lOMoARcPSD|180 943 91

lOMoARcPSD|180 943 91

BEFORE

IN THE HIGH COURT OF DELHI AT NEW DELHI

CIVIL APPELATE JURISDICATION

REGULAR CIVIL APPEAL NO……. OF 2020

IN THE MATTER OF:

Hummingwayy and Tumblrr Pvt. Ltd

..................................................................................................................................Appellant

Versus

Hiralal Megabrands Pvt. Ltd............................................................ Respondent

MEMORIAL ON BEHALF OF THE RESPONDENT

COUNSEL FOR THE RESPONDENT

Name- Ankur Patel

Roll No- 188503

Exam Roll No- 181898

College- Law Centre-II

1|Page
 TABLE OF CONTENTS

LIST OF ABBREAVIATIONS………….. 2

INDEX OF AUTHORITIES……………… 3

STATEMENT OF JURISDICTION…….. 4

STATEMENT OF FACTS………………… 5-6

STATEMENT OF ISSUES………............. 7

SUMMARY OF ARGUMENTS…………… 8

ARGUMENTS ADVANCED…………….. 9-13

PRAYER…………………………………. 14

2|Page
LIST OF ABBREVIATIONS

& And

Art. Article

CPC Civil Procedure Code

TM Act Trade Mark

Act
Para Paragraph

Pg. Page

SC Supreme
Court
HC High Court

VC Vienna Convention

H&T Hummingwayy and Tumblrr Pvt. Ltd

Sec Section

3|Page
 INDEX OF AUTHORITIES

STATUES

Trade Mark Act, 1999

Code of Civil Procedure, 1908

JUDICIAL DECISIONS

1) Reckit And Coloman Ltd v. Borden INC 1990

2) Satyam Infoway Ltd v. Sifynet Solutions Pvt Ltd AIR 2004

3) Parle Product (P) Ltd v. JP & CO AIR 1972

4) Candila Health Care Ltd v. Candila Pharmaacticals Ltd (2001)

5 SSC 73

5) N.R. Dongre v. Whirlpool AIR 1996 SCC 714

6) Toyota Jidosha Kabushiki Kaisha v.M/S Prius Auto

Auto Industries Limited AIR 2018 SC 167

BOOK- WEBSITE

1. Ipleader

2. www.Monday.com

4|Page
 STATEMENT OF JURISDICTION

Jurisdiction relating to filling of passing off suit would be determined under section 20 of cpc ,
where such actions will have to be instituted in the place where the defendant resides or carries out
buainins, or at the place where the cause of action arose. The present appeal is being filed by the
appellant keeping in view the section 20 of cpc.

The respondent respectfully submits to the jurisdiction of this honorable

court.

THE SECTION INVOKE ARE REPRODUCED HERE UNDER…..

SEC 20 CPC

Section 20 of Code of Civil Procedure 1908 "Other suits to be instituted where defendants
reside or cause of action arises"

Subject to the limitations aforesaid, every suit shall be instituted in a

Court within the local limits of whose jurisdiction-

(a) the defendant, or each of the defendants where there are more than one, at the time of the
commencement of the suit, actually and voluntarily resides, or carries on business, or personally
works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of
the suit, actually and voluntarily resides, or carries on business, or personally works for gain,
provided that in such case either the leave of the Court is given, or the defendants who do not
reside, or carry-on business, or personally work for gain, as aforesaid, acquiesce in such
institution; or

(c) the cause of action, wholly or in part, arises.

5|Page
Explanation I.-Where a person has a permanent dwelling at one place and also a temporary
residence at another place, he shall be deemed to reside at both places in respect of any cause of
action arising at the place where he has such temporary residence.

Explanation II.-A corporation shall be deemed to carry on business at its sole or principal office in
{Subs. by Act 2 of 1951, s.3, for "the States".} [India] or, in respect of any cause of action arising
at any place where it has also a subordinate office, at such place.

6|Page
 STATEMENT OF FACTS

Hummingwayy and Tumblrr Pvt Ltd, based in Norway is the proprietor of the Trademark

„HumTum‟ [written in a stylized manner with device of daisies (flowers) in the background
since 1966.

It has a set up a subsidiary in New Delhi for the purpose of carrying on business under the
„Trademark „HuMTuM‟ on behalf of the present company.

The Company is yet to formally start its operation in India, but has applied for registration in
India.

The status of the application in may 2020in that it is lent to Vienna codification.
The company securest it‟s earlier registration for the work in the year 1970 in
the U.K.

Hummingway and Tumblrr Pvt. Ltd is a huge conglomerate primarily engaged in designing,
marketing and selling a wide variety of premium segment fashionable clothing and anciliary
products for women, men, teenager and children. It has more than 4500 outlets in more than 190
countries of the word.

With the boost in e-commerce, products of company are available in India through
Amazon/Myntra and other similar online shopping service providers.

Hiralal Megabrands Pvt Ltd, an Indian company is engaged in the business of marketing,
supplying, selling garments and ancillary products under the Trade mark „Hum Tum‟
written in Hindi, Gujrati and English since the year 2011.

