Mahindra & Mahindra asserts rights over 'M&M' acronym

In Mahindra & Mahindra Limited v MNM Marketing Pvt Ltd (Notice of Motion No 2191/2012 in Suit No 2061/2012), the Bombay High Court, by way of an interim order dated July 31 2014, has restrained garment retailer MNM Marketing Pvt Ltd from using 'MNM' as a part of its corporate name, trademark and domain name.

Mahindra & Mahindra Ltd and its retail firm Mahindra Retail Pvt Ltd jointly filed suit against MNM Marketing alleging, among other things, infringement of its registered trademark M&M and passing off. MNM Marketing had set up a shopping mall under the name MNM.

Mahindra contended as follows:

• It was the registered owner of the marks MAHINDRA, MAHINDRA & MAHINDRA and M&M in various classes of goods and services. The first registration for the mark M&M dated back to 1998 and the registrations in Classes 35 and 42 dated back to 2006.
• The mark MAHINDRA & MAHINDRA is also listed as a well-known mark on the Indian Trademarks Registry's website.
• It had incurred huge expenses in sales promotion and advertisements in relation to retail services. It had more than 75 stores across India and its sales turnover ran into tens of millions of rupees.
• 'M&M' is the natural abbreviation of 'Mahindra & Mahindra'.
• The popularity, goodwill and reputation of the marks MAHINDRA and MAHINDRA & MAHINDRA have become so significant among members of the trade and the public that such popularity, goodwill and reputation have been transferred to, and are associated with, the acronym 'M&M' in any field of business.
• The mark M&M is used by Mahindra in the course of all its business activities, and Mahindra has been known as M&M among members of the trade and the public, as well as in the press and other media,  since 1969.
• The use of the mark M&M/MNM by MNM Marketing constituted infringement of its registered trademark M&M, and MNM Marketing was passing off its retail business as that of Mahindra.
• MNM Marketing had registered its mark in several other classes, but not in Classes 35 (retail trade services) and 42, and its use of the mark started after the registration and use by Mahindra of the mark M&M.
• MNM Marketing used the trademark at issue as part of its company name (MNM Marketing Private Limited) and of the domain name 'www.mandmstores.in' in bad faith.

MNM Marketing contended as follows:

• It started as Manhar & Manhar in 1985 and was incorporated as MNM Marketing Private Ltd in 2004.
• Mahindra was not entitled to relief based on latches and acquiescence in the filing of the present suit.
• It has been the registered proprietor of the mark M&M/MNM since 2002 in Classes 3, 14, 16, 18, 24 and 25, and this registration was a defence against Mahindra’s claim of infringement.
• It has used the mark M&M/MNM since 2002. It was a honest concurrent user of the mark.
• Mahindra’s registration in Class 35 was in respect of advertising, business management, business administration and office functions, and did not cover "retail services". It had only covered "retail services" in subsequent trademark applications filed in 2012 and 2013. Therefore, Mahindra’s 2006 registration was not sufficient.
• Mahindra had no presence in shopping malls, there was no commonality in the parties' fields of activities and there was a vast difference between the nature of the services offered by the parties.
• Mahindra had failed to establish that MNM Marketing was being dishonest and taking unfair advantage.
• The balance of convenience was in MNM Marketing's favour.

In its rebuttal arguments, Mahindra alleged as follows:

• MNM Marketing did not have any statutory right in the mark M&M/MNM for services in Classes 35 and 42, the subject matter of this case. 
• The mark M&M-LOOK NO FURTHER, in which the words 'Look no Further' have been disclaimed, could not be considered distinctive, as the mark was essentially 'M&M'.
• MNM Marketing was not able to establish a valid defence under Section 34 of the Trademarks Act 1999 - namely, use of its mark was not (i) prior to the use of M&M by Mahindra or (ii) prior to the date of registration of Mahindra's mark.   
• MNM Marketing had prior knowledge of Mahindra’s M&M mark and, therefore, could not claim to be a honest concurrent user.
• Its delay, if any, in approaching the court did not affect the grant of an interim injunction, particularly as the marks involved were structurally, visually and phonetically similar.
• Considering the fact that Mahindra’s mark is well known, any subsequent use, however big or small, could not be a valid defence.
• Its application covered the class heading of Class 35, which includes "services in relation to retail trade" as per the explanatory note of the Nice Classification. 
• It was settled law that a trademark registration is no defence to an action for passing off.

After considering the submissions and evidence of both parties, the High Court held that MNM Marketing was guilty of trademark infringement and passing off.

Daleep Kumar, RNA Intellectual Property Attorneys, Gurgaon