CASE BRIEF
| CASE NAME | Kaira District Cooperative Milk Producers Union Ltd. v. Bio Logic and Psychotropics India (P) Ltd |
| CITATION | 2024 SCC OnLine Del 6427 |
| COURT | Delhi High Court |
| PETITIONER | Kaira District Cooperative Milk Producers Union Ltd |
| RESPONDENTS | Bio Logic and Psychotropics India (P) Ltd |
| DECIDED ON | 10 September, 2024 |
INTRODUCTION
The present case raises important issues of trademark infringement, including the use of famous marks in the marketplace. The plaintiffs sought a permanent injunction against defendants for applying the trademark “AMUL,” which the plaintiffs asserted was identical to, and deceptively similar to, their registered trademark. The case illustrates the multi-faceted aspect of the protection of intellectual property rights in general and for the plaintiffs, an established trader with significant goodwill in consumer minds.
This case deals with the protection of well-known trademarks and the rights of businesses to prevent unauthorized use of their marks. The plaintiffs, owners of the famous “AMUL” trademark, sought a permanent injunction against the defendants for using a deceptively similar mark in the pharmaceutical sector. The case highlights the importance of safeguarding brand identity and goodwill, particularly for established marks recognized by consumers across India. It also underscores the courts’ role in ensuring consumer protection and preventing confusion in the marketplace. Overall, the judgment reinforces the legal remedies available to owners of famous trademarks against infringement.
FACTS OF THE CASE
1. Parties Involved
- Plaintiffs:
- Kaira District Cooperative Milk Producers Union Ltd- A cooperative society formed under the Bombay Cooperative Societies Act and has developed the “AMUL” brand as a brand equivalent to quality dairy products in India.
- Second Plaintiff: Another cooperative society registered under the Gujarat Cooperative Societies Act, which works with the claimant to market products under the name “AMUL”.
- Defendants:
- Bio Logic and Psychotropics India Private Ltd- A manufacturer and seller of pharmaceutical products who allegedly incorporated the plaintiffs’ trademark in marketing products under the same name “AMUL.”
2. Trademark and Licensing Agreement
- The plaintiffs have registered the trademark “AMUL”. They have established that this is a well-known mark in India associated with quality and community development in the dairy industry over decades and constitutes part of the mark’s essential trademark effectiveness as the clear source identifier for the plaintiffs’ products.
- The plaintiffs entered into a License Agreement on January 15, 2001 which allowed the second plaintiff to sell products under the “AMUL” trademark throughout India. The License Agreement is an important source of the plaintiffs’ trademark rights.
3. Allegations of Infringement
- The plaintiffs allege that the defendants have knowingly infringed the plaintiffs’ trademark through the advertisement and sale of their pharmaceutical products using the “AMUL” mark, it was established at present that the defendants participated in the advertising of these products on a multiplicity of e-commerce platforms, creating a risk of public confusion.
- After the plaintiffs became aware of the defendants’ unauthorized activities, they sent a cease-and-desist letter to the defendants dated July 13, 2022, an effort to stop the use of the “AMUL” mark. The defendants contended they adopted the design of the trademark in 2013 and applied for their trademark application.
4. Investigation by a Local Commissioner
- The Court designated a Local Commissioner to enable an inspection of the defendants’ premises. The inspection demonstrated the defendants’ manufacture and sale of infringing goods under the “AMUL” designation, dating back to 2016.
- The Local Commissioner’s report noted that there were invoices and purchase orders indicating that the defendants had been using the “AMUL” designation for some time, contradicting the defendants’ assertions that they were unaware of the plaintiffs’ rights in the designation.
5. Legal Action
- The plaintiffs pursued an order for a permanent injunction prohibiting the defendants from utilizing the “AMUL” trademark and requested the removal of the defendants’ trademark application.
- The defendants, throughout their hearings, had failed to provide their written defense, and furthermore, had made an indication of their willingness to move forward with a decree for an injunction.
ISSUES
- Trademark Infringement: Do the defendants use and/or have a mark that infringes upon the plaintiffs’ registered trademark AMUL and is it deceptively similar?
- Well-Known Trademark: Is AMUL a known trademark and is this consideration an additional aspect of the plaintiffs’ rights under trademark law?
