jeeefheifhhhki

BEFORE THE HONORABLE HIGH COURT OF DELHI

AT
NEW DELHI

APPEAL NO __________ OF 2020

HUMMINGWAYY AND TUMBLER PVT. LTD ……………………….APPELLANT

VERSUS

HIRALAL MEGABRANDS PVT. LTD …………………………………….RESPONDENT

NAME- NITMEM PADUN

NAME – NASIB MASIH
EXAM ROLL NO.- 180440
EXAM ROLL NO – 180395
CLASS ROLL NO.- 182158
CLASS ROLL
SECTION- F NO – 182399

MEMORIAL ON BEHALF OF RESPONDENT

1
 CONTENTS

S.NO TITLE PAGE

1. LIST OF ABBREVIATION 3
2. INDEX OF AUTHORITIES 4
3. STATEMENT OF JURISDICTION 5
4. STATEMENT OF FACTS 6
5. STATEMENT OF ISSUES 7
6. SUMMARY OF ARGUMENTS 8
7. DETAILED PLEADINGS 10
8. PRAYER 19

2
 LIST OF ABBREVIATIONS

S.NO FULL FORM ABBREVIATION

1. SUPREME COURT SC
2. ALL INDIA REPORTER AIR
3. HIGH COURT HC
4. TRADEMARK TM
5. EDITION Ed.
6. CHAPTER Ch.
7. VERSUS V.
8. FLEET STREET REPORTS F.S.R.
9. SUPREME COURT CASES SCC
10. REPORTS OF PATENT, DESIGNS AND RPC
TRADEMARK CASES
11. INDIAN LAW REPORTS ILR
12. SUPREME COURT REPORTS SCR
13. BOMBAY Bom
14. SUPPLEMENTARY REPORT Supp
15. INTELLECTUAL PROPERTY APPELLATE IPAB
BOARD
16. AND &
17. PATENT & TRADEMARKS CASES PTC

18. SECTION S.

3
 INDEX OF AUTHORITIES
1. STATUTES
CODE OF CIVIL PROCEDURE, 1908

INDIAN TRADEMARKS ACT, 1999

2. CASE LAWS

Associated Newspapers Ltd v Express Newspapers [2003]F.S.R.51 11

N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 13

Erven Warnink B.V. & Anr. v. J. Townend & Sons (HULL) Ltd. & Anr [1980] R.P.C. 11
31

MAC Personal Care Pvt. Ltd. and Ors. v. Laverana GMBH and Co. KG and Ors 13
2015(63) PTC 87(Del)

E.I. Du Pont De Nemours and Co. v Gemini Distilleries Ltd 2004 (28) PTC 663 (IPAB) 14

Toyoto Jidosha Kabushiki Kaisha v. M/s Prius Auto Industries Ltd. and Ors
MANU/SCOR/51800/2017 15

Cadila Health Care Ltd. v. Cadila Pharmaceutical AIR 2001 SC 1952

15
Mahendra and Mahendra Paper Mills Ltd v Mahindra and Mahindra Ltd 2001
Supp(5) SCR 225 17

Cadbury India Limited and Ors. V. Neeraj Food Products 142(2007)DLT724

17
Consolidated Foods Corporation v. Brandon and Co., Private Ltd AIR 1965 Bom 35
19
L.D. Malhotra Industries Vs. Ropi Industries (1976) ILR 1 Delhi 278 19

Starbucks vs. British Sky Broadcasting [2015] UKSC 31 14

Teleworks Ltd v Telework Group plc 12

J.C. Penney v Penneys [1975] F.S.R. 367 CA 12

Reuter v Mulhens (1953) 70 R.P.C 13

19

4
 Harrodas v. Harrodian School (1996) RPC 698

3. BOOKS / TEXTS

Kerly`s Law of Trademarks and Tradenames; 16th ed.

Venkateswaran on Trademarks & Passing off; 7th ed.

5
 STATEMENT OF JURISDICTION

The Hon`ble Court has jurisdiction to entertain this appeal pursuant to S. 96 of The Code
of Civil Procedure, 1908.

Section 96, The Code of Civil Procedure, 1908

Appeal from original decree -
(1) Save where otherwise expressly provided in the body of this Code or by any
other law for the time being in force, an appeal shall lie from every decree passed
by any Court exercising original jurisdiction to the Court authorized to hear
appeals from the decisions of such Court.

