IN THE HIGH COURT OF DELHI

AT NEW DELHI

CIVIL APPELATE JURISDICATION

CIVIL APPEAL NO. / OF 2022

(Under Section 96 of Civil Procedure Code)

IN THE MATTER OF:

Hummingwayy and Tumblrr Pvt Ltd ......................................................................... Appellant

Versus

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

MEMORIAL PN BEHALF OF RESPONDENT

COUNSEL APPEARING FOR THE RESPONDENT

NAME-AWADHESH CHATURVEDI

SEMESTER- 5TH

SECTION-J
CLASS ROLL NO.-201193

EXAM ROLLNO-20309806187

CENTRE- CAMPUS LAW CENTRE

 TABLE OF CONTENTS

1. LIST OF ABBREVIATIONS................................................................ 3

2. INDEX OF AUTHORITIES ............................................................... 4

3. STATEMENT OF JURISDICTION .................................................... 5

4. STATEMENTS OF FACTS.................................................................. 6

5. STATEMENT OF ISSUES ................................................................... 7

6. SUMMARY OF ARGUMENTS ...........................................................8-9

7. ARGUMENTS ADVANCED ........................................................... 10-20

8. PRAYER ..............................................................................................21

2
 LIST OF ABBREVIATIONS

& And

Art. Article

CPC Civil Procedure Code

TM Act Trade Marks Act

Sec. Section

Hon’ble Honourable

TM Trademark

V. Versus

Ors. Others

Anr. Another

SC Supreme court

Pvt. Private

Ltd Limited

Ed. Edition

3
 INDEX OF AUTHORITIES
Statutes and Conventions:

1. Trade Marks Act, 1999

2. Code of Civil Procedure, 1908
3. Vienna Convention
4. Madrid convention

Judicial Decisions:

1) Singer Manufacturing Co. v. Loog, (1880) 18 Ch.D. 395

2) Erven Warnink B.V. v. J. Townend & Sons (Hull)Ltd., [1980] RPC 31
3) Sun Pharmaceutical Industries Ltd. v. Anglo French Drugs and Industries
Ltd,2015 (63) PTC 580(Del)
4) Harrodas v. Harrodian School, (1996), RPC 698 at 713
5) Cadila Healthcare Limited v. Dabar India Limited, 2008 (38) PTC 130 (Del.)
6) Balkrishna Hatcheries v. Nandos International Ltd, 2007 (37) PTC 295 (Bom)
7) Goenka Institute of Education and Research v. Anjani Kumar Goenka and
Anr.,2009 (39) PTC 720 (Del.)
8) Satnam Overseas vs Sant Ram & Co. & Anr. 2014 (57) PTC 220 (SC)
9) M/S Lakme Ltd v. M/S Subhash Trading, 1996 (64) DLT 251
10) SM Dyechem Ltd v. Cadbury (India) Ltd, (2000) 5 SCC 573
11) Parle Products (P) Ltd. Vs. J.P. and Co., (1972) 1 SCC 618
12) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73
13) Starbucks (HK) Limited & Anr. v. British Sky Broadcasting Group PLC &
Ors., [2015] UKSC 31
14) Toyata Kabushiki Kaisha v. M/s Prius Auto Industries Ltd, AIR 2018 SC 167

Books:

1. Dr. V K Ahuja, Law Relating to Intellectual Property Rights, Lexis Nexis (3rd
Edition, 2017).
2. Halsbury's Laws of England, Vol. 38

Websites Referred:

1. www.scconline.com

2. www.indiankanoon.org

3. www.spicyip.com

4
 STATEMENT OF JURISDICTION

The respondent humbly submits to the jurisdiction of this Hon’ble High Court under
Sec. 96 of Code of Civil Procedure, 1908. The present memorial henceforth sets forth
the facts, issues and arguments in the present case.

Sec. 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 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 Cause, when the amount or value of the
subject-matter of the original suit does not exceed three thousand rupees.

