BEFORE

IN THE HIGH COURT OF DELHI AT NEW DELHI

CIVIL APPELATE JURISDICATION

REGULAR CIVIL APPEAL NO……. OF 2020

(Under Section 96 of Civil Procedure Code)

IN THE MATTER OF:

Hummingwayy and Tumblrr Pvt. Ltd. (Norway based) A company incorporated under the Private
Limited Companies Act (Companies Act) and having its subsidiary office at Laxmi Nagar, New Delhi
110092.................................................................................................................................. Appellant

Versus

Hiralal Megabrands Pvt. Ltd. (Indian based) A company incorporated under Companies Act and
having its office at Mayur vihar, New Delhi 110091........................................................... Respondent

MEMORIAL ON BEHALF OF THE RESPONDENT

COUNSEL FOR THE RESPONDENT

Name- Aditya Nath Sharma

Roll No- 182375

Exam Roll No- 180045

Section H

College- Campus Law Centre

1
 TABLE OF CONTENTS

1. LIST OF ABBREVATIONS

2. INDEX OF AUTHORITIES

3. STATEMENT OF JURISDICATION ..

4. STATEMENT OF FACTS 06

5. STATEMENT OF ISSUES

6. SUMMARY OF ARGUMENTS

7. ARGUMENTS ADVANCED -16

8. PRAYERS

2
 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

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 INDEX OF AUTHORITIERS

Statutes

1. Vienna Convention
2. Trademark Act, 1999
3. Madrid Convention

Case Law-

1. Hari Shankar v. Rao Girdhari Lal Chowhdury

2. Santosh Hazari v. Purushottam Tiwari (Deceased) By Lrs
3. Union of India v. K.V. Lakshman
4. perry v. truefitt
5. Ervin Warnick v. Townend & Sons Ltd
6. Cadbury India Ltd and ors v. Neeraj Food Product
7. S. Syed Mohideen v. P. Sulochanabai
8. Sun Pharmaceutical Industries Ltd. V. Anglo French Drugs and industries Ltd
9. Britannia Industries Ltd. V. ITC ltd
10. Nirma Ltd. v Nimma International and Anr
11. Teju Singh v Shanti Devi
12. Diamond Publications v Hind pustak
13. Johnson v Christine
14. M/S Lakme Ltd. v M/S Subhash Trading
15. Cadila Health Care Ltd. v Cadila Pharmaceutical Ltd
16. SM Dyechem Ltd v Cadbury (India) Ltd
17. M/S Allied Blenders and Distillers Pvt. Ltd. v. Govinda Yadav & Anr

Online resources-

1. Scconline.com
2. Manupatra.com

Book-

1. Sreenivasulu NS Law of IPR, 2nd Edn.

2. Venkateshwara Trademark, 7th Edn.

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 STATEMENT OF JURISDICATION

96 of Code of Civil Procedure, 1908 read with Order XLI Rule 1. The present submission sets forth
the facts, arguments, procedure, contentions and prayer which is relevant for Respondent as well as
proper functioning of this Court in respect of this case.

Section 96 of the CPC confers a right of 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 Court of small causes, when the amount or value of the subject- matter of the original suit does
not exceed ten thousand rupees.

Order XLI Rule 1 Form of appeal What to accompany memorandum-(1) Every appeal shall be
preferred in the form of memorandum signed by the appellant or his pleader and presented to the
Court or to such officer as it appoints in this behalf. The memorandum shall be accompanied by a
copy of the judgment.

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 STATEMENT OF FACTS

Hummingwayy and Tamblrr Pvt. Ltd. Based in Norway in the proprietor of the trademark
flowers in background since 1966.
It has set up a subsidiary in New Delhi on behalf parent company and formally started its
working.
Company has applied for registration in India.
Status of application in may 2020, is that it is sent to Vienna Convention.
Hummingawyy and Tabmlrr Pvt. Ltd. Is engaged in designing, marketing and selling a wide
variety of premium segment of clothing
Hiralal Megabrnads Pvt. Ltd., an Indian company, is engaged in the business of marketing,
supplying and selling garments and ancillary products
in Hindi, Gujrati and English since 2011.
It is registered in India since 2014.
and amongst lover of affordable clothing in India.
Hummingwayy and Trumblrr Pvt. Ltd. Filed a suit for passing off against Hiralal megabrands.
District Court of Delhi held that there was no passing off made out.