6
 STATEMENT OF FACTS

1. Appellants, Hummingwayy & Tumbler Pvt. Ltd, based in Norway is proprietor of TM

‘HumTum’ with device of daisies (flower) since 1966. It has set up its subsidiary in New
Delhi and have also applied for TM registration but is yet to formally start its operation.
2. Appellants are engaged in designing, marketing, and selling wide variety of premium
segment fashionable clothing and ancillary products having presence in 190 countries
with a total of 4500 outlets. Products are available in India on e-commerce platform, e.g.
Myntra, Amazon etcetera.
3. Respondents, Hiralal Megabrands Pvt. Ltd. , an Indian company based in Gujarat,
engaged in supplying, selling, and marketing affordable clothing and ancillary products
under the TM ‘Hum Tum’ in India and Middle East.
4. Respondents have been using the TM since 2011, and the same was registered in India in
the year 2014. TM is written in English, Hindi, and Gujarati language. Company believes
that TM being a popular Hindi expression is a major reason for the brand connect and the
same has achieved extensive recognition amongst relevant section of public.
5. Appellants contend that TM of respondent is confusingly similar to those of the
appellants and the same was being used for similar goods / products. Therefore, they have
filed a suit for passing off after a notice of cease and desist proved infructuous.
6. Suit was filed in District Court; however, the court refused to the appellants herein, any
relief, based on the findings that TMs were quite different, operating in two very
different territories, bonafide adoption, and continuous, extensive and uninterrupted use
since 2011 by respondents herein.
7. The present appeal against the District Court judgement is based on the ground that judge
has failed to appreciate few grounds and ignored other while deciding the matter.

7
 STATEMENT OF ISSUES

1. Whether the respondents by adopting impugned mark are passing off their goods as
that of that appellants ?

1.1 Whether the mark adopted by appellants have achieved the goodwill or
reputation in India?

1.2 Whether the respondent’s mark is deceptively similar to those of the appellant
and therefore amounts to misrepresentation ?

1.3 Whether the misrepresentation has or is likely to cause or have caused

damages to the appellants?

8
 SUMMARY OF ARGUMENTS

1. Whether the respondents by adopting impugned mark are passing off their goods as
that of that appellants ?

The tort of passing off requires three elements namely, goodwill and
reputation, misrepresentation, and damages. TM of the appellants have not achieved requisite
goodwill or reputation in India under the territorial criteria. Further the mark of the respondents
is not confusingly similar to those of appellants and question of misrepresentation, therefore,
does not arise. Since no misrepresentation, therefore no case for damages is made out.

1.1 Whether the mark adopted by appellants have achieved the goodwill or reputation in
India?

Recent judgments of courts in India and abroad indicate a doctrinal shift. There
is a shift from universalism of reputation in favor of territorialism i.e. not only the TM has
achieved reputation or goodwill in other jurisdictions but must have also spilled over to
territory or jurisdiction in question.

However, spilling over has not taken place in the case of the appellant`s
TM and therefore the first condition is not met. Further under the principle of prior use, the
appeal is liable to be dismissed in face of bonafide and prior adoption, and use of the TM by
the respondent since 2011 and the same has achieved extensive recognition among relevant
class of public.

1.2 Whether the respondent’s mark is deceptively similar to those of the appellant and
therefore amounts to misrepresentation ?
The mark of the appellants and respondent vary in many aspects. There is absence of
daisy figure used by appellant in respondents` TM. In addition to this the TM of
respondents is written in English, Hindi, and Gujarati. Mark adopted by respondents is a
popular Hindi expression.
In cases of passing off as against those of infringement
presence of dissimilar features are sufficient to distinguish between goods of two parties.

9
 Further both the parties cater to different classes, premium
segment clothing in case of appellants and affordable clothing in case of respondents.
This demand varied level of attention on part of different classes.

1.3 Whether the misrepresentation has or is likely to cause or have caused damages to the
appellants?

Classic Trinity of passing off demands that misrepresentation should lead

to damages to the complaining party. Since there is no room for confusion and therefore
no misrepresentation, the case for damages cannot been made out.

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 DETAILED PLEADINGS

Issue 1 – Whether the respondent is guilty of the tort of passing off ?

Passing off – Essential elements :

The tort of passing off requires that following conditions be fulfilled before an action can be
instituted and proved. The conditions stated in the Kerly` Law of Trademarks and Trade name
1
are –

a. “First, he must establish a goodwill or reputation attached to the goods or services

which he supplies in the mind of the purchasing public by association with the
identifying ‘get-up’ (whether it consists simply of a brand name or a trade description,
or the individual features of labelling or packaging) under which his particular goods or
services are offered to the public, such that the get-up is recognized by the public as
distinctive……

b. Secondly, he must demonstrate a misrepresentation by the defendant to the public

(whether or not intentional) leading or likely to lead the public to belief that the goods or
services offered by him are the goods or services of the plaintiff.

c. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely
to suffer damage by reason of the erroneous belief engendered by the defendant’s
misrepresentation that the source of the defendant’s goods or services is the same as the
source of those offered by the plaintiff.”

