IN THE HON’BLE HIGH COURT OF DELHI

CIVIL APPEAL NO. _______OF 2020

IN THE MATTER OF

HUMMINGWAYY AND TUMBLLR PVT. LTD ………APPELLANT

VERSUS

HIRALAL MEGABRANDS PVT. LTD ……….RESPONDENT

(UNDER Section 96, The Code of Civil Procedure , 1908)

MEMORIAL ON BEHALF OF THE APPELLANT

SUBMITTED BY :

NAME : ABHINAV YADAV

CLASS ROLL NO. – 182268
EXAM. ROLL NO. – 180025
SECTION - Vth C

CAMPUS LAW CENTRE

UNIVERSITY OF DELHI
 TABLE OF CONTENTS

TABLE OF AUTHORITIES…………………………………. 3
STATEMENT OF JURISDICTION………………………… 4
STATEMENT OF FACTS…................................................... 5
STATEMENT OF ISSUES…………………………………… 6
SUMMARY OF ARGUMENTS………………………………. 7
ARGUMENTS ADVANCED………………………………….. 8-18
PRAYER………………………………………………………… 19

2
TABLE OF AUTHORITIES

CASES

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.(2001)5

Maxheal Pharmaceutical v. Shalini Laboratories Pvt Ltd Appeal No.88/2005

Commissioners of Indland Revenue v. Muller & Co’s Margarine Ltd (1901) A.C. 217 at 223-224
Medgen Inc v. Passion for life products Ltd, (2001) FSR 98 p.104
Reckitt & Colman Products Ltd v. Borden Inc, 1 W.L.R. 491,p 499 E.
Aktiebolaget Volvo v. Volvo steels ld, 1998 PTC 241(Del)
Whirlpool corp v. N.R. Dongre, 1995 PTC 21(Para 17)
Laxmikant V. patel V. Chetanbhai shah, AIR 2002 SC 275

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. AIR 1970 SC 146

Durga Dutt Sharma v. Navratna Pharmaceutical Laboratory AIR 1965 SC 1980

Parle Products Pvt ltd v. JP&Co AIR 1972 SC 1359
Aravind Laboratories v. Arihant Cosmetics 2005(30) PTC 175 (MAD)
Amritdhara Pharmacy v. Satyadeo Gupta AIR 1963 SC 449
K.R. Chinna Krishna Chettiar v. Shri Ambal and Co, Madras AIR 1970 SC 146
Kiran Gupta v, Pizza Hut International Lle 2004 (28) PTC 279
Amar Singh Chawla v. Rajdhani Roller Flour Mills Pvt. Ltd AIR 1970 SC 2062
Simatul Chemical Industries Pvt Ltd v. Citabul Ltd, 19 GLR 315, p 327
Power Control Appliances v. Sumeet Machines Pvt. Ltd (1994) 2 SCC 448

STATUTES

The Trade Marks Act, 1999

The Code of Civil Procedure, 1908

Books and other Authorities

KC Kailasam and Ramu Vedaraman: Law of Trade Marks, 4th ed

Kerly’s law of Trade Marks ,16th ed

3
 STATEMENT OF JURISDICTION

The Appellant has approached this Honorable court under Sec.96 of The Civil Procedure Code,1908
read with Sec. 135 of the trademarks act,1999 and Sec. 38 0f the Special relief act,1963.

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.

(2) An appeal may lie from an original decree passed ex parte.

(3) No appeal shall lie from a decree passed by the Court with the consent of parties.

(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 (10 thousand
rupees)

Provided in the body of this code or by any other law par the time being in force , an appeal shall lie from every decree
Passed by any court exercise.

4
 STATEMENT OF FACTS

1.”HumTum” is a trademark of a norway based company Hummingwayy and Tumblrr Pvt. Ltd. Since 1966. The
company registered its earliest registration of trademark “HumTum” in 1970 in United Kingdom. And, operates in more
than 190 countries worldwide dealing in fashionable clothings and apparels for women, men and children.

2. This company also planned to start its business in india and established its subsidiary in New Delhi and applied for
the registration of the trademark “HumTum”.

3. Hiralal Megabrands, a fashionable clothing trader based in india ,registered in 2014, is also running a trademark for
its clothing and fashion apparels with the name of “HumTum”, which is similar to the name of petitioner’s company
trademark.