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 STATEMENT OF ISSUE

1. Whether appeal is maintainable under Sec. 96 of CPC or not?

2. Whether passing off passing off is different from TM infringement?

3. Whether trademark of Appellant ndia and how Madrid

convention is relevant here?

4.
English and Gujrati is deceptively similar?

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 STATEMENT OF ARGUMENTS

1. Whether appeal is maintainable under Sec.96 CPC or not?

It is humbly submitted to the High Court that the Regular Civil appeal filed by the
appellant under Sec 96 read with Order XLI of CPC is maintainable under the jurisdiction of the
Delhi High Court (as far as jurisdiction is concerned). Because registered office of Respondent is
situated within territorial limit of Delhi High Court. So, respondent have no objection with
jurisdiction.

2. Whether passing off is different from TM infringement?

is most commonly used to protect goodwill that is attached to the unregistered trademarks. Passing
off is basically when one person is passing off his goods or services as that another person. An
action of passing off is available to both registered and unregistered trademarks, but a suit for
infringement is available for only registered trademarks.

3. Whether trademark of Appellant ndia and how Madrid

convention is relevant here?
It formally start its
operation in India, but has applied for registration in India. The status of the application in May
2020, is that it is sent to Vienna Codification. And Respondent have registered office in India since

clothing in India.

4.
and Gujrati is deceptively similar?

only as its trademark with the device of daisies (flowers) in the background. And Defendant

affordable in compare than the brand of plaintiff. So both TM are different in totality

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 ARGUMENTS ADVANCED

1. Whether appeal is maintainable under Sec.96 CPC or not?

regular appeal filed here is
maintainable under Sec. 96 of CPC. Sec 96 of the CPC provides for filing of an appeal from
the decree passed by any court exercising original jurisdiction to the court authorized to hear

th
the CPC. Edn.)

of the decision by a higher court of the decision of a subordinate court to rectify any possible
error in the order under appeal.
In Hari Shankar v. Rao Girdhari Lal Chowhdury1 it was held that a right of appeal carries
with it a right of re- hearing on law as well as on fact, unless the statute conferring a right of
appeal limits the re- hearing in some way as has been done in second appeal arising under the
CPC.
In case of Santosh Hazari v. Purushottam Tiwari (Deceased) By Lrs.2, It is settled position
of law that an appeal is a continuation of the proceedings of the original court. The first appeal
is a valuable right of the appellant and therein all questions of fact and law decided by the trial
court are open for re- hearing.
Appeal is maintainable
a) Against a decree.
b) Against preliminary decree.
c) Against final decree.
d) Rejection of plaint under Order7 Rule 11 CPC
e) Determination of any question within section 144 (restitution)
f) Original decree passed ex- parte.
In case of Union of India v. K.V. Lakshman3, it was held that First Appeal under Sec. 96
CPC shall normally be admitted and not dismissed in limine.

1
AIR 1963 SC 698
2
(2001) 4 SCC 756
3
AIR 2016 SC 3139

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 Is case appellant raise any other issue which he was earlier entitled to raise but he omits that
issue in respect of same cause of action, he shall not afterwards sue for any relief so omitted,
expect with the leave of court.4

2. Whether passing off is different from TM infringement?

Passing the goods and services by falsely representing them as the goods and services of some
reputed business man or trader is known as passing off. Passing off is the most dominant
portion of law of trade mark. The object of the law of passing off is to protect some form of
property. The goodwill of the business is ordinarily represented by a mark, name etc. TM act,
1999 does not have an explicit provision that specifically describes passing off. Fundamental
principle behind the tort of passing off is that, a man is not to sell his goods under the [retense
perry v. truefitt5 case.

According to Lord Diplock as he observed in Ervin Warnick v. Townend & Sons Ltd6 passing off
must have following elements-

1. Misrepresentation
2. It must have been made by a trader in course of trade.
3. To the customer or to the prospective customer.
4. Which has caused some confusion or deception in the minds of the consumers.

