According
to The Economic Times, an Indian daily, Swedish fashion brand Hennes
& Mauritz AB (H&M) has recently served Mumbai-based retailer, HM
Mega Brands, with a legal notice for trademark infringement, thus
becoming the latest multinational company to take this step in India.
Brief Facts about Parties involved
Brief Facts about Parties involved
- H&M had the grand opening of its first store in India (in New Delhi) last month on October 02, 2015.
- The Swedish fashion brand is stated to be the second largest fashion retailer in the world after ZARA, and is the registered proprietor of the trade mark “H&M”.
- HM Mega Brands Pvt. Ltd. is a company registered in 2012 with the Registrar of Companies, Mumbai and is stated to have three outlets in Mumbai and Jalandhar and also sells its products through ecommerce platforms.
- HM Mega Brands claims to have applied for registration of the trade mark “HM Mega Brands”.
Grounds of Legal Notice by H&M
- Use of acronym ‘HM’ amounts to infringement of the registered trademark H&M and the Indian retailer’s logo (in red colour) is deceptively similar to its own hence likely to cause confusion in the minds of the purchasing public.
Defense Grounds being taken by HM Mega Brands
HM Mega Brands has filed a Caveat Petition in the Hon’ble High Court of Judicature at Bombay urging it to direct H&M to give them notice of seven days before initiating any suit against it, and inter alia, stated the following:
HM Mega Brands has filed a Caveat Petition in the Hon’ble High Court of Judicature at Bombay urging it to direct H&M to give them notice of seven days before initiating any suit against it, and inter alia, stated the following:
- The Company ‘HM Mega Brands’ has been named after the initials of the names of its founders – Hashim Merchant and Hamza Merchant.
- The Company has been using the trademark since its incorporation in 2012, and also claims to have applied for registration of the same.
- Its trade mark is entirely different and distinct from that of the Swedish company. While both companies use red colour for their logos, the Swedish company uses an ampersand (&) to separate the two letters and it is “unnecessarily asserting monopoly over the colour”.
- H&M is thus issuing unjustifiable and groundless threats within the meaning of Section 142 of the Trademarks Act, 1999.
*The rectification against Registration no. 1393619 for the trade mark 
has been filed by HM MEGABRANDS PRIVATE LIMITED.
Analysis and Concluding Remarks
This is not the first time that a dispute has arisen regarding infringement of a trade mark by use of an acronym. In the case of Mahindra & Mahindra Ltd & Anr. Vs. MNM Marketing Pvt. Ltd. & Anr., the Supreme Court of India has answered this question in the affirmative and held that use of acronym can lead to infringement, and interim injunction was granted by the Court restraining the Defendants from using the mark M&M and MNM
has been filed by HM MEGABRANDS PRIVATE LIMITED.Analysis and Concluding Remarks
This is not the first time that a dispute has arisen regarding infringement of a trade mark by use of an acronym. In the case of Mahindra & Mahindra Ltd & Anr. Vs. MNM Marketing Pvt. Ltd. & Anr., the Supreme Court of India has answered this question in the affirmative and held that use of acronym can lead to infringement, and interim injunction was granted by the Court restraining the Defendants from using the mark M&M and MNM
With respect to claiming monopoly over colour, Section 2 (zb) of the Trade Marks Act, 1999 includes “combination of colours” in the definition of a trademark, therefore the contention that H&M cannot claim monopoly over the red colour of its logo is debatable. Moreover, H&M has filed an application for registration of its logo in black and white colour
,
and as per Section 10 of the Trade Marks Act, 1999, a trade mark
registered without limitation of colour shall be deemed to be registered
for all colours. With regard to whether or not there can be a likelihood of confusion in the instant circumstances, it is pertinent to note that H&M has recently opened its outlet in India and is stated to be the second largest fashion retailer after Zara. As H&M has entered the Indian market recently whereas HM Mega Brands claims use of its trademark ‘HM’ since 2012, the Swedish company may have to prove transborder reputation to succeed. However, whether or not H&M and HM Mega Brands take their dispute to Court, and whether H&M is able to establish a case of infringement and passing off for itself are yet to be seen.
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