It is registered in India since 2014. Its biggest outlets in Saket Delhi. Hummingwayy and Tumblrr
Pvt Ltd, that though its operation in India are yet to kick start, news

7|Page
pertaining to its famous mark „Hum Tum‟ is readily available and frequently accessed
through search engineer such as www.google.com, www.yahoo.com and www.msm.com.

That fashion apparel and accessories bearing the trade mark „Hum Tum‟ are extensively

supplied in India through e-commerce global stores with the resolve that said mark has achieved

extensive recognition amongst relevant section of the public.

Hummingwayy and Tumblrr Pvt. Ltd, came across through goods of Hiralal Megabrands
recently and found out that the latter was using a confusingly similar Trade mark „ Hum
Tum‟ for products/goods similar to his.

Hiralal megabrands are also offering goods bearing the mark „Hum Tum‟through
online shopping products such as www.jabong.com, www.amazon.com, www.myntra.com
etc.

Hummigwayy 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.

District Court

The district court at Delhi held that there was no passing off made out as the time was quite
different in appearance and that both brands operated in the very different territories, that the

defendant honestly and bonafidely conceived and adopted the trade mark „Hum Tum‟ being
a

popular expression of Hindi language, that the defendant has been continuously, extensively and
uninterruptedly using the same since the year 2011, that the plaintiff was not entitled to any relief
on the ground of acquiescence and waiver.

8|Page
 STATEMENT OF ISSUE

ISSUE 1- Whether Hiralal Megabrands Pvt. Ltd are guilty of passing off their product under
the Trade Mark “HUM TUM” as heir of Appellant?

ISSUE 2- Whether the Hummingwayy and Tumblrr Pvt. Ltd. Has achieved

sufficient reputation in INDIA in relevant time i.e. Before 2011 [ at the time of

adoption of mark by Hiralal Megabrands Pvt. LTD]?

9|Page
 SUMMARY OF ARGUMENTS

1) ISSUE 1- Whether Hiralal Megabrands Pvt. Ltd. are guilty of passing off their product
under the Trade Mark “HUM TUM” as of Appellant?

It is humbly submitted before the hon'ble court that an action of passing off lie only when 3
conditions to be fulfilled

A) Appellant/ plaintiff mark has achieved reputation

B) There was misrepresentation by respondent

C) Consequential damage

However, it is brought to the kind attention of honourable court that in present case all the 3
conditions said above is not sufficiently fulfilled.

ISSUE 2- Whether the Hummingwayy and Tumblrr Pvt. Ltd. Has achieved sufficient

reputation in INDIA in relevant time i.e., Before 2011 [ at the time of adoption of mark by
Hiralal Megabrands Pvt. LTD]?

It is most humbly submitted before the honourable court that for showing the reputation of mark
appellant has to show that people are relevant jurisdiction are able to draw some connection of the
good of appellant from the mark.

However, in present case public not able to draw the connection good with that of marks.

10 | P a g e
 ARGUMENTS ADVANCE

ISSUE 1-

Whether Hiralal Megabrands Pvt. Ltd. are guilty of passing off their product under the
Trade Mark “HUM TUM” as of Appellant?

The respondent humbly submits that the adoption of mark “HUM TUM” does not fulfil
the requirement of an action of passing off. And hence is not guilty of passing off.
REQUISITIES OF AN ACTION OF PASSING OFF

To establish an action of passing off, the claimant must show three elements- referred as “classic
trinity” first enunciated in house of lord’s decision of Reckitt and Colman Ltd V. Borden INC
1990, the three elements are: -

1) The goods and services have acquired good will or reputation in the market place that
distinguishes such goods and services from the competition.

2) The defendant misrepresents his goods and services either intentionally or unintentionally, so that
public may have impression that the offered goods and services are those of claimant.

3) The claimant may suffer damages because of misrepresentation.

That the appellant mark has not acquired good will or reputation in the relevant market
place.

It is humbly submitted that the requirement of goodwill or reputation is

absent in the present case.

As it is laid down by the court that to establish fact of reputation holder has to submit market
survey evidence to prove his goods & services have acquired goodwill & reputation in relevant
market place at relevant point of time. The holder may also have to provide information on his
advertising and promotional budget and sales revenue to support its claim that he has acquired
goodwill and reputation.

11 | P a g e
In the present case it is submitted by the appellant that it has more than 4500 outlets in more than
190 countries of the world and its products are available. In India through e- commerce platform.
But size of business by itself is not the sole criteria for the establishment of fact of reputation even
if it accepted that it has attained reputation outside India, it does no that it has obtained reputation
and goodwill. In India too at the relevant point of time because Indian court has shown gradual shift
from universality principle to territoriality principle

Fact of reputation not only to be claimed but also has to be established however in the present
case, appellant had not taken any step to prove the claim of reputation.