Passing of act can only be done in case of such establish trader. In Reckitt & colman
v. Borden the issue with regard to what constitute passing off was discussed and it was that to
constitute passing off there must be

1. Establish goodwill of a trader

2. Misrepresentation by somebody
3. Damage to the trader
4. Likelihood of deception and confusion among the consumers.

Implications of passing off would depend upon various social factors including the status of the
consumer, trader and the intention of the one using false indications. The social status of the consumer
their awareness would be an important factor. passing off takes place in case of unregistered TM
having established goodwill and reputation and infringement takes place in case of registered
trademarks with or without good will.

4
Order II Rule 2 Sub rule 3
5
1842
6
1979 AC 731.
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What is Infringement- Infringement means unauthorized use and exploitation of a registered mark.
Section 29(1) of TM act talks about infringement with reference to a registered trademark.

Section 29 Infringement of registered trade mark-(1) A registered trade mark is infringed by a

person who, not being a registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to
goods or services in respect of which the trade mark is registered and in such manner as to render the
use of the mark likely to be taken as being used as a trade mark.

Sec. 27 of act said, that no infringement of Unregistered trademark

(1) no person shall be entitled to institute any proceedings to prevent, or to recover

damages for, the infringement of an unregistered trade mark.
(2) Nothing in this act shall be deemed to affect rights of action against any person for
passing off goods or services as the goods of another person or as services provided by
another person, or the remedies in respect thereof.

According to section 29(2), once a case for infringement is established, the reliefs available to
the plaintiff not be granted if the defendant is able to show that the use of mark complained of is not

defendant. But before that, the plaintiff has to prove the action of the defendant satisfied the test of
infringement.

How infringement is different from passing off- passing off is common law tort remedy and
infringement is a statutory provision given under trademark act 1999. In case of Cadbury India Ltd
and ors v. Neeraj Food Products7, the High Court of Delhi explained the difference between passing
off action and an action for infringement.

1. An action for trademark infringement is a statutory remedy and on the other hand an action for
passing off is a common remedy.
2. The use of TM of the plaintiff, by the defendant, is also a prerequisite in the case of an action
for infringement while it is not a necessity of an action for passing off.

Again in case of S. Syed Mohideen v. P. Sulochanabai8

passing off right is a wider remedy that than of infringement. And said registration of TM is pre
requisite to show deceptive similarity as well as to claim infringement.

7
142 (2007) DLT 724
8 A.S (MAD) No. 62 OF 2011

11
There is not any passing off or infringement committed by Respondent-

1. Respondent have a registered TM (Hum Tum) since 2014 and appellant have not
registration at the time of filing suit (violation of Madrid convention ). And there is not
any goodwill harm caused to appellant by defendant. Because both words are visually
different as observed by district court.
2. Appellant is engaged in designing, marketing and selling of a wide variety of premium
cloth and ancillary products for women, children, men and teenagers. But respondent is
mainly engaged in marketing, supplying, selling garments and ancillary products under
the TM It means respondent is neither engaged in designing of any cloth nor
its any ancillary products. So area of business and group of customers is not same for both
parties.

3. Whether trademark of Appellant ndia and how Madrid

convention is relevant here?

igh Court that as per schedule IV of TM act, clothing,

footwear headgear falls under class-28 of schedule IV of TM Act, 1999.

Respondent (Hiralal megabrands) was engaged in the business of marketing, supplying, selling
garments and ancillary products under the trademark (Hum Tum), written in Hindi, Gujarati and
English since 2011. It is registered in India since 2014. And this particular brand is quite a familiar
brand amongst the love Hum
Tum

Passing off is a matter of fact and is determined on the basis of facts proven on the basis of factual
circumstances. The actions for passing off seeking suitable remedies are adjudicated on the basis of
the factors which underline the act of passing off. Status of plaintiff in the business, goodwill and
status of consumers play a vital role in deciding passing off. Intention is a relevant factor in passing
off action. In Sun Pharmaceutical Industries Ltd. V. Anglo French Drugs and industries Ltd9,
court said that nature of marks, degree of resemblance, class of purchasers and mode of purchasing,
each factor should be given equal weight while dealing with passing off action.