5
 STATEMENT OF FACTS

1) Hummingwayy and Tumblrr Pvt Ltd herein referred as appellant/petitioner, based

in Norway is the proprietor of the trademark “HumTum” written in stylized
manner with the device of daisies(flowers).
2) 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 and yet to
formally start its working.
3) Company has applied for registration in India. Status of application in May 2020,
is that it is sent to Vienna Codification.
4) It has secured its registration for the mark in 1970 in the United Kingdom.
5) Appellant is engaged in designing, marketing and selling a wide variety of
premium segment of clothing through global e-commerce stores and online
shopping service providers.
6) Hiralal Megabrands Pvt. Ltd herein referred as respondent, an Indian company is
engaged in the business of marketing, supplying and selling garments and
ancillary products under trademark “Hum Tum” written in Hindi, Gujarati and
English since 2011.
7) It is registered in India since 2014.
8) “Hum Tum” is quite a familiar brand among lovers of affordable clothing in
India and Middle East. Its biggest outlet is in Saket, Delhi and also, they started
selling their products on online shopping service providers.
9) Appellant recently found out goods of respondent and alleged that they are using
the similar trademark as of theirs.
10) Appellant filed a suit for passing-off against respondent.
11) District Court of Delhi held that there was no action of passing-off.

6
 STATEMENT OF ISSUE

Issue-1: Whether the respondent by adopting the impugned mark is passing off their
goods as that of the appellant and whether the goods are of same description?

Issue-2: Whether the respondent was right in using the trademark as per section 12 of
Trade Marks Act,1999 in honest concurrent way?

Issue-3: Whether “HumTum” written in stylized manner with daisies(flowers) in the

background and “Hum Tum” written in Hindi, Gujarati and English are deceptively
similar?

Issue-4: Whether the mark of the appellant had no recognition in India at the time
when the respondent started using their mark and whether there is transborder
reputation?

7
 SUMMARY OF ARGUMENTS

Issue-1: Whether the respondent by adopting the impugned mark is passing off
their goods as that of appellant and whether the goods are of same description?

Appellant has no registration in India but defendant has a registered TM since 2014
and selling products since 2011. Appellant adopted “HumTum” in English written in
stylized manner with daisies (flowers) in the background whereas respondent adopted
“Hum Tum” written in Hindi, Gujarati and English with no such background. ‘Hum
Tum’ is famous Hindi phrase which connects with the people with each other and the
respondent adopted it to connect with the customers. There is no misrepresentation by
the respondent to sell goods and lead public to belief that the goods offered by him are
the goods of appellant. Appellant is selling premium clothes through online shopping
sites hence has no significant customer base in India while respondent has a huge
customer base and popular among purchasers of affordable clothing.

Clothes are something which are not normally purchased on verbal or written request
but they are carefully selected and inspected. Customer inspects the shape, design,
quality and size of clothes and then he purchases it. There is no injury to the appellant
because of different segments of customer.

Issue-2: Whether the respondent was right in using the trademark as per section
12 of Trade Marks Act, 1999 in honest concurrent way?

‘Hum Tum’ is a very popular and a very common Hindi phrase used widely in India.
The majority of people living in India speak and know the Hindi language very well
and the phrase ‘Hum Tum’ as it is so commonly used in daily life by people.
Therefore, the respondents chose to sell their goods under the TM ‘Hum Tum’ as they
believed it would help them to connect better with the masses. They have honest
intention regarding the adoption of this trademark.

Also, they are an affordable clothing brand so it will help them establish a much
deeper emotional connect with their buyers as well. Hence, the respondent’s adoption
of the impugned trademark was done in good faith as required in sec. 12 of the TM
Act, 1999.

8
Issue-3: Whether “HumTum” written in stylized manner with daisies(flowers) in
the background and “Hum Tum” written in Hindi, Gujarati and English are
deceptively similar?