4. When the petitioner came across with the product of Hiralal Megabrands recently and found out that the latter was
using a confusingly similar Trademark “HumTum” for products/ goods similar to his.

5. Hiralal Megabrands was also dealing on the online shopping portal with the same Trade Mark and this created a big
confusion for the consumers of petitioner’s company. Due to which, customer could not get the original product of the
prosecution company.

6. A petition was filed by the company against Hiralal Megabrands in district court of Delhi for passing off. The district
court held that there was no passing-off made out as the TMs were quite different in appearance and that both the brands
operated in two very different territories.

7. The prosecution appeals to this court against the order of district court of Delhi, 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
number of (other) parameters while deciding the case.

The district court decreed against the appellants, citing the reasons as follows:-

• The two trademarks are quite difference in appearance.

• The two brands operated in different territories.

• The respondent honestly and bonafidely conceived and adopted the trademark ‘Hum
Tum’.
• ‘Hum Tum’ was popular hindi expression

• Defendant has been continuously, extensively and uninterruptedly using the same since
year 2011.
Thus, the appellants have appealed in this Hon’ble court against the decision of district court
maintaining the all the grounds were not properly appreciated.

5
 STATEMENT OF ISSUES

1.
Whether the respondent by adopting the impugned mark are passing off his goods as that of the appellant ?

2.
Whether the adoption by the respondent of his mark is bonafide and is so what effect?

3.
Whether the defense of “adoption of Popular expression” is available to the respondent?

4.
Whether there is acquiescence and waiver on the part of appellant?

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 SUMMARY OF ARGUMENTS

1. Whether the respondent by adopting the impugned mark are passing off his goods as that
of the appellant?

The tort of passing off has been committed by the respondent as all the three essential
requirements are sufficiently established popularly known as classical trinity, which are Good
faith, Misrepresentation causing deception and Damages. Thus, in all probability public would
have considered that respondent’s goods are that of Appellant.

2. Whether the adoption by the respondent of his mark is bonafide and is so what effect?

This defense is not available to the respondent because honest and bona-fide adoption and use is
only allowed in case of registered not unregistered trademarks.

3. Whether the defense of “adoption of Popular expression” is available to the respondent?

This defense is not available to the respondent because by getting a generic name registered they
are estopped from raising this plea.

4. Whether there is acquiescence and waiver on the part of appellant?

There is no acquiescence of use of trademark by the appellant as the twin preconditions of (1)
five year use (2) and allowing the same for that period in spite of being aware of that use, are
not satisfied.

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 ARGUMENTS ADVANCED

• ISSUE 1: Whether the respondent by adopting the impugned mark are

passing off his goods as that of the appellant ?

The counsel humbly submits that the tort of passing off has been committed by the respondent by
adoption of the impugned mark. This is the only legal and logical conclusion which follows after the
discussion of the following legal principles and the application of same to the facts available on record
before us.

Passing off is nowhere defined in The Trade Marks Act, 1999 but S.27 of the Act recognizes the right of
action of passing off for unregistered marks where no action for infringement is allowed.

General principles of Passing off1

In Kerly’s Law of Trade Marks and Trade Names (12th edition), under the heading “the action for passing
off”, it is stated thus: . These are 3 in number:

First, he must establish a goodwill or reputation attached to the goods or services which he supplies, in
the mind of the 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 labeling 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
specifically of thse plaintiff’s goods or services.

Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not
intentional) leading or likely to lead the public to believe that the goods or services offered by him are the
goods or services of the plaintiff.

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 service is the same as the source of those offered by the plaintiff.”

In addition to the above three “prior use” needs to be established first only then the court would be
permitted to go into the issue of passing off and consequential reliefs.
1 KCKailasam and Ramu Vedaraman: Law of Trade Marks including International Registration under Madrid Protocol &
Geographical Indications, pg. 448, 4th edition

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In Laxmikant V. Patel v Chetanbhai Shah,2 the Supreme Court has laid down the principles in the
following terms:

A person may sell his goods or deliver his services such as in case of a profession under a
trading name or style. With the lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a property which is protected by
courts. A competitor initiating sale of goods or services in the same name or by imitating
that name results in injury to the business of one who has the property in that name. The
law does not permit anyone to carry on his business in such a way as would persuade the
customers or clients in believing that the goods or services belonging to someone else are
his or are associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise.

