INTRODUCTION: On 22nd June 2021, in what may be termed as a glorious moment of victory on the front of enforcement and guarding of Indian trademark laws and rights, a Canadian court passed a judgment in favor of Kaira District Co-Operative Milk Producers’ Union Limited, India (Amul). The opposite party went by the name of ‘Amul Canada’ and was seen as grossly violating the trademark rights of Kaira District Co-Operative Milk Producers’ Union Limited (hereinafter, Kaira). As we may be aware, Amul is an Indian dairy yields production-giant.
In the landmark case that it was, the Bench comprised of a single Judge – Alan Diner, J. He outlined the following,
“The Defendants’ conduct had exceeded the usual case of confusion caused by slight alterations of the mark, similar description of copyrighted material, or modification of a design, rather, they were using, without any color of right, an exact duplicate of the Plaintiffs’ mark, and an exact copy of their copyrighted material.”
CASE DETAILS: India witnessed the start of Kaira in 1946, around a year before independence and their market was strictly about milk and milk products under the brand name “Amul.” Over the years, Amul has now come up to be a well-known trademark in India and is often associated with the best quality in its category of production. Amul’s trademarked goods had been sold in Canada no doubt, in fact, it has now been around 10 years of the same. If we look at the specifics, Kaira is the owner of the trademark “Amul” in Canada since 2014. Even the design that was registered in Canada included the phrase “Amul – The Taste of India” and “Amul Pasteurized Butter – Utterly, Butterly, Delicious”. Even the aspect of copyright in these designs was owned by Kaira in Canada.
The goods that were sold were also identical to those sold rightfully by Amul India in our country. Further, the defendants claimed to be representing the plaintiffs in Canada, and they went so far as to have copied data and information from Amul India’s official website to their own business platforms, clearly intending to make unauthorized use of the plaintiff’s reputation. The deceit and fraud being committed were very apparent. The defendants surprisingly had employees assisting them, and all these activities were carried out without any license or knowledge of the plaintiffs. Not only trademarks, but we may safely assume that copyright was also infringed upon by the defendants in this case.
ABOUT THE JUDGEMENT: The Court came down heavily upon the defendants, condemning them for their evasive conduct before and throughout the proceedings of the case. As it was reported, the defendants had failed to respond to several notices from the plaintiffs and were even irregular with court appearances despite the seriousness of the allegations made against them.
Canadian law has a codified statutory provision that very specifically talks about ‘passing off’ in their trademark legislation. It is Section 7 (b) of the Trademarks Act, RSC 1985, c T-13 [Trademarks Act] and underlines a threefold elemental structure that establishes the act of ‘passing-off; they are-
- the existence of goodwill
- misrepresentation leading to public deception
- potential, or real damages caused to the plaintiff (owner of trademark rights)
The case of Ciba-Geigy Canada Ltd v Apotex Inc. [1992 SCC OnLine Can SC 85] was highlighted in this regard. Reiterating that the defendant had indeed engaged in wrongful conduct by running their business without the license that would be required to run it that way, the Bench recognized the potential damage to the plaintiff’s reputation and goodwill amongst its customer base via the guise of ‘Amul Canada’ which was in no way associated with the well-known brand of that name. It further noted that:
“Not only has the Amul brand existed for well over 50 years and is advertised globally through online and other channels – and thus acquired distinctiveness over time – and the volumes of milk and cheese distribution illustrate that Amul products have a reputation within at least a certain segment of consumers of its dairy products in Canada.”
As stated earlier, the defendants had also blatantly copied data and literature from the plaintiff’s website, projecting the latter’s genuine growth, accomplishments, and quality assurances. The usage was not just similar but in fact the exact same. Section 27 of Canada’s Copyright Law was also seen as violated.
FINAL VERDICT: The Bench recognized the defendant’s wrongful attempts to misguide Canadian consumers of the plaintiff’s products. Hence, a permanent enjoining was issued to the Defendants so that they may not infringe any IP rights of the plaintiffs anymore. The Defendants were directed to pass on to the plaintiff, the details of handling any and every account on the internet that advertised the former’s business. This would include domain names, pages, and social media accounts that in any way held or were marked with the plaintiff’s trademark or design but were so far being operated by the defendant. All customer data that was obtained through these business pages were to also be provided to the plaintiffs for further contact and processing of information. Lastly, damages were awarded to the plaintiffs in form of a total amount of thirty-two thousand seven hundred thirty-three Canadian dollars the overall acts of the defendants being in direct contravention of the Trademark and Copyright laws of Canada/copyright registration lawyers, as well as the lump-sum litigation costs; which of course has to be paid by the defendants.