Appellant adopted “HumTum” in English written in stylized manner with daisies

(flowers) in the background whereas respondent adopted “Hum Tum” written in
Hindi, Gujarati and English. There is a space and two words are written separately in
TM of respondent. Using three languages respectively is a distant feature of
respondent’s TM, so both are not visually similar.
‘Hum Tum’ is a combination of two Hindi words ‘Hum’ and ‘Tum’ but the TM of
appellant company based in Norway ‘HumTum’ is registered in United Kingdom and
it is not the word of Hindi language. Its pronunciation is totally different from Hindi
phrase ‘Hum Tum’, so they are also not phonetically similar as well.
Respondent is selling affordable clothing mainly through stores but appellant is
selling premium segment of clothing and selling only through online shopping service
providers, so they have different sections of buyers in the society. It means both
trademarks are not deceptively similar.

Issue-4: Whether the mark of the appellant had no recognition in India at the
time when the respondent started using their mark and whether there is
trans-border reputation?

The phrase ‘Hum Tum’ is a very popular and a very common Hindi term used widely
in India. Therefore, the respondents chose TM ‘Hum Tum’ as they believed it would
help them to connect better with the masses. They don’t have any knowledge about
the appellant’s TM in 2011 and the appellant has no recognition in India due to
limited online exposure at that point of time (2011) in India.

Appellant has no significant customer base in India as its products are available only
in global e-commerce stores and online shopping service providers. It is well known
fact that in India the online shopping has been started in a limited time and very few
customers buy through these providers it means appellant has no significant customer
base in India so they do not have reputation and goodwill in India while defendant has
stores all over India and a strong customer base in India and has a huge reputation and
popularity among purchasers of affordable clothing.

9
 ARGUMENTS ADVANCED

Issue-1: Whether the respondent by adopting the impugned mark is passing off
their goods as that of appellant and whether the goods are of same description?

Passing off is an actionable wrong, in which a person passes off his goods as the
goods of another. The 1aw of passing off is preserved, notwithstanding any apparent
conflict or overlap with the provisions of the Act. The term "passing off' was
explained in- Singer Manufacturing Co. v. Loog1, no man is entitled to represent his
goods as the goods of another man; and no man is permitted to use any mark, sign or
symbol, device or other means, whereby, without making a direct false representation
himself to a purchaser who purchases from him he enables such purchaser to tell a lie
or to make a false representation to somebody else who is the ultimate customer.

In Erven Warnink B.V. v. J. Townend & Sons (Hull)Ltd., Lord Diplock 2 stated
essential characteristics of a passing off action in the following words:

（1) misrepresentation,
（2) made by a person in the course of trade,
（3) to prospective customers of his or ultimate consumers of goods or
services supplied by him,
（4) which is calculated to injure the business or goodwill of another trader (in the
sense that this a reasonably foreseeable consequence) and
（5) which causes actual damage to a business or goodwill of the trader by whom the
action is brought or will probably do so.

Passing off is a matter of fact and is determined on the basis of facts proven on the
basis of factual circumstances. Status of plaintiff in the business, goodwill and status
of consumers play a vital role in deciding passing off.

In Sun Pharmaceutical Industries Ltd. V. Anglo French Drugs and industries

Ltd3, 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

1 (1880)18 CH. D 395

2 (1980) RPC 31

10
 passing off action.

In Harrodas v. Harrodian School4: It was held that there are three elements of the
tort for passing off which are as follows; (1) Reputation (2) Deception (3) Damages.
These are also called the “classical trinity”.

In Cadila Healthcare Limited v. Dabar India Limited5, held that the judgement of
Erven Warnink was approved in Cadila Health Care Ltd. v. the Delhi High Court h
Cadila Pharmaceutical Limited, and reiterated in Heinz Italia v. Dabur India Ltd. By
applying the judgement of Erven Wanink, the court held that viewed in the light of
these five elements, the plaintiff has not been able to establish a prima facie case of
misrepresentation made by the defendant in the course of trade to his prospective or
ultimate customers which can be said to be calculated to injure the business or
goodwill of the plaintiff. No prima facie case, to show actual damage to the plaintiff's
business or goodwill or the probability of such damage has been made out. If any one
of the elements is missing, then a passing off action would not be maintainable.

