Before

THE HON’BLE HIGH COURT OF DELHI

Appeal NO._______ /2020

(Under Section-96 of Code of Civil Procedure, 1908)

IN MATTER OF:
Hummingwayy And Tumblrr Pvt. Ltd. ---------- (Appellant)

VERSUS

Hiralal Megabrands Pvt. Ltd. --------------- (Respondent)

UPON SUBMISSION TO HON’BLE HIGH COURT

MEMORIAL ON THE BEHALF OF PETITIONER/APPELLANT

Through the Council of Petitioner

Talwinder Singh

Roll no. - 182458

Exam roll no. - 180695

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 TABLE OF CONTENTS

LIST OF ABBREVIATIONS 3

INDEX OF AUTHORITIES 4

STATEMENT OF JURISDICTION 5

STATEMENT OF FACTS 6

STATEMENT OF ISSUES 7

SUMMARY OF ARGUMENTS 8

ARGUMENTS ADVANCED 9-18

PRAYER 20

2
 LIST OF ABBREVIATIONS

SC Supreme Court

HC High Court

CPC,1908 Civil Procedure Code,1860

SCC Supreme Court Cases

AIR All India Reporter

V Versus

i.e. That is

WIPO World Intellectual Property Organization

TRIPs Trade Related Intellectual Rights

Ltd. Limited

Ors. Others

Co. Company

Pvt. Private

Hon’ble Honorable

3
 INDEX OF AUTHORITIES
STATUTES
1 – THE CODE OF CIVIL PROCEDURE, 1908

2 – TRADE MARKS ACT, 1999

LIST OF JUDICIAL PRECEDENTS CITED

NAME OF THE CASE CITATION

Sears Poeuck and Company v Happy House (TV) [1992 (12) PTC 59 (DEL)]
Mfg. Co. Pvt. Ltd.

N.R. Dongre v Whirlpool corp. Ltd. (1996) 5 SCC 714

Milment Oftho Industries and Ors. V. Allerga Inc [AIR 2004 SC 3355]

Carrefour v Subburaman 2007 (35) PTC 225

Parle Products (P) Ltd. V. J.P. and Co. 1972 1 SCC 618

Cadila Health Care Ltd. V. Cadila Pharmaceuticals (2001) 5 SCC 73

Ltd.
Baker Hughes v. Heroo Kushalani 74 (1998) DLT 715

Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65

Daimler Benz Aktiegesellschaft v. Hybo Hindustan AIR 1994 Del 239

Ramdev Food products Pvt. Ltd. V. Arvindbhai AIR 2006 SC 3304 SC

Rambhai Patel
M/s. Power Control Appliances v. Sumeet (1994) 2 SCC 448: 1995 (15) PTC 165
machines Pvt. Ltd. (SC)

BOOKS REFFERED
1- BARE ACTS
2- CASE MATERIAL, FACULTY OF LAW
3- ASHOK JAIN DUKKI (IPR)

4
 STATEMENT OF JURISDICTION

The appellant has statutory right given by part 7 i.e. appeal under code of civil procedure by
virtue of section 96 CPC Order 41.

The present appeal may be entertained by Hon’ble Delhi HC under Section 96 of CPC 1908,
herein section 96 of CPC states that:

“96. 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.

(4) No appeal shall lie, except on a question of law, from a decree in any suit of the nature
cognizable by Courts of Small Causes, when the amount or value of the subject-matter of
the original suit does not exceed [ten thousand rupees.”

Since the present suit was heard and decided by district court hence appeal shall lie in HC by
corollary of Section 96(4) of CPC wide on the question of law

However, if District court decided the present suit in his appellant jurisdiction under Section
96 then, the present second appeal shall lie to HC on question involve substantial question of
law.