The Counsel has established the requirements of “CLASSICAL TRINITY” and “PRIOR USER” in the
sequence as mentioned to prove that respondent is violating the principle of law “no man is entitled to
represent his goods as being the goods of another man”.

A. Prior user

The counsel humbly submits that appellant is the prior user of the trade mark ‘HuMTuM’.

In the case of Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd3 the court observed that:

“If an action for passing off is by a prior user, the Court would be permitted to go into the
issues including the issue of validity of registration of the defendant’s trade mark and even
grant an order of injunction in favor of the person whose mark is not registered and against
a person whose mark is registered”.

The Counsel wants to bring the attention of The Honorable Court to the expression “If an action for
passing off is by a prior user” which implies in the context that no action of passing off will lie against
the respondent if appellant is not the prior user of the mark. Here, the condition of prior user is satisfied as
it is being used since 1966 and secured its earliest registration for the mark in the year 1970 in the United
Kingdom.

2 AIR 2002 SC 275

3 Appeal No.88/2005 in notice motion No 2638/2004 in Suit No.2663/2004 decided on 16 February 2005 by the BombayHC. 9
 B. Good will in the mind of people

The counsel submits that the appellants business has requisite good will and distinctiveness. What is
goodwill?
We can do no better than cite the passage of LORD MACNAGHTEN in Commissioners of Inland
Revenue v Muller & Co.’s Margarine Ltd4:

“It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of
the good name, reputation, and connection of a business. It is the attractive force which
brings in custom. It is the one thing which distinguishes an old established business from a
new business at its first start.”

Goodwill need not be established in the mind of every member of the relevant public, but in a significant
section of public.5

Question of ownership of goodwill is one of fact and is to be established by evidence.6

On how to establish goodwill Lord Oliver expressed in Reckitt & Colman Products Ltd v Borden Inc. 7:

… the plaintiff must establish a goodwill or reputation attached to the goods or services
which he supplies in the mind of the 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 labeling 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 specifically of the
plaintiff’s goods or services.

The Counsel after application of the above mentioned discussion to the facts conclude that Good will is
something which is very easy to describe and very hard to define. It doesn’t exist independently of
business and to describe the same we take help of business name, trade mark and all other things which
works as attractive force for the customers and help them to differentiate between the old and new
business. Appellant has been engaged in the clothing industry under the trade mark ‘HuMTuM’ since
1966 and has more than 4500 outlets in more than 190 countries. Such a large business wouldn’t have
flourished without a loyal and large customer base and the same attaching value to the trade mark and the
4 Commissioners of Inland Revenue v. Muller & Co.’s Margarine Ltd. (1901) A.C. 217 at 223-224.
6 KC Kailasam and Ramu Vedaraman: Law of Trade Marks including International Registration under Madrid Protocol &
Geographical Indications, pg. 465, 4th edition
7 Reckitt & Colman Products Ltd v. Borden Inc, 1 W.L.R. 491, p 499 E.

10
quality of respective goods traded under it. With the boost in e-commerce, products of the company are
available through Amazon/Myntra and other similar online shopping service providers and are
extensively bought and sold. This is substantiated from the news regarding the same trademark which is
readily available and frequently accessed through search engines such as www.google.com,
www.yahoo.com, www.msn.com etc. which says that products bearing trademark ‘HuMTuM’ are
extensively supplied in India through e commerce platforms. Above mentioned facts clearly states and
satisfies the requirement that the said mark has become distinctive of appellant’s goods and has achieved
extensive recognition among relevant section of the public. Therefore, Good will and reputation of
appellant’s business is proved.

Trans-Border reputation

The counsel humbly submits that the Hon’ble Courts in India and worldwide has recognized the concept
of Trans border reputation which means that complainant need not to carry on business in India and as a
matter of law, it is not necessary to prove the actual sale, if by other material presence of the plaintiffs in
India and goodwill is demonstrated.8The Hon’ble Trial Court below has failed to take account of this well
recognized principle thus coming to the erroneous conclusion that no tort of passing off has been
committed on the ground that appellants brand has no territorial presence in India.