Mere confusion which does not lead to a sale is not sufficient2.

Essential elements were expanded and elaborated by Lord Diplock 3 as follows -

1
Kerly’s Law of Trademarks and Trade Names, CH 20 (Sweet & Maxwell, 16th edition of 2017)
2
Associated Newspapers Ltd v Express Newspapers [2003] F.S.R. 51. , per Lord Jauncey
3
ERVEN WARNINK B.V. & Anr v. J. TOWNEND & SONS (HULL) LTD. & Anr. ; [1980] R.P.C. 31 at 93.

11
 It does not follow that because all passing off actions can be shown to present these
characteristics, all factual situations which present these characteristics give rise to a
cause of action for passing off.”:
“My Lords, Spalding v Gamage and the later cases make it possible to
identify five characteristics which must be present in order to create a valid cause of action
for passing off:

(1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective
customers of his or ultimate consumers of goods or services supplied by him, (4) which is
calculated to injure the business or goodwill of another (in the sense that this is a
reasonably foreseeable consequence) and (5) which causes actual damage to a business
or goodwill of a trader by whom the action is brought (or in a quia timet action) will
probably do so.”.

Issue 1.1 : Whether the mark adopted by appellants have achieved the goodwill or reputation in
India?

The first requirement for proving the tort of passing off is that TM must have attained goodwill or
reputation. Reputation is the level of awareness of a mark or get-up in on the part of the relevant
public. The overriding consideration, in judging extent of reputation, is whether by reason of that
reputation the claimant has built up goodwill to the point where substantial damage will be caused
to it by the acts, they complain of4.
The relevant date when it comes to proving reputation is
the date when the defendant commenced the acts complained of5. In Teleworks Ltd v Telework
Group plc6 the claimant unsuccessfully sought to rely upon the goodwill that the defendant could
be expected to acquire through future expansion of trade. The court correctly rejected the
consideration of such “future goodwill” as wrong in principle.

4
Kerly`s Law on Trademarks and Tradenames, Ch. 20 (Sweet & Maxwell,16th ed, 2017)
5
J.C. Penney v Penneys [1975] F.S.R. 367 CA at 374 and 381
6
[2002] R.P.C. 27
12
Goodwill and reputation are closely linked; there can be no goodwill in a sign or other indication
unless it is known to the public and distinguishes the goods or services in relation to which it is
used. In the context of passing off, goodwill has been stated to represent, in connection with any
business or business product, the value of the attraction to customers which the name and
reputation possesses7.
Universalism : a case for transborder reputation

In N.R. Dongre v. Whirlpool Corporation 8 hon`ble SC recognized the concept of transborder

reputation. It was held that dissemination of knowledge of a TM in respect of a product through
advertisement in media amounts to use of TM, whether or not the advertisement is coupled with
actual existence of the product in the market.

Thus, the critical element was conscience on the part of relevant

class by reason of spillover through means of advertisement.

From Universalism towards Territorial principle : Doctrinal Shift

In MAC Personal Care Pvt. Ltd. and Ors. vs. Laverana GMBH and Co. KG and Ors.9
Division bench of the Delhi HC while upholding the rights of the Respondents in their mark, the
Court criticized that in cases of passing off, many a times, interim injunctions are granted on the
basis of global nature of reputation without insisting on any localized business. In this case, the
court did not follow blindly the universality principle but focused on evidence and on what all
came under the ambit of ‘use’ and ‘goodwill’ in the context of transborder reputation

It was held that there are two elements to the transborder reputation, namely:-

(i) That there is an international reputation inuring in a trademark in favor of the

plaintiff on account of use made overseas; and

(ii) The reputation spills over to India

7
Reuter v Mulhens (1953) 70 R.P.C. 235 at 254.
8
(1996) 5 SCC 714
9
2015 (63) PTCB87(Del)
13
Further in E.I. Du Pont De Nemours and Co. vs. Gemini Distilleries Ltd.10 IPAB held as

follows –

The reputation in its practical meaning is the knowledge of the mark in the relevant
section of the public in India. This knowledge can occur either using the mark in India or
by its publicity in India.

However, each trademark is unique, and each case has to be decided on the basis of the
evidence filed in support of reputation of the mark. Reputation is based on facts. The
question to be decided is whether the appellants' foreign reputation, if any, has reached
India and that they have established their presence in India.

