The success story of the well-known brand AMUL is a part and parcel of the Indian culture and psyche

The success story of the well-known brand AMUL is a part and parcel of the Indian culture and psyche. In fact, the trade mark AMUL is so popular, that it has transcended its association with dairy products, and has become incontrovertibly associated with Kaira, regardless of the goods or services that it is used in relation to. AMUL’s claim to monarchy in the minds of consumers was further strengthened, when the Intellectual Property Appellate Board (now defunct) accorded it the status of a well-known trade mark.

Kaira has consistently taken steps to strengthen its position, in relation to the brand recognition for AMUL, by initiating appropriate legal action and obtaining favourable orders against illegal adoption and use of identical / similar marks, in several contentious trade mark matters across the world.

Very recently Kaira was successful in obtaining a successful order from the Federal Court, Canada. In this case, around January 2020, Kaira came across the Defendants, who had not only blatantly copied the trade mark AMUL   but   also   the   label   , amounting to trade mark and copyright infringement and passing off. Before moving the Court, a cease-and-desist notice was served on the Defendants, however, there was no response from them. Subsequently, Kaira decided to move the Court against the Defendants, being Amul Canada, Mohit Rana, Akash Ghosh, Chandu Das, and one Patel. Despite several attempts of service of the suit on the defendants, the defendants never responded. Consequently, the Plaintiffs brought an ex parte Motion for Default Judgment

The Motion for Default Judgment raises two issues, i.e., 1) whether the Plaintiffs have properly brought this Motion – The Federal Court analyzed that the defendants by failing to respond any of the communications prior to the initiation of the suit and later, have led the Plaintiffs to bring this Motion for Default Judgment, and 2) whether the Plaintiffs have proved that a Default Judgment should be issued and relief sought should be granted- The Federal Court held that under a Motion for Default Judgment, Plaintiffs must establish i) that the defendants are in default of filing statement of defense, ii) and that defendants are liable for cause of action. In the instant case, the Federal Court held that under i) defendants have failed to file Statement of Defense and as per ii) court found that Defendants’ have been using exact duplicate mark and an exact copyrighted material as that of Plaintiffs.

The Court held ¹that the Plaintiffs have clearly satisfied all the three elements for establishing passing off test being: i) existence of goodwill, ii)deception of public due to misrepresentation, and iii) actual or potential damages to the Plaintiff. The Court held that unauthorized advertising of AMUL company information and use of Plaintiffs’ marks on Defendants’ site, is sufficient to fall under the provisions of infringement. The Federal Court held that, the Defendants have infringed the copyright of the In view of non- compliance by the Defendants at all stages, the Federal Court held that the Motion for default judgment has been rightly initiated by Plaintiffs.

Owing to the aforesaid, the Defendants as well all others over whom any of the Defendants exercise control, are permanently restrained from infringing the trademark and copyright of the Plaintiffs, i.e., AMUL and , and that the defendants shall transfer to the Plaintiffs or their counsel within 30 days of the date of this Judgment, ownership and all rights, access, administration and control over LinkedIn pages/accounts, domain names and social media pages. The Defendants shall provide a listing and contact information for all entities who contacted the Defendants through the disputed LinkedIn page. Finally, the Plaintiffs have been awarded damages of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and awarded costs of $17,733, payable by the Defendants.

All this was possible only because we were able to rely on prior use and trade mark registration in Canada.

Such decisions speak for themselves. With this, we hope such orders would deter counterfeiters, infringers, globally, before appropriating someone else’s IPR which has been built with a lot of effort and eventually becomes an identifier for the company or even a nation. India and Indians, proudly associate themselves with AMUL, one of the most popular household brands. This case was recently reported by Times of India².

While trade mark practitioners in several parts of the world could review the order for research, we really hope that authorities in the first to file countries revisit the current policies and regulations to make way for the rightful owner and in the process are able to eliminate the bad guys!

We are glad that Canada recognized our very own, The Taste of India!

The order can be seen here: 

  Order 1

  Order 2

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