The Calcutta High Court, in the case of Kaira District Cooperative Milk Producers Union Ltd. v. Maa Tara Trading Co., C.S./107/2020, decided on 01.09.2022, held that “AMUL”, being recognized as a well-known trademark deserves a broader scope of protection against unauthorized use, even with regards to non-competing goods or services.
Kaira District Cooperative Milk Producers Union Ltd. (hereinafter referred to as “Plaintiff”) acquired the registration of the trademark “AMUL” in the year 1958. The Plaintiff’s trademark registration has been renewed regularly, and its validity is still in effect.
“AMUL” is a well-known name in every Indian household and has gained popularity around the world. The trademark “AMUL”, regardless of the items to which it is applied, is a unique repository and identification of the Plaintiff and its members. It represents a dynamic shift toward affluence among Indian rural communities, and it is a well-established fact that the consumers associate any product bearing the mark of “AMUL” with only the products of the Plaintiff.
On February 2020, the Plaintiff found out that candles bearing the trademark “AMUL” are being given away for free with the purchase of a cake at a well-known cake store in Kolkata. The Plaintiff received samples from the aforementioned cake shops and discovered that Maa Tara Trading Co. (hereinafter referred to as “Defendant”) had not only misappropriated the Plaintiff’s well-known trademark but had also adopted a similar style of writing as that of the Plaintiff’s registered trademark.
It came to the notice of the Plaintiff that the Defendant is marketing candles by using the word ‘Amul’, which was similar to the registered trademark of the Plaintiff.
Thus, being aggrieved by the foregoing the Plaintiff has preferred an appeal before the Hon’ble High Court of Calcutta (hereinafter referred to as the “High Court”).
ISSUES BEFORE THE SUPREME COURT
Whether the trademark of the Plaintiff has been infringed upon by the Defendant?
The Plaintiff submitted that their registered trademark is a well-known trademark that was being deceptively used by the Defendant. The Plaintiff further contended that the Defendant is marketing the candles by using the word ‘Amul’ and thus, is seeking to pass off their products as that of the Plaintiff. The Plaintiff asserted that such actions of the Defendant has been affecting the goodwill and brand reputation of the Plaintiff to a great extent.
The Plaintiff submitted that the product being sold by the Defendant in the market is highly deceiving and was bound to create confusion in the minds of the customers.
DECISION AND FINDINGS
The High Court observed that on a comparative analysis of the marks, it was apparent that the Defendant had skillfully used the trademark “AMUL”‘ on their candle packaging. The High Court ruled that the Defendant had violated the Plaintiff’s registered trademark under sections 29(4)(a), 29(4)(b), and 29(4)(c) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”).
The High Court relied on the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1 wherein the Supreme Court had laid down the following parameters for checking deceptive similarity:
- 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.
- The degree of resembleness between the marks, is phonetically similar and hence similar in idea.
- The nature of the goods in respect of which they are used as trademarks.
- The similarity in the nature, character, and performance of the goods of the rival traders.
- 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 in purchasing and/or using the goods.
- The mode of purchasing the goods or placing orders for the goods.
- Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
The High Court held that the Defendant has tried to mislead the general public by using an identical mark, and thereby violated statutory rights as well as the common law rights of the Plaintiff and has not only infringed upon the trademark of the Plaintiff, but also indulged in the act of passing off.
There have been various judicial decisions wherein the use of a well-known trademark for a different class of goods or services has been examined due to the likelihood of customer confusion and dilution of a registered trademark.
The ‘trade connection’, which is a part of the Triple Test Parameter used to identify trademark infringement, is used to establish the possibility of confusion among the consumers when the items for which an identical or deceptively similar trademark is being used, are not associated with the class of goods for which the original trademark is registered.
However, it is important to remember that the absence of a commercial relationship between the different items for which the Plaintiff and Defendant are using the trademark, as can be seen in the present case, does not rule out the possibility of deception or confusion. It is further important to note that the action of passing-off does not necessarily require the parties to be in direct competition for the trademark owner to suffer harm as a result of the infringer’s use of the registered mark.
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