In Toyoto Jidosha Kabushiki Kaisha . vs. M/s Prius Auto Industries Ltd. and Ors.11 it was held
as follows

27. The overwhelming judicial and academic opinion all over the globe, therefore,
seems to be in favor of the territoriality principle. We do not see why the same should not
apply to this Country.

28. To give effect to the territoriality principle, the courts must necessarily have to
determine if there has been a spillover of the reputation and goodwill of the mark used by
the claimant who has brought the passing off action.

Hon`ble court further referred to Starbucks vs. British Sky Broadcasting12 wherein Lord
Neuberger observed as follows:

Thus, where the claimant’s business is carried on abroad, it is not enough for a claimant
to show that there are people in this jurisdiction who happen to be its customers when
they are abroad.

10
2004 (28) PTC 663 (IPAB)
11
MANU/SCOR/51800/2017
12
[2015] UKSC 31

14
 Submission :

1) That the appellants have not attained the required goodwill and reputation in India
on the relevant date.

2) That the respondents have been in bonafide prior use of their TM since 2011.
3) That the e-commerce portals namely, Myntra, Jabong and Amazon have started
their operation in India only in the year 2012 and therefore there was no spillover
to India on the relevant date by way of advertising or use of trademark, which
may establish Repute and Goodwill to the appellants.
4) That the customers, if any, were customers when they were abroad.

Issue 1.2 : Whether the respondent’s mark is deceptively similar to those of the appellant and
therefore amounts to misrepresentation ?

The Second requirement on the part of person bringing an action for passing off is, that he
must demonstrate a misrepresentation by the defendant to the public (whether or not
intentional) leading or likely to lead the public to belief that the goods or services offered by
him are the goods or services of the plaintiff. The argument herein is that the registered mark
of the respondents is confusingly similar to those of the appellants.

Section 2(1)(h) of The Trade Marks Act, 1999 define deceptive similarity as -

(h) “deceptively similar”.—A mark shall be deemed to be deceptively similar to another

mark if it so nearly resembles that other mark as to be likely to deceive or cause
confusion.
Hon`ble SC in Cadila Health Care Ltd. v. Cadila Pharmaceutical13 while dealing with question
of deceptive similarity held as follows :

Broadly stated in an action for passing off based on unregistered trademark generally for
deciding the question of deceptive similarity the following factors to be considered:

13
AIR 2001 SC 1952

15
 a) The nature of the marks i.e. whether the marks are word marks or label marks or
composite marks, i.e. both words and label works.

b) The degree of resemblance between the marks, phonetically similar and hence similar
in idea.

c) The nature of the goods in respect of which they are used as trademarks.

d) The similarity in the nature, character, and performance of the goods of the rival
traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they
require, on their education and intelligence and a degree of care they are likely to
exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of

dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depends upon facts of each case and
the same weightage cannot be given to each factor in every case

The average reasonable consumer – Kerly

on Trademarks and Tradenames14 –

Average Consumer15 :

In general terms, the average consumer must be used whenever an assessment is

required of the perception of a mark or sign in the minds of member of relevant public.

14
Kerly`s law on Trademarks and Tradenames, (Sweet & Maxwell,16th ed, 2017)
15
Kerly`s law on Trademarks and Tradenames, Ch. 3(021) (Sweet & Maxwell,16th ed, 2017)

16
Accordingly, the relevant consumer is utilized in the assessment of whether a sign is identical to
a mark, whether there exists a likelihood of confusion…….

Identifying average consumer16 :

It depends on the goods or services in question. Often the average consumer is the end user.

Average Consumers : Level of attention17

The level of attention and care of each relevant class of average consumer is also
determined by goods or services in question and the knowledge, experience, and
purchase involvement of the relevant class of persons.

Consumers are normally expected to pay more attention when paying high price or when
they are purchasing more complex goods or services which require them to specify their
requirements or if the purchase involves professional assistance and advice.

On the other end of the spectrum is are low-priced , self-selected goods which will often
be repeat purchases and picked and put into supermarket trolley with a “low level of
attention” because of other distractions. It is debatable whether TM law should worry
about those consumers who display a “low level of attention”, and one has to question
whether they are paying sufficient attention to the TM at all18.

In Mahendra and Mahendra Paper Mills Ltd v Mahindra and Mahindra Ltd 19 hon`ble SC
held –

“…….that all factors which are likely to create or allay deception or confusion must
be considered in combination; that broadly speaking, factors creating confusion would be, for
example, the nature of the market itself, the class of customers, the extent of reputation, the
trade channels, the existence of any connection in course of trade, and others.”