5
 STATEMENT OF FACTS
1) Hummingwayy and Tumblrr Pvt Ltd, based in Norway is the proprietor of the trademark
‘HumTum’ [written in a stylised manner with the device of daisies (flowers) in the
background], since 1966. It has set up a subsidiary in New Delhi for the purpose of carrying
on business under the trademark ‘HuMTuM’, on behalf of the parent company. The company
is going start its operations in India, and has applied for registration in India. The status of the
application in May 2020 is that it is sent to Vienna Codification. The company registered for
the mark in the year 1970 in the United Kingdom.
2) Hummingwayy and Tumblrr Pvt. Ltd. is a huge company engaged in designing, marketing
and selling a wide variety of premium segment fashionable clothing and ancillary products
for women, men, teenagers and children. It has more than 4500 outlets in more than 190
countries of the world and its outreach is growing by the day. With the boost in ecommerce,
products of the company are available in India through Amazon/ Myntra and other similar
online shopping service providers.
3) Hiralal Megabrands Pvt. Ltd, an Indian company (based in Gujarat but having presence
throughout India and the Middle-East) is engaged in the business of marketing, supplying,
selling garments and ancillary products under the trademark ‘Hum Tum’, written in Hindi,
Gujarati and English since the year 2011. It is registered in India since 2014. Hiralal
Megabrands Pvt. Ltd believes that the meaning of the Hindi expression ‘Hum Tum’ has a lot
to do with the ‘connect’ that the mark has managed to forge with the end users. Its biggest
outlet is in Saket, Delhi.
4) Hummingwayy and Tumblrr Pvt Ltd maintains that though its operations in India are yet to
kickstart, news pertaining to its famous mark ‘HuMTuM’ is readily available and frequently
accessed through search engines such as www.google.com, www.yahoo.com and
www.msn.com; that fashion apparel and accessories bearing the trade mark HuMTuM are
extensively supplied in India through e-commerce global stores with the result that the said
mark has achieved extensive recognition amongst relevant section of the public.
5) Hummingwayy and Tumblrr Pvt. Ltd. came across the goods of Hiralal Megabrands recently
and found out that the latter was using a confusingly similar TM ‘Hum Tum’ for products /
goods similar to his. Hiralal Megabrands was also offering goods bearing the mark ‘Hum
Tum’ through online shopping portals such as www.jabong.com, www.amazon.com,
www.myntra.com etc. Hummingwayy and Tumblrr Pvt Ltd filed a suit for passing off,
against Hiralal Megabrands after a cease and desist notice was not complied with by the
latter.
6) The aggrieved party, Hummingwayy and Tumblrr Pvt Ltd has filed an appeal against the
order of the District court maintaining that the judge failed to properly appreciate a few
grounds like the defendants being in the same line of business as the plaintiffs and ignored a
number of (other) parameters while deciding the case.

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 STATEMENT OF ISSUES

1) Does the Trademark of appellant is subject to Trans border reputation?

2) Does the respondant has dishonest and malafide intention?

3) Whether district court took into consideration all the facts and circumstances?

7
 SUMMARY OF ARGUMENTS

1) Does the Trademark of appellant is subject to Trans border reputation?

Because of globalization of trade and commerce and the enormous development in
Communication facilities through radio, television, and internet and e-commerce
advertisement of the products in foreign countries have become available for viewing
by large no. of persons in India. By the above means it is now possible to create
reputation for foreign product in India and create potential customers for the goods in
India. This form of creation of reputation is often called ‘trans-border reputation’.
Trans-border reputation has to be protected, in order to promote commercial morality
And discourage unethical trade practices.

2) Does the respondant has dishonest and malafide intention?

Petitioner Company being a very well known company, which is also evident by the
fact that it is having more than 4500 outlets in about 190 countries and carrying on its
business since 1966. Defendant Company took unfair advantage of the fact that the
petitioner company has not registered its trademark in India and the defendant
company started earning profit registering a similar trademark to the petitioner
company. Furthermore it is pertinent to mention that Defendant Company is engaged
in the business of marketing, supplying and selling and not in the business of
production. To boost their sale of goods the defendant company registered a similar
trademark to enjoy the goodwill of a worldwide brand.

