Reiterating the “first in the market test”, Indian Court grants injunction in favour of H&M

The Delhi High Court recently restrained an Indian firm – HM Megabrand from using in any manner whatsoever the trade / service mark / trade name ‘HM /.HM. / HM MEGA BRANDS / .H M.’ 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. This injunction will be operative from July 9, 2018.

In the present case, the Swedish fashion retailer along with its Indian subsidiary have sued the Defendants inter alia for injunction restraining passing off / infringement of well-known trade mark ‘H&M’ of the Plaintiffs, by use of the trade mark ‘HM MEGA BRANDS’ and for ancillary reliefs. The Plaintiffs’ also claimed that the deceptive use of the mark by the Indian firm created confusion in the minds of consumers. The Defendants contended that the adoption of the Plaintiff’s mark was bona fide, as the acronyms “HM” mark stood for the names of its proprietors. Herein, the Court observed that, “defendant’s state of mind is wholly irrelevant to the existence of the cause of action for passing off.” It was observed “that where the Defendants had adopted or imitated the Plaintiffs’ trademark, injunction had to follow”.

It was further contented by the Defendants that the addition of the suffix “Megabrand” distinguishes both the marks. However, the Court held that addition of a suffix like “Megabrand” which is descriptive and generic, “rather than distinguishing, reinforces the impression in the mind of the consumer that the business of the defendants is the business of the plaintiffs”.

The Defendants also contended that the acronyms is generic and has therefore come in public domain, to which the Court replied, “A word, even if generic, if applied to a business with which the word is unrelated, is indeed to be protected. Merely because it is alphabets or acronym, is immaterial”.

The Defendants further took the stand of prior use as the use of the mark HM by the Defendants began in 2011 whereas the Plaintiffs first used the mark in India only in 2015. However, the Court reiterated the “first in the market test” previously laid down by Supreme Court and referring to the trans-border reputation of the Plaintiff observed that, “For a mark/brand to have a reputation or goodwill in India, setting up a shop in India or sale in India is no longer a necessity. The introduction of web based sales which enables Indians to shop for whatever brands/goods available wheresoever, has further increased the familiarity in India with the marks and brands essentially sold/marketed outside.”

While granting the injunction in favour of the Plaintiffs, the Court also observed that “I am therefore of the opinion that the plaintiffs have a prima facie case. The defendants, though have commenced their business in the year 2011 but if permitted to continue their business during the pendency of the suit, are likely to develop further goodwill / mark under the impugned mark and once a prima facie case is found in favour of the plaintiffs, it is not deemed appropriate to allow the defendants to gather further goodwill and business in the mark. The injury and loss to the plaintiffs, if the defendants during the pendency of the suit are permitted to continue using the mark, is implicit and no order of keeping an account can compensate the plaintiff sufficiently.


Contributors to present post are Abhilasha, Ritu & Mitali

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