In Whirlpool Corp v N.R. Dongre,9 after referring to several cases, the judge observed as under:

“These cases recognized that the reputation of a trader, trading or carrying on the business
in another country, can travel to a country where he had carried no business. The traders’
trans-border reputation can be on the basis of extensive advertisements and publicity. Such
a trader could obtain injunction in a court where he was not trading to protect his
reputation. The knowledge and the awareness of the goods of a foreign trader and its
trademark can be available at a place where goods are not being marketed, and
consequently not being used.”

The counsel after application of the above mentioned discussion to the facts conclude that appellant need
not to have any business in Indian jurisdiction provided he proves trans-border reputation (significant
section of public should know) here. A product and its trade name transcend the physical boundaries of a
geographical region and acquire a trans-border or overseas or extra-territorial reputation not only through

8
Aktiebolaget Volvo v. Volvo steels Ld, 1998 PTC 241 (Del)
9 Whirlpool Corp v. N.R. Dongre, 1995 PTC 21 (para 17)
11
import of goods but also by its advertisement, Indian tourists visiting foreign countries etc. Here the
essence is “knowledge”(as only its presence may cause confusion or deception) of the public regarding a
business (identified by its trade name, mark, get up, quality and class of goods) and which may come by
any source like imports, advertisement etc. Even the presence of goods in not mandatory. News is one
such medium which brings the awareness among the public. Here in India, appellant’s mark is widely
publicized through news portals like www.google.com, www.yahoo.com, www.msn.com etc. which is
readily available and frequently accessed by the Indian Netizens. Moreover, extensive supply of the
brand’s products implies extensive demand in India together with the abovementioned reasons clearly
establishes the awareness or in other words trans- border reputation of the appellant’s trademark.

C. Misrepresentation by the respondent to cause deception

The counsel humbly submits that respondent by adopting the impugned mark has intentionally made false
representation to the public in order to create confusion in the minds of public that his goods are the one
coming from appellants.

In Spalding v. Gamage10, Lord Parker observed:

“The basis of a passing-off action being a false representation by the defendant, it must be
proved in each case as a fact that the false representation was made. It may, of course, have
been made in express words, but cases of express misrepresentation of this sort are rare.
The more common case is where the representation is implied in the use or imitation of a
mark, trade name or get-up with which the goods of another are associated in the minds of
the public, or of a particular class of the public. In such cases the point to be decided is
whether, having regard to all the circumstances of the case, the use by the defendant in
connection with the goods of the mark, name or get-up in question impliedly represents
such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class
or quality, or, as it is sometimes put, whether the defendant’s use of such mark, name or get-
up is calculated to deceive. It would, however, be impossible to enumerate or classify all the
possible ways in which a man may make the false representation relied on.”

KERLY in Law of Trade Marks and Trade Names (12th Edition) deals with proof of likelihood of
deception as under:

The court must in the common case be satisfied that the defendant’s conduct is calculated to pass off
goods as those of the plaintiff, or at least, to produce such confusion in the minds of probable customers
10 Per Lord Parker in Spalding v. Gamage, (1915) 32 RPC 273 p 284: (1915) 31 TKR 328.

12
or purchasers or other persons with whom the plaintiff has business relations as would be likely to lead to
the other goods being bought and sold for his. This is the foundation of the action.

Deceptive Similarity

In Cadila Healthcare Ltd v. Cadila Pharmaceutical Ltd, 11the Supreme Court held that in an action for
passing off on the basis of an unregistered trade mark 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 label marks or composite marks,
i.e., both words and label works;

(b) The degree of resemble-ness 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.

Similarity of marks

In K.R. Chinna Krishna Chettiar v. Sri Ambal & Co.12, the Supreme Court observed that “The
resemblance between the two marks must be considered with reference to the ear as well as the eye.

In Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratory13, the court observed that:

11 (2001) 5 SCC 73
12 AIR 1970 SC 146
13 AIR 1965

13
“In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark
is likely to deceive, but where the similarity between the plaintiffs and defendant’s mark is so close either
visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no
further evidence is required to establish that the plaintiff’s rights are violated”. This principle was also
recognized by The Supreme Court in Cadila Healthcare Ltd14 case.

In, Parle Products Pvt Ltd v JP & Co15 the apex court laid emphasis on the test of overall similarity. The
court observed as follows:

“It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to
another, the broad and essential features of the two 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.”

