• Contributor: Mohan Dewan, R K Dewan & Co., Mumbai, India

INTA Bulletins Law and Practice  —  Asia-Pacific Subcommittee

Verifier: Sushant Singh, Supreme Court of India & Delhi High Court

In H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors/ IA-7259/2016 (May 31, 2018), the High Court of Delhi, issued a permanent injunction against the defendants HM Megabrands Pvt. Ltd & Ors., confirming that prior adoption of a mark overseas can be superior to prior use of the mark in India.

The plaintiffs own the trademark H&M, a brand that is popular worldwide. The first registration for the mark H&M was in the year 1985 in the United Kingdom. The plaintiffs registered the mark in India in 2005. The defendants began marketing garments under the brand “HM Megabrands” in India in 2011 and applied for registration of HM MEGABRANDS on April 11, 2014.

 

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The plaintiffs filed a suit against HM Megabrands for trademark infringement and passing off. The defendants contended that their adoption of the mark was honest and based on the initials of the names of its directors. Further, the defendants contended that, when they adopted the trademark HM MEGABRANDS in 2011, the plaintiffs had not yet entered India with their products. The defendants also maintained that their brand included the word “Megabrands,” which sufficiently differentiated their goods from those of the plaintiffs’ brand, “H&M”.

The court disagreed that the defendants’ adoption of the mark HM MEGABRANDS was bona fide. The court observed that the defendant was using a red and white color scheme identical to H&M’s, and further noted that customers would interpret the additional word “Megabrands” to mean “huge brand,” which would escalate confusion with H&M.

Also significant for the court was the prior adoption of the mark by the plaintiff in 2005, as opposed to the defendant’s adoption in 2011. The later introduction of the plaintiffs’ products in India was considered irrelevant. The court observed that, because of increased “foreign travel and exchange of cultures,” it could be presumed that consumers would be aware of top brands worldwide.

The court therefore restrained the defendants from the use of the trademark HM MEGABRANDS. This judgment once again establishes that, in India, prior adoption of a mark overseas can be superior to prior use of the mark in India.

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