[neither submits market survey evidence nor provide any information on advertising promotional
budget and sale relevance]

That the defendant did not misrepresents his goods and services as those of claimant.

Misrepresentation= deceptively similar + likely to cause confusion among public

Section 2(h) of trademark act define “deceptively similar” as follows

“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”

As laid down by SC in Parle Product (p) Ltd v JP & CO AIR 1972. “Wherever one mark is

deceptively similar to another, the broad & essential feature of the two are to be considered.
They should not be placed side by side to find out if there are any difference in the design. In
Candila Health Care Ltd (2001) 5 SSC73, SC has stated that following factors are to be
considered while judging deceptive similarity

a) Nature of mark

b) The degree of resemblances

c) The nature of gilds in respect of which they are used as Trademarks.

12 | P a g e
d) The similarity in nature, character and performance goods of the rival trades

e) Class of the purchaser who are likely to buy the goods.

f) The mode of purchasing goods or placing order

g) Any other surrounding circumstance which may be relevant.

Weightage to be given to each factor depending on fact of each case.

It is humbly submitted that in the present case, there is no misrepresentation because

a) Appellant mark is a figurative mark while defendant mark is a work mark.

b) Though both deal with clothing but it cannot be said that there is similarity in goods because
appellant deal with fashionable clothing while defendant deal with low-cost affordable clothing.

c) Public purchasing goods may differ substantially if not wholly. (targeted public forms
substantially different group)

d) Both marks operate in two different territories.

e) Bonafide adoption as it is popular expression of Hindi language.

That the appellant had not suffered any damages.

for an action of passing off, claimant must have suffered damage and causative factor of damage
should be misrepresentation.

If there is no damage and even if there is damage but not arising out of
misrepresentation, no action of passing off will lie.

It is respectfully submitted that in the present case, appellant has not shown that he has suffered
any damages.

13 | P a g e
From the fact of the case, it is humbly submitted that all the three ingredients of passing off is not
met in present case.

14 | P a g e
Issue 2: Whether the Hummingwayy and Tumblrr Pvt. Ltd. Has achieved sufficient
reputation in INDIA in relevant time

i.e., Before 2011 [ at the time of adoption of mark by Hiralal Megabrands Pvt. LTD]?

In N.R. DONGRE v/s Whirlpool AIR 1996, Indian code for the first time recognized trans-

border reputation of a mark and given a broad meaning of it. Court in this case followed

universality principle and maintained that trademark has a widespread international reputation

even though the goods under the mark are not available in domestic market.

But now there is shift from universality principle to territoriality principle. Now under territorial
doctrine, claimant should necessarily establish that its

reputation has spilled over to Indian market prior to adoption of mark by defendant.

In Satyam Infoway v. Sifynet solutions AIR 2004 court held that even if it is proved that
claimant has goodwill in other countries that fact itself does not indicate that he has earned
goodwill in India before relevant time. It has to be proved by taking into consideration

1. Value of sale

2. Expenditure on advertisement

In Toyota Jidosha Kabushiki Kaisha v M/s Prius Auto Industries Limited AIR 2018.While
discussing trans-border reputation, court held that the advertisement in Automobile Magazine,
business magazine, availability of date in information dissemination portal like Wikipedia and
information on Internet, even if accepted, will not be sold basis to hold the existence of necessary
goodwill and reputation in Indian market at relevant time. Foreign entity cannot claim trans-border
reputation bye mere use in India at places like duty free shops or shops with limited public access.

15 | P a g e
Keeping in mind the principle laid down in above mentioned case, it is humbly submitted that in
the present case, appellant’s Trade mark has not attained sufficient reputation because

a. Fact of reputation not only claimed but also need to establish [ claim+prove ] through
advertisement and p promotional budget or sale revenue, however, appellant has not proved any
figure related to that in India.

b. Appeal and mark is not a well-known trademark so we cannot assume that fact of reputation
[As appellant himself claimed it famous mark not well known trademark]

c. Relevant time (For the purpose of establishing reputation) Is 2011 and a plaintiff admitted
himself that he has no business establishment in India and its product is available in market
through E Commerce website. In 2020 however it is not showing facts before 2011

d. Appellant claimed that its product is widely available through E Commerce sites such as
Amazon, Myntra etc however Amazon took first step into the Indian market in Feb 2012 when it
launched junglee.com which allowed customer to compare prices online but purchase item directly
whereas Myntra founded in 2007.

For the following reasons, it is submitted that appellant had not attained sufficient goodwill or
reputation in Indian market before relevant time that is 2011 before adoption of the mark by
defendant.

16 | P a g e
 PRAYER

Wherefore in the light of the facts, issue raised, argument advanced, statues referred and

hold, adjudges and declare that-

1. To dismiss the appeal and uphold the decision of district code

2. To pass any other order that it may deem fit in the interest of justice, equity and good
conscience

3. To award the cost of suit in favour of respondent.

S/d

Counsel for Respondent

17 | P a g e
18 | P a g e
19 | P a g e
16

20 | P a g e
21 | P a g e