Application for registration of given TM by appellant is still pending and defendant is a bona fide
registered TM owner since 2014 in India.

9
2015 (63) PTC 580(Del)
12
In passing off appellant shall establish that there would be irreparable damages if the alleged act of
passing is not stopped. And such damage must include erosion of goodwill establish by appellant.
his area of

India. Appellant is using e commerce site to sale his clothing and ancillary products.

But respondent is well famous TM holder in India as well as in middle east countries. And respondent
is not engaged in designing of any type of products nor in any ancillary products. Also area of work
as well as consumers are not same. act of respondent is totally bona fide act. Therefore, no harm is
caused by respondent to appellant. and goodwill of appellant is never destroyed by respondent
because both have their own consumers and products which are totally different. Respondent is a
st only. But
appellant have yet to start his affordable clothing segment in India under offline mode.

Limitations of Trademark- TM is territorial. Geographical boundaries play a very important role in

deciding in which countries the TM will be valid. When the mark registration is carried out in India,
then enforcing the TM rights is valid only within the Indian Jurisdiction. If one requires protection in
more than one country a separate international application in mandatory in that country (Madrid
convention). Trademark infringement and limitation. The usual time limit to bring an action is three
years from the date of cause of action.

Respondent is a famous brand in India since 2014 and appellant firstly instituted a suit for passing off
in year of 2020, i.e. after 6 years. The appellant has not any issue/issues about this TM. So there is
not any harm caused by respondent to appellant either to his goodwill or his reputation. And act of
respondent has not contained a bit of misrepresentation.

In case of Britannia Industries Ltd. V. ITC ltd10

off, is not established, then other elements of misrepresentation and the likelihood of damage is
needless to prove.

In case of Nirma Ltd. v Nimma International and Anr11, court said that marks are phonetically as
well as semantically different and the classes of purchaser of goods sold under mark also differ.
Hence, both are not deceptively similar.

I want
passing off only before district court. And Passing off is an action in case of unregistered trademark.

10
2017 (70) PTC66 (Del)
11
2010 (42) PTC 307 (Del)

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So here he shall not be permitted to claim any type of infringement because passing off is ancillary
of infringement not vice versa. He omitted infringement of trademark intentionally. As for as this

infringement.

For infringement of TM the geographical origin, time of production of goods or rendering services
and purpose should be considered. And in this case respondent lawfully acquired that TM.

If we considered phonetical similarity of both mark they are not valid under sec 29(9) of Act.

Section 29(9), where the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words as well as by their
visual representation and reference in this section to the use of a mark shall be construed
accordingly.

Legislature used phrase as well as which shows clear intention of legislature that infringement is
caused by spoken word as well as by their visual representation at the same time. And respondent is
using three languages to represent his TM (Annexure -1), whereas appellant is using only English
representation of his TM. Therefore, infringement of TM is totally absent. Also appellant filed a suit
after 6 years before any Court of Law that is a gross negligence on his part.

Respondent is totally bona fide user of this TM without any bad intention. And no passing off or
infringement is caused by the respondent by using of this TM.

Trade practice by respondent is not to use the goodwill of appellant nor to destroy his reputation. And
respondent have not a good
reason to not to grant any passing off or infringement against respondent. And the defendant has a
right of his own to use the name, mark etc. defendant is a leading producer in India of affordable
clothing only.

In case of Teju Singh v Shanti Devi12

and passing off is not proved.

And in case of Diamond Publications v Hind pustak13 rapidex

-up. And court refused injunction to plaintiff.

12
AIR 1974 AP 274
13
1983 PTC 132
14
In another famous case where passing off was claimed by plaintiff but was refused by court is,
Johnson v Christine14 STAYFREE in

COMFIT ALWAYS in a package having a different get up, but had printed the word STAY FREE

off. And no any relief was granted to plaintiff.

In the view of above settled case law and provision of TM Act, it is clear that respondent have not

As far as universal applicability of this TM is concerned, I would like to refer Madrid convention
d system is a convenient and cost effective solution for
registering and managing trademarks worldwide. And one can gain universal applicability of his/her
TM. But in the given facts it is very clear that appellant did not register his TM under this convention.
And no one can claim universality of any TM without registering under Madrid Convention. So using
respondent is not in violation of TM Act, 1999.