Applying the Erven Warnink judgement is this case:

⚫ Application for registration of given TM by appellant is still pending and
defendant is a bona fide registered TM owner since 2014 in India and selling its
products since 2011. Appellant adopted “HumTum” in English written in stylized
manner with daisies (flowers) in the background whereas respondent adopted
“Hum Tum” written in Hindi, Gujarati and English with no such background.
‘Hum Tum’ is famous Hindi phrase which connects with the people with each
other and the respondent adopted it to connect with the customers. There is no
misrepresentation by the respondent to sell goods and lead public to belief that
the goods offered by him are the goods of appellant.
⚫ Appellant is making premium clothes while the respondent’s products are
affordable. Appellant has no stores in India and selling through online shopping
sites hence has no significant customer base in India while respondent has a huge
customer base and popular among purchasers of affordable clothing.

⚫ Both the company have different customers and they are dealing in different

4 (1996), RPC 698at 713

11
sections of society Appellant makes premium clothes and sells only through online
medium which is purchased by upper middle class and rich customer while defendants
make affordable and economical clothes which is purchased by middle class and poor
section of the society.
⚫ Clothes are something in which visual impact is more important than aural
similarity as clothes are not normally purchased by on verbal or written request
but they are carefully selected and inspected. Customer inspects the shape, design,
quality and size of clothes and then he purchases it. There is no injury to appellant
because of different customers and no prima facie case, to show actual damage to
the appellant business or goodwill or the probability of such damage has been
made out.

For deciding the goods of both companies are of same description or not, In
Balkrishna Hatcheries v. Nandos International Ltd 6: The High court referred
some famous cases like Jellinek, J. Lyons, Eagle Potteries and British Sugar; where it
is held that the following factors must be relevant in considering whether there is or is
no similarity:
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach the
market;
(e) In the case of self-serve consumer items, where in practice they are respectively
found or likely to be found in supermarkets and in particular whether they are or are
likely to be, found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This inquiry
may take into account how those in trade classify goods, for instance whether market
research companies, who of course act for industry, put the goods or services in the
same or different sectors.

Applying the settled law in this case:

(a) Plaintiff’s premium clothes are used for fashionable clothing while defendant’s
affordable clothes are used for daily use clothing .

12
(b) Plaintiff products are premiumand costly that is bought by bupper middle class people
and defendents prodects are affordable one and bought by middle class and poor class
that is by two major sections of society.Plaintiff is engaged in designing, marketing
and selling a wide variety of premium segment of clothing while defendant is engaged
in the business of marketing, supplying and selling of affordable clothing.
(c) Plaintiff has no store in India and selling its products only through global
e-commerce stores and online shopping service providers whereas defendant has its
stores and outlets all over India and selling its products mainly through these outlets.
(d) Plaintiff has no store and its products are not available in market whereas
defendant ‘s products are available throughout the country in the market and stores.
(e) Plaintiff’s products do not compete with defendant’s products. Both are different,
one is costly and premium whereas other is economical and affordable. The
companies put plaintiff’s products in branded and premium sector whereas
defendant’s products are put at economical and affordable sector.

The aforesaid factors are absent in this case, so the products of appellant and
defendant are not similar in description. Appellant has no goodwill in India and there
is no misrepresentation by the respondent, so there is no question of passing off
appellant can raise.

Issue-2: Whether the respondent was right in using the trademark as per section
12 of Trade Marks Act, 1999 in honest concurrent way?
Concurrent use by two or more persons of the trademark for the same goods is
contrary to the whole essence of trade mark jurisprudence, for a trade mark is
intended to denote that the goods come from one source and one source only.
However, exceptional circumstances arises when more than one person honestly and
independently the same and similar mark and continue to use without objection and
without the knowledge of each other marks, often in different territories, and without
causing any confusion or deception to the public. It is considered just and natural to
confer the benefit of registration to such concurrent users, even if it causes some
occasional confusion.

13
Section 12 of Trade Marks Act, 1999;
“Registration in the case of honest concurrentuse etc.- In the case of honest concurrent
use or of other special circumstances which in the opinion of the registrar, make it proper
so to do, he may permit the registration by more than one proprietor of the trademarks
which are identical or similar (whether any such trade mark is already registered or not)
in respect of the same or similar goods or services, subject to such conditions and
limitations, if any, as the Registrar may think fit to impose.”