16
Kerly`s law on Trademarks and Tradenames, Ch. 3, 3-010, (Sweet & Maxwell,16th ed, 2017)
17
Kerly`s law on Trademarks and Tradenames, Ch. 3, 3-016 (Sweet & Maxwell,16th ed, 2017) 18
18 Kerly`s law on Trademarks and Tradenames, Ch. 3, 3-018 (Sweet & Maxwell,16th ed, 2017)
19
2001 Supp(5) SCR 225

17
In Cadbury India Limited and Ors. V. Neeraj Food Products20, High Court of Delhi explaining
the difference between passing off action and an action for trademark infringement held –

In an action for infringement of the plaintiff's trademark, it is immaterial that the outfit, outer
covering, and other written marks on the goods originate from a different source than that of a
registered proprietor's trademark. The liability of the defendant in such a case may be absolute.
However, in case of passing off, of trademark, the defendant may escape liability if he can show

that the material added by him is sufficient to distinguish his goods from that of the plaintiff's
goods.

Submissions :

a. Hummingwayy & Tumbler Pvt. Ltd. was dealing in apparels of ‘premium’ segment.
Whereas Hiralal Megabrand Pvt. Ltd. was dealing in ‘affordable’ apparels. Therefore,
the nature of goods, which is a relevant factor, should be considered.
b. The nature, character, and performance of the rival goods i.e. ‘Hiralal’ is different
from the appellant`s goods.
c. It can fairly be presumed that the class of buyers of premium segment and those of
affordable clothing are two different classes. Therefore, the level of attention required on
part of class purchasing premium goods is expected to be greater than those buying
affordable clothing.
d. The mark of the respondent is different from the appellants in the following aspects –
1. While the mark of the appellants comprises of the text ‘HumTum’ in English
language and the figure of ‘daisy flower’, the mark of the respondents comprises of
‘HuMTuM’ written in English, Hindi, and Gujarati. Moreover, the daisy (flower) is
absent from the mark.
2. ‘HuMTuM’ is a popular expression in India and the same has been adopted
bonafidely by the respondents.

20 142 (2007) DLT 724

18
 3. That the abovementioned differences are sufficient to distinguish the goods of
respondents from appellants. (see Cadbury India Limited (supra))

Therefore following the dicta in Mahendra & Mahendra (supra) that that all factors which
are likely to create or allay deception or confusion must be considered in combination ,
considered in totality, the marks of the respondent and appellants are not confusingly similar.

Therefore, there is no misrepresentation on part of the respondent.

Prior use :

In the case of Consolidated Foods Corporation v. Brandon and Co., Private Ltd21, it was
observed that

“Priority in adoption and use of a trademark is superior to priority in registration”

Further in L.D. Malhotra Industries Vs. Ropi Industries22 the High Court of Delhi observed that
prior use of a distinctive mark will acquire the right of property without considering extent of
such use.

“That a trader acquires a right of property in a distinctive mark merely by using it upon or in
connection with his goods irrespective of the length of such user and the extent of his trade. The
trader who adopts such a mark is entitled to protection directly, the article having assumed a
vendible character is launched upon the marker. Registration under the statute does not confer
any new right to the mark claimed or any greater rights than what already existed at common
law and at equity without registration.

Submission :

1. That the respondent has bonafidely adopted and is a prior user of the TM since the year
2011 and the registration for same was obtained in the year 2014. Further it has become
quite familiar among relevant class.

21
AIR 1965 Bom 35

22
(1976) ILR 1 Delhi 278

19
 Whereas the appellants are yet to start operation in India and have not achieved goodwill or
reputation in Indian territory as mentioned previously.

Issue 1.3 : Whether the misrepresentation has or is likely to cause or have caused damages to
the appellants?

The classical trinity23 of the tort of passing off requires

1) Reputation 2) Deception 3) Damage

Since the first and second conditions are not present, therefore, the third condition is not fulfilled.

PRAYER

WHEREFORE, in the light of the issues raised, arguments advanced, and authorities cited it is
most humbly and respectfully requested that Hon`ble High Court may adjudge, declare, and direct:
1. To dismiss the appeal and uphold the judgment of the District Court.
2. That the mark of the appellants has not achieved reputation and goodwill in the Indian
territory.
3. That the respondents are entitled to exclusive use of their adopted registered mark in
India.
4. That the cost of suit be awarded against the appellants, in favor of respondents.
5. The hon`ble court may also be pleased to pass any other order, which it may deem fit
in light of justice, equity, and good conscience.

AND FOR THIS ACT OF KINDNESS THE RESPONDENTS AS IN DUTY BOUND SHALL
EVER PRAY

23
Harrodas v. Harrodian School (1996) RPC 698 at 713

20