The case was between H&M and the H&M megabrands regarding infringement of the trademark. The Delhi high court on May 31, 2018 pass the order granting H&M the injunction by restraining HM Mega brands to use such mark thereof.
Facts of the case:
Hennes & Mauritz AB Sweden were termed as Plaintiff no.1 for their trademark “H&M”.
Hennes & Mauritz Retail Pvt Ltd New Delhi were referred as Plaintiff no 2 for their trademark “H&M” The Plaintiff No.2 is the subsidiary of plaintiff No1 in India. HM mega brands were referred as Defendant No1 and their officers were Referred as Defendant No.2,3&4.
The plaintiffs were under the vide variety of clothes accessories and other ancillary products. The provided services to men, Women children, teenagers etc. They had outlets around 4000 & more world vide. They also prove their services online over 21 countries.
Whereas the defendants HM Mega Brands were engaged in the business of marketing, supplying Garments, Selling and other ancillary products. They are running these business since 2011 and the application of trademark was made on April 10, 2014.
The plaintiff no 2 came across these domain name and the brand and they found out that they had registered for trade mark as well. They were operating website with the name “hmmegabrands.com” The Plaintiffs found out that Defendants were dealing with the similar type of as of Plaintiffs. Infect they were bearing the same mark as well.
The Plaintiffs also found out that their goods were also offered on Amazon, Myntra, Flipkart and other online portals etc.
In the year of June 2016 both the Plaintiffs Sued the Defendants i.e. HM mega brands. These defendants were sued on the basis of Infringement of the trademark. They demanded to grant them injunction from the court & to restrain them from further using their Trademark.
In the Court the Plaintiffs were of the contention that they have registered their trademark and domain name way back then the defendants. And these mark was registered in various Countries including India as Well. So it is important that they have the exclusive rights over to it as their mark.
There was another contention made by the plaintiff that the defendants had a similar Asymmetrical mark as of the Plaintiffs infact the artwork and other colour combination was even the same as of them. Thus the point of proving was that both the mark was identical to each other.
It was further noted that Plaintiff opened their store in India in the year of 2015. But there exported various items in India from 1972 under the name of H&M.
The plaintiff also raised another point on their goodwill as due to various marketing and Advertising the people are well aware of their brand and this could even harm their reputation.
Under section 124(5) of the Trademarks Act it does not preclude the court to pass interlocutory orders but this can only be done under exceptional circumstances where the trademark has obtained from illegal or fraud manner and other etc.
The defendants challenged the court’s jurisdiction to entertain the suit. The defendants stated that they had no outlets outside Delhi and they also claimed that the suit was filed with a malafied intention.
The defendants stated that the Plaintiffs have neither showed any documents regarding their reputation in India. Before the adoption of mark by the defendants.
In the financial year of 2016 the defendants obtained the same reputation as that of Plaintiffs due to their exclusive online sale and etc.
The defendants further submitted that there is no comparison between H&M and HM megabrands so no comparison needed to be done.
Courts observation and conclusion:
On the grounds of the contention made by both Plaintiffs and defendants the court observed that,
The jurisdiction point made by the defendants was directly rejected by the court.
The court held that the adoption of the mark could be held bonafide, even if it attracts the customers by disclosing the identity of the proprietor who was well known to the customers or had commanded goodwill unless the adoption of the name in the childhood was stated malafied.
Regarding the similarity of the name the court pointed out that though the names were identical but even the business both were engaged was the similar i.e. Fashion So the word "Mega brand" is used which means strong or large along with the word HM could have and implication with that of H&M i.e. of the plaintiffs. It can imply as an association to H&M of Plaintiffs.
The only point of difference that court noticed was “&”. Therefore, the court stated that the alphabet HM were the easily recognised by the people and not the symbols “&” which is used in middle between those alphabets.
Therefore, the defendants mark was similar to that of the Plaintiffs. Therefore “HM Megabrands” is deceptively similar to “H&M”.
After the observation the court concluded that the Plaintiff had established a prima facie case.
With the effect from July 9, 2018 the defendants were restrained from using in any manner whatsoever the trade / service mark / trade name, HM or any deceptive variation/s thereof, singularly or in conjunction with any other word or monogram/logo or label in relation to their products/services/business whether as a trade mark, service mark, trade name, corporate name, trading style or as website, domain name and e-mail address.