Section 11 of TM Act, 1999 grounds of refusal of trademark. Kerly on Trade Marks,

8th ed. p. 158, stated:
"A registration may often be refused under sec. 11 when refusal could not be justified
under sec. 12 owing to the goods being of a different description. In other cases where
an opponent is registered but might be unable to prove a reputation for it by use, sec.
12 is more effective in securing refusal of an application than sec. 11.
In Halsbury's Laws of England, Vol. 386, the legal position is stated thus at p. 543:
"The foregoing provision (sec. 11) does not override the statutory effect of honest
concurrent use and an objection under the foregoing provision may be disposed of if
there is evidence that the mark has been honestly used without resulting confusion."

In Goenka Institute of Education and Research v. Anjani Kumar Goenka and

Anr7: Honest concurrent use was established. Both the applicant and respondent had
“Goenka” as a predominant part of their trademarks: the competing marks were
“Goenka Public School” and “G.D. Goenka Public School”. Honest and concurrent
use was established because of the following facts: first, it was established that both
parties started using the word “Goenka” around the same time, secondly, one
institution was based in Delhi and the other in Rajasthan so the appellant could not
have known of the respondent’s mark when he started using the same and thirdly, the
fact that Goenka forms part of the appellant’s trust name, all pointed to honest and
concurrent adoption. Therefore, the Registrar allowed both marks to be registered with
certain conditions.

7 2009 (39) PTC 720 (Del)

8 2014 (57) PTC 220 (SC)

14
 In Satnam Overseas vs Sant Ram & Co. & Anr8: The applicant was not shown to
have been aware that the opponent was in use of the trade mark ‘KOHINOOR’ for
rice, the registration of same trademark in respect of same product was granted in Favour of
applicant as he was evidenced to be a Bonafide and honest concurrent user .IN the case,
respondents' trademark is adopted with honest adoption. If either the adoption subsequent user of
the mark is proved to be dishonest then, trade mark is not registered according to section 12 of
the TM Act 1999. The adoption and use by a trader of a mark may be honest despite his
knowledge of a similar trade mark already register, however, there should be no mala fide
intention.

The phrase ‘Hum Tum’ is a very popular and a very common Hindi term used widely
in India. The majority of people living in India speak and know the Hindi language
very well and the phrase ‘Hum Tum’ as it is so commonly used in daily life by people,
in movies, in advertisements etc. Therefore, the respondents chose to sell their goods
under the trademark ‘Hum Tum’ as they believed it would help them to connect better
with the masses. They have honest intention regarding the adoption of this trademark.

Also, they are affordable clothing brand so it will help them establish a much deeper
emotional connect with their buyers as well. Hence, the respondent’s adoption of the
impugned TM was done in good faith as required in sec. 12 of the TM act, 1999.

Issue-3: Whether “HumTum” written in stylized manner with daisies(flowers) in

the background and “Hum Tum” written in Hindi, Gujarati and English are
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 trademark is making “deceptively similar” trademark.
‘Deceptive similar’ trademark can be understood as 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
Sec. 2(h) as:
“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”.

16
 The concept of deceptive similarity has been widely recognized as a ground for TM
infringement under various trademark regimes.
Supreme court in a catena of causes related to IPR held that in action for passing off
of unregistered trademarks, deceptive similarity between two rival trademarks is an
essential element and every case must be depended on its own particular facts.

In M/S Lakme Ltd v. M/S Subhash Trading9, In this case plaintiff was selling
cosmetic products under the trademark name ‘Lakme’ and the defendant was also
selling similar products under the name ‘Like Me’. A case of trademark infringement
was filled 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.

In SM Dyechem Ltd v. Cadbury (India) Ltd10, The court held that “dissimilarity in
essential features in devices and composite marks are more important than some
similarity in the two competing marks”. In this case, the plaintiff started a business of
chips and wafers under the trademark “PIKNIK”. Later defendant started business of
chocolate under the name “PICNIC”. A suit alleging infringement was filled thereafter.
The court held the marks are not deceptively similar as they are different in
appearance and composition of words.

