The case of Kaira District Co-Operative Milk Producer’s Union Ltd. & Ors v. Amul Canada & Ors [Docket No. – T-987-20], marks Indian dairy giant Amul’s first trademark violation case outside India, wherein the Federal Court, Toronto, ruled in its favour.
In the present case, Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Co-operative Milk Marketing Federation Ltd. (hereafter, “the Plaintiffs”) had filed a statement of claim alleging breaches of trademark and copyright by Amul Canada and its employees (hereafter, “the Defendants”), wherein the Defendants had used the Plaintiffs’ brand name, image and information for advertising their own products on LinkedIn.
The Plaintiff is a renowned Indian brand, a common name in every Indian household and its main business is collection, manufacture, and distribution of milk and milk products. Gujarat Cooperative Milk Marketing federation markets and sells these products under the brand name Amul.
Amul is a cooperative brand and is managed by a cooperative body- the Gujarat Co-operative Milk Marketing Federation Ltd. Amul is a coined term and a well-known trademark of the Plaintiffs. Additionally, the Plaintiffs have a copyright over the designs associated with the trademark. With time, the Plaintiffs claimed to have made sales in Canada, which helped their trademark become well-known and unique in Canada, allowing people to recognize their brand and associate it with high-quality products. The Plaintiffs have built a reputation and earned goodwill on their brand in India and around the globe over the years.
On the other hand, the Defendants have a LinkedIn account in the name of ‘Amul Canada’ under which they sell, advertise, and market goods. The said ‘goods’ were found to be identical to that of the Plaintiff, along with an identical trade name and logo.
Through LinkedIn, the Plaintiffs attempted to compel the Defendants to stop advertising, marketing, offering for sale, selling, and delivering goods identical to the Plaintiffs’ goods in Canada under the trademarks and trade names ‘Amul’ and ‘Amul Canada Limited’.
The Defendants were not only using the Plaintiffs’ exact marks and designs, but they were also claiming to be the Plaintiffs by copying information from the Amul web pages about the Plaintiffs’ background and activities.
The Plaintiffs claimed that they never granted any sort of license to the Defendants or any of the individual Defendants, the permission to utilize the Plaintiffs’ trademarks or copyrights in any manner.
Despite several attempts to inform the Defendants about the claim, the Plaintiffs never received a response from the Defendants- electronically or otherwise. In the light of the aforementioned situation, the plaintiffs filed a motion for an ex-parte order.
ISSUES BEFORE THE FEDERAL COURT
1. Whether the Plaintiffs have satisfied all the conditions to bring the motion for default judgment?
2. Whether there is an infringement of trademark and copyright and the relief sought by Plaintiffs should be granted or not?
CONTENTIONS OF THE PARTIES
The Plaintiffs contended that the Defendants had engaged in evasive behaviour since the beginning of the issue. The Defendants were absent at their address and did not respond to any communication. Thus, the motion was rightly brought ex-parte against the Defendants.
The Plaintiffs further submitted that the Defendants also failed to file a statement of defence or any response to the plaint, hence, qualifying the first requirement of the default judgment.
The Plaintiff also stated that there are numerous Intellectual Property breaches which have been committed by the Defendant. Firstly, the Plaintiffs satisfy the elements for ‘passing off’ as has been statutorily codified under Section 7(b) of the Trademarks Act, RSC 1985 (hereinafter, “Trademarks Act”) that are: (i) Existence of goodwill; (ii) deception or confusion among the public and; (iii) actual or potential damages to the Plaintiff.
Additionally, the Plaintiffs have their Trademark registered, that in-turn gives them exclusive right to use the mark in Canada under Section 19 of the Trademarks Act. The Plaintiffs had alleged that the Defendants engaged in using the Plaintiffs information and branding to falsely advertise for their benefit i.e., clearly a violation of their exclusive Intellectual Property Rights.
The Plaintiffs further contended for violation of Section 22 of the Trademarks Act where the Defendants did not meet the test of depreciation. The Plaintiffs also relied on Section 27 of the Copyright Act, RSC 1985 (hereinafter, “Copyright Act”), and contended that the Plaintiffs have the sole right to produce and reproduce the copyrighted work.
The Plaintiffs alleged that the Defendants have reproduced the Plaintiff’s copyrighted material from the Plaintiff’s website without taking prior consent of the Plaintiff and hence, infringed the Plaintiff’s rights. It was also stated that the Defendant’s information page on LinkedIn has the same corporate information as that of the Plaintiffs.
Lastly, the Plaintiffs contended that the Defendants are in default of service and have failed to comply with any rules and rulings. Therefore, the Defendants qualify for default judgment under all circumstances.
DECISION AND FINDINGS
With respect to the first issue, the Federal Court, Toronto (hereinafter, “the Court”) observed that the Plaintiffs have tried to contact the Defendants several times. The Defendants didn’t respond to any communication and had no presence at the address listed in the LinkedIn Account.
Thus, the substitutional service order was passed and the Plaintiffs made numerous attempts to elicit a response. The Defendants didn’t even acknowledge or submit a reply to the written submissions.
Thus, the Court held that the Defendants have engaged in evasive conduct since the beginning of proceedings. Thus, all the conditions are satisfied and it was held that the Plaintiffs have every right to bring the motion for default judgment.
The Court further observed that the Defendants have infringed the Plaintiffs’ Intellectual Property Rights under Section 7(b), 19 & 20 of the Trademarks Act. and Section 27 of the Copyrights Act.
The Defendants were permanently barred from infringing on the Plaintiffs’ trademarks and copyright, as well as from drawing public attention to the Defendants’ goods or business in such a way as to cause or be likely to cause confusion between their goods and the Plaintiffs’ goods, or from using any of the Plaintiffs’ trademarks or copyright.
The Court also granted damages to the Plaintiff amounting to $32,733 for the infringement of trademark, copyright and cost of the litigation.
The judgment is a significant development in the protection and infringement of Intellectual Property Rights of Indian companies abroad. In the given case, an appreciable ratio has been laid down upholding the Intellectual Property Rights of the Plaintiffs under Section 7(b), 19 & 20 of the Trademarks Act and Section 27 of the Copyrights Act.
The Court discussed the concept of ‘passing off’ in detail while addressing the issues in the present case. The decision was also based on whether the case amounts to passing as a default judgment. This marks Amul’s, the prominent Indian brand’s, first trademark victory in an overseas legal conflict.
– Team AMLEGALS, assisted by Ms. Tanvi Jain and Ms. Urvi Khandewal (Interns)
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