It is clear that a trade mark may consist of a brand name, See Reckitt & Colman Products Ltd v Borden
Inc,16.

Instances of marks being held similar by the courts:

“EYETAX” and “EYETOP” deceptively similar - Aravind Laboratories v Arihant Cosmetics17

“Lakshmandhara” and “Amritdhara” deceptively similar – Amritdhara Pharmacy v Satyadeo Gupta18

“ANDAL” to be deceptively similar to “AMBAL” – K.R. Chinna Krishna Chettiar v Shri Ambal and Co,
Madras19

When the translated meaning of a word conveys the same idea, as in the following cases, though the
words are apparently different, they are held to be deceptively similar:

14 (2001) 5 SCC 73
15 AIR 1972 SC 1359
16 Reckitt & Colman Products Ltd v. Borden Inc, 1 W.L.R. 491, p 499 E.

17 2005 (30) PTC 175 (Mad).

18 AIR 1963 SC 449

19 AIR 1970 SC 146

14
“Pizza Hut” and “Pizza ghar” held to be similar – Kiran Gupta v. Pizza Hut International Lle21

Evidence of false representation, but not deception necessary

In Horlicks Ltd v. Bimal Khamrai22 while granting injunction against the defendants using the trade mark
“Horlioks” which was held to be deceptively similar to the plaintiffs mark “Horlicks”, the Delhi High
Court held

“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 belonging to someone else are his or are
associated therewith. It is wholly irrelevant whether the latter person does it fraudulently or
otherwise. According to Kerly’s Law of Trade Mark and Trade Names, where there is
probability of confusion in business, an injunction will be granted even though the
defendants adopted the name innocently.”

The counsel after application of the above mentioned discussion to the facts conclude that the respondent
has intentionally made false representation to the public to pass of his goods as those of appellant because

• The appellant’s mark is in use from year 1966 with 4500 outlets in more than 190 countries.
News and products both are available on online platforms in India. It is not possible for someone
dealing in with the same kind of products not to know about the good will and reputation of the
same and consequential benefits in clever adoption of identical or similar mark.
• Respondent has used the mark for similar kind of products.

• Respondent could have used their name like Hiralal Megabrands but why the trade mark ‘Hum
Tum’. Many other popular expression could have been used to show that personal connect like
‘Aap Hum’ etc. It is no matter of co incidence that respondent adopted well established trade
mark in the guise of popular expression and that too in the absence of any valid explanation.

Adoption of the said mark is creating confusion in the minds of public because of the deceptive similarity
of the two marks, which can be said based upon following observations-

21 2004 (28) PTC 279

22 2003 (26) PTC 241 (DEL)

15
 • Nature of both the marks ‘HuMTuM’ and ‘Hum Tum’ is same i.e. both of them are word marks,
with a very slight difference that former has device of daisies in the background.
• Both the marks are phonetically and visually similar and potent enough to create confusion.
These two are more or less exactly similar, the Courts in India have been cautious enough to
upheld marks not exactly similar but have the potential to create confusion like “EYETEX” and
“EYETOP”, “ Lakshmandhara” and “Amritdhara”, as deceptively similar. In Durga Dutt
sharma23, the court observed that where the similarity between the plaintiffs and defendant’s mark
is so close either visually, phonetically or otherwise and the court reaches the conclusion that there
is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated”.
Therefore, here nothing else needs to be proved.
• Even when the translated meaning of a word conveys the same idea though the words are
apparently different, they are held to be deceptively similar like “Pizza Hut” and “Pizza Ghar”, .
Here the translated version of respondent’s mark in Hindi and Gujarati language would be
considered as deceptively similar.

D. Goodwil of the business and it’s damage

The counsel humbly submits that damages if not accrued will accrue in all reasonable possibility.

Passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the
plaintiff, that right of property being his right to the goodwill of the business. The law assumes, or
presumes, that if the goodwill of a man’s business has been interfered with by the passing off of goods,
damage results there from. He need not wait to show that damage has resulted; he can bring his action as
soon as he can prove the passing off; because it is one of the class of cases in which the law presumes that
the plaintiff has suffered damage.24

On the question of likelihood of damage, judgment of per LADDIE J. in Kimberley-Clark Ltd v Fort
Sterling Ltd25 is relevant. There per LADDIE J., in the course of explaining a dictum of Jacob J. in another
cases stated that there are numerous cases which show that a claimant does not have to prove that
individual sales will be diverted to the defendant in order to make out the third (damage) element of a
passing-off action.