In Parle Products (P) Ltd. Vs. J.P. and Co.11, The Court held that in order to come
to conclusion whether one mark is deceptively similar to another, the broad and
essential features of the two are to be considered. It has also made clear that
“similarity of broad and essential features” between the two rival trademarks includes
phonetic and visual similarity between them.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd12, The Court held that in
an action for passing-off generally for deciding the question of deceptive similarity the
following factors are to be considered:

9 1996(64) DLT 251

10 (2000) 5 SCC 573
11 (1972) 1 SCC
12 (2001) 5 SCC 73

17
(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 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 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 purchasing
and/or using the goods.
(e) The mode of purchasing the goods or placing orders for the goods.
(f) Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.

Applying these tests on this case: Appellant adopted “HumTum” in English written
in stylized manner with daisies (flowers) in the background whereas respondent
adopted “Hum Tum” written in Hindi, Gujarati and English with no such background.
There is a space and two words are written separately in TM of respondent. Using
three languages respectively is a distant feature of respondent’s TM, so both are not
visually similar.
‘Hum Tum’ is a combination of two Hindi words ‘Hum’ and ‘Tum’ but the TM of
appellant company based in Norway ‘HumTum’ is registered in United Kingdom and
it is not the word of Hindi language. Its pronunciation is totally different from Hindi
phrase ‘Hum Tum’, so they are also not phonetically similar as well.
Respondent is not engaged in designing of any type of products nor in any ancillary
products. Respondent is a famous brand with trademark ‘Hum Tum’ for affordable
clothing in India selling its products mainly through stores but appellant is selling a
wide variety of premium segment of clothing and selling only through online
shopping service providers, so they have different sections of buyers in the society.
Also, area of work as well as consumers are not same. Therefore, no harm is caused by
respondent to appellant because both have their own consumers and products which
are totally different. It means both trademarks are not deceptively similar.

Issue-4: Whether the mark of the appellant had no recognition in India at the
time when the respondent started using their mark and whether there is
transborder reputation?
17
The phenomenon of transborder reputation is the outcome of the modern policy of
liberalization adopted by various countries across the world. It is well settled principle

that no company or business or person is allowed to carry on business in any manner

so as to generate a belief in the minds of public that it is connected with the business
of a reputed company, if someone in any other country adopts a TM similar to well-
known TM of any company, the owner can bring an action on the basis of transborder
reputation.

‘On the contrary, Indian trademark law recognizes the regional protection to the
registered trademark. In other words, a particular trademark can be registered and its
protection can be confined to a particular region and the owner of the trademark
cannot seek further protection in other regions, even if his trademark is infringed in
other regions. A trademark which is not used and adopted in India may be said to be
well known trademark in other countries. But the owner of the trademark cannot bring
an action in India on the basis of the said transborder reputation.’

Development of passing off and transborder reputation: It originated as an action

in tort, to redress the wrongful conduct of the defendant in passing-off his goods as
the goods of the plaintiff, by using the TM of the plaintiff so as to induce in potential
purchasers the belief that his goods were those of the plaintiff. The tort was in the
misrepresentation by the defendant to buyers of his goods, that the goods were of the
plaintiff. Defendant achieved this by deceptive and deceitful use of the trademarks.

In course of time, the passing-off action was extended to other cases than the
deceptive use of the plaintiff’s trade name, mark or other things such as packing or
get-up of his product. In the subsequent developments of the action, the focus shifted
to the effect of the misrepresentation, which was injury to the goodwill or reputation
of the plaintiff. The passing-off action became a remedy for the defendant's invasion
of the plaintiff’s right of property in his goodwill or reputation, by his wrongful
conduct. Now instead of previous two ingredients of 'use or registration' for relief,
there are three ingredients: use, registration or reputation in India at common law,
whereas in statute it is - (i) use and reputation or (ii) registration and reputation.

Traditionally, the foreign proprietor of a trademark could claim rights or protection in

India only if the trademark is registered or is actually used in India.
18
 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).