- Confusion: Is there a likelihood of confusion to consumers as a result of the defendants’ designation of “AMUL”?
- Costs and Damages: What appropriate costs and damages to award the plaintiffs as a result of the defendant’s infringement?
CONTENTIONS
PLAINTIFFS’ CONTENTIONS
- Trademark Infringement: The plaintiffs claim that the defendants’ use of “AMUL” is blatant trademark infringement because “AMUL” is a well-known mark, and use of “AMUL” will lead confusion by consumers as to the source of the goods.
- Well-Known Mark: The plaintiffs contended that “AMUL” is a well-known mark that has been established with the Registrar of Trademarks, providing them with greater protection and sole rights, regardless of its use.
- Chance of Confusion: The plaintiffs indicate that an average consumer would likely be confused into thinking that the defendants’ goods were consumable with the plaintiffs given the marks the same.
- Judicial Decisions: The plaintiffs cite several previous decisions from other courts that encouraged this type of protection of well-known trademarks that would discourage dilution and misuse by others.
- Costs and Damages: The plaintiffs claim costs and damages for legal and court fees along with expenses incurred in enforcing their trademark rights, all of which they say seem reasonable based upon other findings in this case.
DEFENDANTS’ CONTENTIONS
- Denial of Infringement: The Defendants assert that their use of “AMUL” was developed independently, and they did not know about the plaintiffs’ trademark when they began comparable use.
- Trademark Application: The Defendants are claiming that they made a good faith attempt to apply for a trademark and lay claim to having trademark use based on alleged prior use.
- No Confusion: The Defendants argue that there cannot be confusion because their products are in a different market (pharma) than the plaintiffs’ dairy products.
- Financial Struggles: Defendants assert that they are struggling financially and ask that any damages awarded be nominal given that they are no longer using the infringing mark.
JUDGMENT
- Court Ordered Permanent Injunction: The court sustained the plaintiffs’ side by granting permanent injunction against the defendants from using the “AMUL” mark or any deceptively similar mark as the plaintiffs rights to a famous trademark were noted, and consumer confusion was likely to take place.
- The court ordered that all infringing products, along with any labels or packaging that used the infringing mark be destroyed in the presence of the plaintiffs’ representatives, and evidently remove all trace elements of the infringing mark from the marketplace.
- The court awarded plaintiffs costs of ₹4,00,000 and an additional award of ₹1,00,000, totaling ₹5,00,000; defendants were ordered to pay the sums within 6 months of the order, with interest due at 9% per annum should payments be late.
- It was noted in the judgment that defendants failed to provide a plausible explanation for using the “AMUL” mark; the absence of a written statement as a means to assert their position was also noted, despite they were admitted infertibly to being dishonest to the court.
- The court affirmed the status “AMUL” conferred is a well-known trademark, and emphasized that the need for protecting famous marks is above concern, in order to protect the value dilution appropriately to the product mark or trademark.
CONCLUSION
The ruling signifies an unprecedented and significant change in trademark law in India. The decision illustrates the importance for famous trademarks to be protected, and the legal protections for the strength of brands and consumer confidence.
This case illustrates the seriousness of businesses taking unfair advantage of trademarks in real and considerable risk for trademarks that have substantial value of goodwill and respect. This ruling, therefore, protects the trademark being confirmed by the plaintiffs, but sends a message to businesses engaged, or potentially engaged, in infringement by unauthorized use of famous trademarks with knowledge that there is legal remedy.
Further, the damages and costs awarded to the plaintiffs, recognized the expense incurred in the plaintiffs having to defend the case filed, but also to send a message regarding deterring further infringement. This ruling has also contributed meaningfully to the discussion of trademark law in India, particularly regarding the rights of cooperatives and the integrity of their goodwill and reputation.
In general, the ruling illustrates the interplay of intellectual property law with business practice, and that businesses are required to act within the law, and must also ensure that they provide constant support of their trademarks throughout their business practices to ensure they remain trademark protected status. As the trade continues to develop, the principles enshrined in this case will likely be called on in part in other disputes arising from a claim of trademark infringement and as discussed above is another illustration of the degree to which ethical practices must be maintained throughout trading in competitive industries.
‘This article has been written by Tamanna Jain from University Five Year Law College, University of Rajasthan.’