The Objective of TM Act 1999-

The objective of TM Act 1999, is to Register trademarks applied for in country and to provide for
both protection of TM for Goods and services. Respondent is using his TM in the purview of objective
of TM Act, 1999.and no misrepresentation is caused by him.

intention.

4.
and Gujrati is deceptively similar?
Trademark play a vital role in creating a brand name and goodwill of any business. Not only
does it help in creating a brand value but also, aids in revenue generation. Being of such vital
importance, trademark is vulnerable to getting infringed and/or misused. One such way of

a trademark created, almost similar or

a look- alike of an already existing trademark in order to deceive and confuse the consumers.
This concept of deceptive similarity has been discussed in the TM Act,1999 under section
2(h) as:
to be deceptively similar to another mark if it so nearly resembles
that other mark as to be

14
AIR 1988 Del. 249
15
 The concept of deceptive similarity has been widely recognised as a ground for TM
infringement under various trademark regimes. However, the Act does not ascertain any
hence, there
is a vacuum.
In case of M/S Lakme Ltd. v M/S Subhash Trading 15, In this case plaintiff was selling
cosmetic products

by the plaintiff. The high court held that the names were not deceptively similar and are two
separate marks with difference in their spelling and appearance.
SM Dyechem Ltd v Cadbury (India) Ltd16, In this case, the plaintiff started a business of

The court held the marks not to be deceptively similar as they are different in appearance and
composition of words.
While deciding deceptively similarity Cadila Health Care Ltd. v Cadila Pharmaceutical
Ltd.17, plays an important role because in this case Court laid down certain guidelines for
adjudication of matters concerning deceptive similarity of trademarks.
M/S Allied Blenders and Distillers Pvt. Ltd. v. Govinda Yadav & Anr.18, In this case,

hindi translation of a military officer.

Adding to it, both the parties are in the business of alcoholic beverages. Further, packing of
both of the bottles are also alike.
Though, trade dress plays a significant role in deciding the cases of trademark infringement,
in this case, the court held that there is no deceptive similarity between the trademarks

It is very important to note that the trademarks act does not lay down any criteria for

every case must be depend on its own particular facts.

Kerly on Trade Marks, 8th Edn., P .400 observed that for deceptive resemblance, two
important questions need to be considered:
1. Who are the persons whom the resemblance must likely to deceive or confuse, and;

15
1996 (64) DLT 251
16
(2000) 5 SCC 573
17
(2001) 5 SCC 73
18
CS (COMM) 189/2018

16
 2. What rules of comparison are to adopted in judging whether such resemblance exists?

In Durga Dutt Sharma v N. P Laboratories, 19 court said passing off is a common law remedy
and not the gist of an action for infringement. The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive
right to use the trade mark in relation to those goods vide section 21 of the act. The use by the
defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is sine qua
non in the case of an action for infringement. And in inf
deceive.

and respondent is a Indian based company which is more familiar among Indian. Both marks are
completely different (Refer Annexure-I ). Using three languages respectively
Respondent is using this TM since 2014 without any barrier
and after 6 years, in 2020 appellant filed a suit only for passing off. And decreed in favour of
respondent. Which is correctly decided by district court.

19
1965 AIR 980, 1965 SCR (1) 737

17
 PRAYER

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

hold, adjudges and declare that-

1. Case decided by trial court is correctly decided and it should be upheld.

2. Trial court correctly distinguished the territorial limit and consumer base for both brands (in
view of Madrid convention). And appellant instituted a suit of passing off after 6 years,
meanwhile consumer base of respondent is fully set up in India along with middle east. In last

Respondent is continuously using this TM without any wrongful intention. So at this stage
appellant should not be allowed to raise infringement of TM in view of Order 2 rule 2 Sub
rule 3 of CPC, 1908.
3. Both marks are not similar as shown under Annexure-I, and respondent charge lower cost in

appeal which is related with passing off is completely wrong as per precedents decided and it
may not be decided contrary to District Court.

in the interest of justice, equity on the basis of above point mentioned.

Date: 2020

S/d
Counsel for Respondent

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Annexure I

19