3) Whether the district court took into consideration all the facts and
circumstances?

The judgment given by the district court does not seem to be fair as it failed to take
into consideration a few facts which are so important that overlooking them would
directly result into miscarriage of justice. Few of those facts are that the defendant
company is presenting a very vague explanation that the reason of taking HUMTUM
as trademark is its Hindi meaning connect. Another fact which was overlooked by the
district court that the defendant company is carrying similar trademark business in the
same class of business which is strictly not allowed under trademark act, as it cause
confusion among the consumers in the market.

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 ARGUMENTS ADVANCED

Issue No.1) Does the Trademark of appellant is subject to Trans border reputation?

Transborder Reputation:-
According to Madrid protocol 1989 amended in 2006 and 2007 there is a
system Administered by the international bureau of WIPO, which maintains the international
register and publishes the WIPO gazette of international marks. The objectives of Madrid
protocol are twofold-
Firstly, it facilities the obtaining of protection for marks the registration in international
register produces in the contracting parties designed by the applicant, the effects of the
international registration. From the date of international registration, the protection of mark in
each of the countries designated contracting parties is the same as if the mark had been the
subject of an application for registration filed directly with the office of that contracting
party.
Secondly, since an international registration is equivalent to a bundle of national
registration, the subsequent management of that protection is made easier. There is only one
registration to renew, and changes such as a change in ownership or in the name or address of
the holder, or a limitation of the list of goods and services, can be recorded inn the
international register through a single simple procedural step.
Because of globalization of trade and commerce and the enormous development in
Communication facilities through radio, television, and internet and e-commerce
advertisement of the products in foreign countries have become available for viewing by
large no. of persons in India. By the above means it is now possible to create reputation for
foreign product in India and create potential customers for the goods in India. This form of
creation of reputation is often called ‘trans-border reputation’. Trans-border reputation has to
be protected, in order to promote commercial morality and discourage unethical trade
practices.

There is no doubt that if the foreign plaintiff could establish the three elements of
passing off- Reputation or goodwill, confusion and damage- a case of passing of can certainly

9
be established. In N.R. Dongre v Whirlpool corp. Ltd.1, the SC held that even advertisement
of trademark without existence of goods in the market is also to be considered as use of
trademark. It is also not necessary that the association of the plaintiff’s mark with his goods
should be known all over the country or to every person in the area where it is known best.

In Sears Poeuck and Company v Happy House (TV) Mfg. Co. Pvt. Ltd. 2, the Delhi HC held
undoubtedly, reputation in the modern world is not confined within political frontiers. It is
not necessary for the court to go in the question whether commercial presence in India is
necessary to protect a right in a passing off action.
The hon’ble SC in Milment Oftho Industries and Ors. V. Allerga Inc3. summarized the
position of Indian courts with respect to the Transborder Reputation as follows:
1. A mark must be well known in other countries, internationally, to claim transborder
reputation in India.
2. The reputation of mark must reach a substantial segment of consumers in India through
extensive use in India or through extensive advertising in international magazines, Journals or
other media, which have wide circulation among the substantial segment of relevant
consumers in India.
3. Mere publishing advertisement in foreign Journals/media is not enough. The claimant of
transborder reputation must show that these journals have reached Indian consumers, thus
giving rise to reputation among the substantial segment of consumers in India.
4. Mere use in India at places like duty free shops and other limited access locations is not
enough to claim transborder reputation.
5. Burden of proving that a mark is well known and that the use of the mark by another
person causes blurring, tarnishing or with unfair advantage is on the person who request the
cancellation of mark best on said grounds.
6. Cogent and substantial evidence must be submitted to prove that a mark has transborder
reputation. While proving the well knownness of a mark, the applicant must provide evidence
to show the advertisement in magazines and evidence to prove that the mark otherwise has
circulation in India among relevant consumers in the field, to deliver knowledge of the mark
to them.

