AMUL – ‘Not only the taste of India’ but also of Canada

AMUL – ‘Not only the taste of India’ but also of Canada

A few days ago, the trademark case of “AMUL” before the Federal Court of Canada had proved that AMUL – is not only “the taste of India” but has also become a popular dairy brand in 20 countries including Canada. After winning the case before the Federal Court of Canada, in various articles, it is also being claimed that the “AMUL” trademark became the first of its brand to have won any case in a foreign country. This is the reason that for the last few days “AMUL” trademark and brand has been very popular among IP professionals and students. To tell the whole incident in a concise and accurate form, I will take the help of this article and in the end, I assure you that you will be aware of this whole incident.

Brief facts of the Case

The Plaintiffs, Kaira District Co-operative Milk Producers’ Union Limited (“Kaira”) is the world’s largest vegetarian cheese brand and the world’s largest pouched milk brand. Its trademark “AMUL” is India’s largest food brand and a “well-known trademark” in India. The plaintiff is involved in the manufacturing and packaging of edible products such as ghee, cheese, butter, ice creams, yogurts, beverages, milk, cream, milk powder, condensed milk, buttermilk, as well as coffee, spreads, chocolates, candies, desserts, and breads. The goods provided by the Kaira have the AMUL mark prominently displayed and are marketed around 20 countries around the world.

The plaintiff alleged that defendant namely AMUL Canada, Mr Mohit Rana, Mr Akash Ghosh, Mr. Chandu Das, and Mr. Patel had providing goods with the trademark “AMUL” and trade names “AMUL Canada”. The plaintiff had claimed that the defendant has blatantly copied the trade mark and copyrights subsist in “AMUL” by advertising, marketing, using, and selling identical goods through LinkedIn. They were also claiming to be the proprietor of the mark AMUL- Canada by stating on their LinkedIn page that- “…Of all its products, Amul butter is looking for expansion in Canada now”.

The plaintiff had made numerous attempts to serve substitutional services but has failed to get any responses from the defendant. The defendant has no presence at the address listed in their LinkedIn pages advertising “Amul Canada”. As a result, the plaintiff brings the ex parte Motion for Default Judgment, before the Federal Court of Canada.

History of the “AMUL” trademark

The Mark “AMUL” has been coined in the year 1955 from the first letters of plaintiff Kaira’s earlier name Anand Milk Union Limited. It has been said that it was originated from the Sanskrit word “Amulya” meaning priceless and precious. Since its incorporation, the mark has been extensively used and advertised by Plaintiff. As a result, it has become a well-known mark in India. The plaintiff has also registered more than 150 trademarks in India bearing the word “AMUL”.

To grow his business in other countries, the plaintiff has also started his business in Canada from the year 2010. They have also registered the mark “AMUL” in Canada on 7th May 2014, bearing application number TMA877339. Further, they have also registered the trademark design over the expression “AMUL- The Taste of India” which has been in used since 2010. Through the continuous and extensive use of the mark, it has gained the status of well-known mark in Canada, India, and throughout the world.

Analysis by the Federal Court

The court has found that the plaintiff has made continuous and adequate effort to contact the defendant but have not responded to any communication. In this way the court is of the opinion that Plaintiffs have satisfied the requirements to bring this Motion for Default Judgment. Further, with regard to the ex parte Motion for Default Judgment, the court is of the opinion that based on the facts and circumstances of the case, Defendants have failed to file a Statement of Defense and thus meet the first ground of the requirement for Default Judgment. Secondly, with regard to the cause of action, the court has made the following observation:

1.Passing Off under section 7(b) of the Trademarks Act

The court has found that requirement of passing off i.e. the existence of goodwill, causing deception to the public and damages has been met in this case and it is clearly a case of passing off. The court has found that Plaintiffs have clearly developed goodwill in their brand, design, and company names within at least a certain segment of consumers of its dairy products in Canada. Secondly, the defendant has adopted and used a mark or name that is likely to be confused with the plaintiff’s distinctive mark, name, or design in which the plaintiff owns goodwill or a secondary meaning. Finally, the court has found that there are clearly potential damages that could have related through the unauthorized guise of Amul Canada.

2.Sections 19 and 20 of the Trademarks Act

The court has found that defendant through their unauthorized advertising of the Amul company information and use of the Plaintiffs’ mark “AMUL” has infringed Section 19 and 20(1)(a) of the Trademarks Act that provides exclusive rights to the owner of the trademark.

3.Section 22 of the Trademarks Act

In this regard, the court has found that plaintiff have no evidence of the Defendants’ sales in association with the Plaintiffs’ trademark and thus they have not met the test for depreciation under section 22. The court has made clear that goodwill assessment for depreciation under section 22 is different from that for passing off under section 7(b).

4.Section 27 of the Copyright Act

The court has found that Defendants have reproduced the Plaintiffs’ copyrighted material (Amul design/mark and corporate information) without their consent and infringed the Plaintiffs’ rights to exclusive use of its copyright contrary to section 27 of the Copyright Act.

Judgment given by the Federal Court

Given the situation outlined above, the court has permanently prohibited defendant from infringing the trademark and copyright of the Plaintiffs. The court has also ordered the defendant to transfer ownership and all rights to their LinkedIn and social media accounts displaying their trademark or copyright. Further, the court has awarded the plaintiff the amount of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and lump sum amount of $17,733 for legal costs in bringing this case before the court of law.

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