H&M is the plaintiff in the present case. The Plaintiff owns a trademark, H&M which was first registered in the United Kingdom in the year 1985. In the year 2005, the plaintiff registered the trademark in India as well and it is a well-known trademark. However, the defendants in the present case, HM Megabrands started marketing apparels under this name in the year 2011 and on April 11th, 2014, applied for registration of the trademark in India.

When the plaintiffs came across the trademark of the defendants, they realised that the trademark was astonishingly similar, and it could confuse and mislead people. The website of the defendants, www.hmmegabrands was found to be offering similar services and goods as the plaintiffs. Hence, the Plaintiffs filed a suit for trademark infringement and passing off.

The plaintiffs submitted that theirs was a well-known trademark and their products were extensively marketed and promoted on the internet and could be easily found by a simple Google search. Hence, it is the contention of the plaintiffs that the plaintiffs had knowingly and intentionally incorporated the alphabets H and M into their corporate name, and had purposely designed the alphabets H and M in such a manner that they looked similar to the trademark of the plaintiffs. The plaintiffs also believe that since the plaintiff and defendant were in the same line of business i.e., selling garments, they did not have the defence of having no knowledge of the plaintiffs’ trademark.

On the other hand, the defendants took a stand that the letters H and M were the initials of the defendants, Hashim Merchant and Hamza Merchant, and not any other reason as stated by the plaintiffs. The second and more important contention of the defendants was that the plaitiffs’ trademark did not have any recognition in India in 2011, when the defendants had first started selling garments under this name. Further, the plaintiffs had formally established themselves in India only towards the end of 2013 and the first store of the plaintiffs’ had opened in India only in the year 2015. It also contended that since there was no store of H&M in Delhi, the Delhi High Court did not have jurisdiction to decide the suit. The defendants further argued that even though the alphabets H and M were the same, the word Megabrands added made a clear distinction between the theirs and the plaintiffs’ trademark.

The two main issues that are raised in this case are:

  1. Whether the defendant had intentionally made a trademark similar to the trademark belonging to the plaintiffs?
  2. Whether the Delhi High Court had jurisdiction to decide the suit?
  3. Whether the plaintiffs’ suit would survive despite not establishing themselves in India when the Defendants had adopted their trademark?

The first issue decided by the Learned Single Judge was the issue of jurisdiction. The Judge as long as the effect of infringement or passing off, if any, by the defendants, of the trademark of the plaintiffs and/or of the goods of the defendants as the goods of the plaintiffs, can be felt in Delhi, the Hon’ble High Court of Delhi would have the jurisdiction to entertain the suit.

The Ld. Single Judge also rejected the argument of the defendants and said that adding a suffix or a prefix to the alphabets H&M would create distinctiveness between both the trademarks, and Megabrands being a generic word could be solely associated with the defendants. The way the alphabets H and M were written was similar to that of the Plaintiffs and considering that both the companies were in the same trade circle, the customers would be similar and it would cause some confusion. Further, the Ld. Judge also referred to Christopher Waldow’s Law of Passing off[1], which says that when a trademark is adopted by a party which is imitating another’s trademark, then an injunction needs to be granted. The Ld. Judge also referred to Mahendra and Mahendra Paper Mills v. Mahindra and Mahindra Limited[2] , wherein the Plaintiff had been using the word ‘Mahindra’ which had become so well-known and had acquired distinctiveness over the years, and it was held that the word ‘Mahendra’ used by the defendants would create an impression that there was some connection or relation to the plaintiff.

Deciding the issue of not being established when the defendants had adopted their mark, the Ld. Judge stated that the Plaintiff had sales in India since 2015, which was prior to the institution of the suit. Also, the Judge followed the principle of “first in the market” as established in the Neon Laboratories Limited v. Medical Technologies Limited[3]. The Ld. Single Judge also referred to the N.R. Dongre v Whirlpool Corpn.[4], which stated that wordwide prior user is given preference over the registered trademark in India.

The Ld. Single Judge ruled in favour of the Plaintiffs and upheld the interim application and restrained the defendants from using their trademark in any manner.

Conclusion

Having similar trademarks, especially to that of a well-known trademark is an unhealthy way of acquiring good reputation and misleading the consumers, who would innocently buy garments from the wrong company by mistaking it to be another brand. In order to avoid chaos and unhealthy competition, it is important that there be distinctive and independent trademarks. There are many cases around the world for using similar trademarks just to gain good reputation and goodwill falsely, which not only harms the reputation of the other company but also brings down the sales of that company. Hence, differentiated trademarks are a must.

Author: Vandya Nallamothu, a 5th Year BA LL.B (Hons.) student of Symbiosis Law School and intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 1995 Edition

[2] (2002) 2 SCC 147

[3] (2016) 2 SCC 672

[4] (1996) 5 SCC 714

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