1
N.R. Dongre v Whirlpool corp. Ltd. (1996) 5 SCC 714
2
Sears Poeuck and Company v Happy House (TV) Mfg. Co. Pvt. Ltd. [1992 (12) PTC 59 (DEL)]
3
Milment Oftho Industries and Ors. V. Allerga Inc [AIR 2004 SC 3355]

10
7. Date for determining whether a mark is well known in India, through transborder
reputation, is the date of filing of trademark application by the Indian company, which is,
prime facie proof of genuine adoption.

1) Issue no.2 Does the respondant has dishonest and malafide intention?

1) Well-known Trade Mark

“Article 6 of Paris Convention

Marks: Conditions of Registration; Independence of Protection of Same Mark in
Different Countries
(1) The conditions for the filing and registration of trademarks shall be determined in
each country of the Union by its domestic legislation.
(2) However, an application for the registration of a mark filed by a national of a
country of the Union in any country of the Union may not be refused, nor may a
registration be invalidated, on the ground that filing, registration, or renewal, has not been
effected in the country of origin.
(3) A mark duly registered in a country of the Union shall be regarded as independent of
marks registered in the other countries of the Union, including the country of origin.”

“Article 16 of (TRIPS)

1. The owner of a registered trademark shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in the course of trade identical or
similar signs for goods or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in a likelihood of confusion.
In case of the use of an identical sign for identical goods or services, a likelihood of
confusion shall be presumed. The rights described above shall not prejudice any existing
prior rights, nor shall they affect the possibility of Members making rights available on the
basis of use.”

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The Trade mark act, 1999 has divided trademarks into two legally unequal types of marks:

A) Trademarks as defined in Sec. 2(1)(zb)

B) Well-known trademarks as defined in Sec.2(1)(zg)

A well known trade mark in relation to any goods/ services which has become so to the
substantial segment which uses such goods/ services that the use of such mark in relation to
other goods/services would be likely to be taken as indicating a connection in the course of
trade of rendering of services between those goods/services and person using the mark in
relation to the first mentioned goods/services.

The definition clearly indicates that it is the ordinary trade mark which may acquire the
character of well-known trade mark. When the consuming public on seeing a trade mark on
some goods or services, relates it to a trade mark aready used oon some other goods or
services, such a trade mark is considered to be a well-known trade mark. The proprietors of
registered well-known marks have been extended right to oppose registration of a similar
mark not only on same/similar goods or services but also on different/dissimilar goods or
services

“Section-11 (2) A trade mark which –

(a) is identical with or similar to an earlier trade mark, and

(b) Is to be registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor.

Shall not be registered if or to the extent the earlier trade mark is a well-known trade mark
in India and use of the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trade mark.”

To be a well-known mark it is necessary that there should be existing knowledge of

the mark in a foreign country as also in India however a mark which is known in India may

12
be called a well known mark if it is non or recognized the relevant section of the public in
India.

In the case of Carrefour v Subburaman4 court observed that:

Insofar as the definition of the term “well-known trade mark” under Sec. 2(1) (ZG) is
concerned, it is seen that very concept of well-known trade mark”, as distinguished from a
mere “trade mark” has been incorporated in the new act, for the purpose of protecting not
only a mark which has come to be identified with a particular type of goods or services, but
also for protecting the same mark from being used in relation to other goods and services, if a
substantial segment of the public which uses the first mentioned goods or services is likely to
be mislead to believe that there is a connection in the course of trade between the second
mentioned goods and the proprietor of the trade mark in relation to the first mentioned goods
and services. The TMM Act 1958 did not define and deal with well-known trade mark.”

2) Deceptive similarity

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.