In Starbucks (HK) Limited & Anr. v. British Sky Broadcasting Group PLC &
Ors.13 The court reaffirmed that a claimant in a passing off claim must establish that it
has actual goodwill in this jurisdiction, and that such goodwill involves the presence
of clients or customers in the jurisdiction for the products or services in question. It
held that for this purpose it is not sufficient that people resident in the jurisdiction may
be customers of the claimant when they go abroad, although it could be enough if
people in the jurisdiction obtain the right to receive a claimant’s services abroad by
booking with, or purchasing from, an entity in this country, even if that entity is not
part of the claimant.

In Toyata Kabushiki Kaisha v. M/s Prius Auto Industries Ltd.14, The appellant
claimed that they were the proprietor of the well-known marks Toyota, Innova and
Prius and that the respondents were selling auto-parts and accessories in India by
using the appellant's registered marks especially the mark "PRIUS" on their products.
The appellant had no registration of the mark 'PRIUS' in India, whereas the
respondents had a registration for the same in India since 2001. The Appellant
however claimed that their mark 'PRIUS' was registered in numerous other
jurisdictions since 1990. The Delhi High Court held that even though 'PRIUS' was a
well-known mark outside of India, the transborder reputation of the said mark had to
be proved in India. Since the Appellants could not furnish necessary evidence to prove
that the mark 'PRIUS' was also well-known in India, the Court ruled in favor of the
Respondents.

The Supreme Court observed that under the “territoriality” doctrine governing the 13

(2015) UKSC 31

14 AIR 2018 SC 167

19
principles of passing off, a trademark has a separate “existence” in each country and to
establish such existence in India, a foreign entity must produce positive evidence of
amark’s reputation having “spilled over” into India. In contrast, the “universality”
doctrine accords primacy to prior adoption and use of a trademark anywhere in the
The Supreme Court ruled against Toyota, holding that “advertisements in automobile
magazines, exhibitions of the car held in India and other countries, hits on claimant’s
website, seeking information of Prius car and the information on the internet” were
not a sufficient basis for establishing goodwill in India.

The phrase ‘Hum Tum’ is a very popular and a very common Hindi term used widely
in India. Therefore, the respondents chose to sell their goods under the trademark
‘Hum Tum’ as they believed it would help them to connect better with the masses.
They don’t have any knowledge about the appellant’s TM in 2011 and the appellant
has no recognition in India due to limited online exposure at that point of time (2011)
in India. Application for registration of given TM by appellant is still pending and
defendant is a bona fide registered TM owner since 2014 in India and selling its
products since 2011.

The appellant has no significant customer base in India as its products are available
only in global e-commerce stores and online shopping service providers. It is well
known fact that in India the online shopping has been started in a limited time and
very less no. of customers buys through these providers it means appellant has no
significant customer base in India subsequently it means they do not have reputation
and goodwill because of limited online exposure in India while defendant has stores
all over India and a strong customer base in India and has a huge reputation and
popularity among purchasers of affordable clothing.

It is very necessary to protect Bonafide Indian company’s business and TM as to

protect Indian market and economy otherwise foreign players will dominate and it
will harm Indian economy as well as economics sovereignty.

20
 PRAYER

WHEREFORE, In the light of the facts stated, issue raised, arguments advanced,
statutes referred and authorities cited, it is most humbly prayed that this
Hon’ble High Court may be pleased to hold, adjudges and declare that-

1. That the respondent be allowed to use the impugned trademark as they have been
using it since 2011.

2. That the petitioner be barred from filling a suit related to infringement anytime in
future.

3. Reject the appeal filed by the petitioner and uphold the judgement passed by the
honorable District Court.

4. Dismiss the petition filed by the petitioner with costs.

5. Award damages to the tune of Rs. 1 crore in Favour of the respondent and
against the petitioner.

It is humbly argued before this Hon’ble High Court to pass such order which may
deem fit in the interest of justice and equity.

ALL OF WHICH IS RESPECTFULLY SUBMITTED

Date: …./…/2022

SD/-

Counsel for the Respondent

21