23 AIR 1965 SC 1980

24 Draper v. Trist (1936) 56 RPC 429, p 442.
25 (1997) FSR 877

16
The counsel based on above discussion wants to conclude that as the false representation made by the
respondent would have in all reasonable possibility caused deception in the mind of public so customers
must have diverted or will divert in future, thus eventually resulting in financial losses. Mere likelihood of
damage is sufficient for this requirement.

• ISSUE 2: Whether the adoption by the respondent of his mark is bonafide

and is so what effect?

The counsel submits that the defense of Honest and bona fide use is not available to the respondent.

The defense of “Honest and fair use” is enshrined in S.30 of The Trade Marks Act, 1999 which acts as a
limitation upon S.29 of The Trade Marks Act, 1999 which deals with infringement.

30. Limits on effect of registered trade mark.—

(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any
person for the purposes of identifying goods or services as those of the proprietor provided the use—
………………..

(2) A registered trade mark is not infringed where—…………….

The Counsel wants to bring to the attention of the Honorable court the expression “registered trademarks”
which implies that both the sub sections (1) and (2) allows honest and fair use of trademarks which are
registered but not unregistered. This in effect means that if the respondent has adopted and conceived a
mark deceptively similar or identical to that of appellant in a honest and bona fide manner, it will not act
as any defense and he will still be liable for committing the tort of passing off. This is in consonance to
the principle as was observed by the Supreme Court in Hoffmann-La Roche and Co. Ltd v Geofferey
Manners and Co. Pvt Ltd,26 “You make a false representation to him and there by cause him to believe a
thing to be true, which is false. You may not do it knowingly or intentionally, but still you do it, and so
you deceive him”.

• Issue 3: Whether the defense of “adoption of Popular expression” is

available to the respondent?

The Counsel submits that the defense of adoption of generic or popular expression is not available to the
respondent because of being estopped after getting registered the same.

26 AIR 1970 SC 2062 17

In Creative Travel Pvt. Ltd. v. Creative Tours and Travels (I) Pvt. Ltd. & Anr the court observed “that a
defendant who has himself obtained a registration of generic or popular expression is estopped from
taking said plea.”

• ISSUE 4: Whether there is acquiescence and waiver on the part of

appellant?

The Counsel humbly submits that the appellant has not acquiesced in the use of subsequent trade mark by
the respondent thus waving off his right of passing off.

The proprietor of the earlier trade mark or other earlier right cannot contest the validity of registration of a
subsequent trade mark.

It has been held by the Supreme Court in Power Control Appliances v Sumeet Machines Pvt Ltd27 that
“acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of
conduct inconsistent with the claim for exclusive rights in the trade mark, trade name etc. It implies
positive acts, not merely silence or inaction such as is involved in latches.”

It is for the defendant to prove acquiescence by the plaintiff.28

The counsel after application of the above mentioned discussion to the facts conclude that appellant got
aware of the use of the trade mark by the respondent only at the time when cease and desist notice was
sent to them and when not complied with, suit was filed in the District Court at earliest. Appellant never
did anything inconsistent with their claim of exclusive right in trade mark. In any situation it can’t be said
that appellant was aware of use of the later mark and that he has actively acquiesced in the use of the
mark for a period of five years.

27 (1994) 2 SCC 448

28 KC Kailasam and Ramu Vedaraman: Law of Trade Marks , page 713, Lexis Nexis, 4th edition. 18
 PRAYER

Wherefore in light of the Issues Involved, Arguments raised, and Authorities cited, Hummingwayy and
Tumblrr Pvt Ltd, the Appellant, respectfully requests the Court to adjudge and declare that:

1. Order interim injunction till the disposal of the suit to restrain the respondent from using the mark
‘Hum tum’ or any other similar mark.
2. Hold the respondent liable for the tort of passing off.

3. Order perpetual injunction restraining the respondent from using the mark ‘Hum Tum’.

All of which is respectfully affirmed and submitted.

COUNSEL FOR THE APPELLANT

19