In the case of Parle Products (P) Ltd. V. J.P. and Co 5. 1972 1 SCC 618 the court cleared
that in order to come to the conclusion whether one mark is deceptively similar to another,
the broad and essential feature of the 2 are to be considered. They should not be placed side
by side to find out if there are any differences in the design and if so, whether they are of
such character as to prevent one design from being mistaken for the other. It would be
enough if the impugned mark bears such an overall similarity to the registered mark as would
be likely to mislead a person usually dealing with one to accept the other if offered to him.
The court mentioned that an ordinary purchaser is not gifted with the powers of observation
of a Sherlock Holmes.

4
Carrefour v Subburaman 2007 (35) PTC 225
5
Parle Products (P) Ltd. V. J.P. and Co. 1972 1 SCC 618

13
In Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd.6 The SC stated that in an action
of passing off on the basis of unregistered trademark generally for deciding the question of
deceptive similarity the following factors are to be considered.

a. The nature of the marks i.e. whether the marks are word marks or the label works or
the composite marks i.e. both words and label marks.
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 thee goods bearing the marks they
require, on their intelligence and degree of care they are likely to exercise in
purchasing and/ using the goods.
f. The mode of purchasing the goods or placing orders for the goods.
g. Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.

In Baker Hughes v. Heroo Kushalani7 74 court held there can be informed class of
purchasers who have a degree of knowledge and a sense of discrimination more substantial
than that of an ordinary purchaser, but the mere fact that the customers are sophisticated,
knowledgeable and discriminating does not rule out the element of confusion if the
trademarks/ trade names/ corporate names of 2 companies are identical of if the similarity
between them is profound. In several cases it has been held that initial confusion is likely to
arise even amongst sophisticated and knowledgeable purchasers under a mistaken belief that
the two companies using the same corporate name, trading name or style are interrelated.

It is this class of buyers who are likely to think that there is some sort of association
between the products of 2 different companies when they come across common or similar
trade names or corporate names or trading styles used by them. The sophistication of buyer is
no guarantee against any likely confusion.

6
Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
7
Baker Hughes v. Heroo Kushalani 74 (1998) DLT 715

14
 In the present facts of the problem Petitioner Company having a very well known
trademark, which is also evident by the fact that it is having more than 4500 outlets in about
190 countries and carrying on its business since 1966. Defendant Company took unfair
advantage of the fact that the petitioner company has not registered its trademark in India and
the defendant company started earning profit registering a similar trademark to the petitioner
company later in year 2011. Furthermore it is pertinent to mention that Defendant Company
is engaged in the business of marketing, supplying and selling and not in the business of
production. To boost their sale of goods the defendant company registered a similar
trademark to enjoy the goodwill of a worldwide brand.

Issue No.3 Whether the district court took into consideration all the facts and
circumstances?

1) Judgment of District court at Delhi

District court at Delhi held that there was no passing out as:

i) That the trademark were quiet different in appearance;

ii) That both the brands operated in two very different territories;

iii) That the defendant honestly and bonafidely conceived and adopted the
trademark ‘Hum Tum’ being a popular expression of Hindi language;

iv) That the plaintiffs were not entitled to any relief on the ground of
acquiescence and waiver.

i) In the points i) and ii) of the judgement of district court it is stated that the trademarks
were different in appearance but as given in the facts Trademarks of both the brands
are read as Hum Tum which is same, other than that both the trademarks are not just
similar but also carrying on their business in the same classes. As per the Trade Marks
Act even if the class of business of two companies are different, the registration of
similar trademarks is strictly not allowed. Moving further, as per Paris convention if
there is a well known trademark in the world and has not registered its trademark in
any of the member country of the convention, even then the member country has to

15
 give protection to that well- known trademark in its country. And as given in the facts
of the present case as well as established earlier in the arguments, the plaintiff
company must be considered as a well-known trademark and protection must be given
to the petitioner company in India also.

ii) Moving further to the 3rd point of the judgment, Hiralal Megabrands Pvt. Ltd. The
defendant is an Indian based company indulged in the business of marketing,
supplying, selling garments and ancillary products, when the trademark of Defendant
Company was challenged by the plaintiff company, the explanation given by the
defendant were very vague. It shows the dishonest Intention of respondent.
Respondent company had translated the trademark of appellant to Hindi language
according to their convenience and they used the goodwill of the appellant company
and earned profit out of it for about 9 years. Also it is evident by the facts of the case
that the defendant company is in the business of marketing and selling, however the
plaintiff company is in the designing, marketing and selling. Is is very obvious by the
facts that Hum Tum trademark taken by the defendant company is not an original idea
of the defendant company and taken by a malafide intention of selling their products
and boost their sale.

In the case of Laxmikant V. Patel v. Chetanbhai Shah8, the SC held that injunction has to
be granted where there is probability of confusion even though the defendant adopted the
name innocently. The law does not permit anyone to carry on his business in such a way as
would persuade the customers in believing that the goods or services belonging to someone
else are his or are associated therewith. It does not matter whether the later person does so
fraudulently or otherwise. Secondly, when a person adopt or intend to adopt a name in
connection with his business or services which already belong to someone else, it results in
confusion and has propensity of diverting the customer of someone else to himself and
thereby resulting in injury.

In the case of Daimler Benz Aktiegesellschaft v. Hybo Hindustan9, the SC held that the
Trademark is not intended to protect a person who deliberately sets out to take the bebefit of
somebody else’s reputation with reference with goods, specially so when the reputation
extends worldwide.

8
Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65
9
Daimler Benz Aktiegesellschaft v. Hybo Hindustan AIR 1994 Del 239

16
iii) Moving further in the 4th point of the judgment of district court the defence of
acquiescence and waiver is of no avail and the supporting arguments to this claim as
follows:

Section 33 in The Trade Marks Act, 1999

“33. Effect of acquiescence.—

(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous
period of five years in the use of a registered trade mark, being aware of that use,
he shall no longer be entitled on the basis of that earlier trade mark—
(a) To apply for a declaration that the registration of the later trade mark is
invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used, unless the registration of the later trade
mark was not applied in good faith.

Here in Section 33 of the TMA, 1999 there are preconditions prescribed i.e.:

a) That there must be acquiescence for a continuous period of fice ears in the use of a
registered trademark;

b) And, that the proprietor of the earlier mark acquiesced to the use of the registered ark
in spite of being aware of that use.

Here point a) made it clear that such acquiescence by the proprietor of an earlier mark should
be in relation to a registered trademark. The respondents have not so far obtained registration
of the trademark. Therefore, the applicant, who claims to be the proprietor of the earlier
mark, cannot be said to have acquiesced in the use of a registered trademark by the
respondents.

Further in the case of Ramdev Food products Pvt. Ltd. V. Arvindbhai Rambhai Patel10 AIR
2006 SC 3304 SC was considered in great detail by the SC and crystallized the law on the
point as follows:-

In M/s. Power Control Appliances v. Sumeet machines Pvt. Ltd11. The court stated
“Acquiescence is sitting by, when another is invading the rights and spending money on in.
10
Ramdev Food products Pvt. Ltd. V. Arvindbhai Rambhai Patel AIR 2006 SC 3304 SC

17
It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark,
trade name etc. It imply positive acts; not merely silence or inaction such as is involved in
laches…”

11
M/s. Power Control Appliances v. Sumeet machines Pvt. Ltd. (1994) 2 SCC 448: 1995 (15) PTC 165 (SC)

18
 PRAYER

Wherefore, in light of the issues raised, arguments advanced and authorities cited, it is
humbly prayed before this Hon’ble High court :

1) That set aside impugned judgement of district court and admit the present
appeal;
2) That Injunction should be granted to the appellant;
3) That the respondant company should be directed to give compensation/
damages amount for a loss incurred by the appellant since 2011;

4) That the registration of the respondant company should he revoked.

AND

Pass any other order it may deem fit, in the interest of Justice, Equity and Good Conscience.

ALL OF WHICH IS RESPECTFULLY SUBMITTED

Sd/-

COUNSEL FOR THE APPELLANT

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