1 October 2021
Indian dairy giant Amul successfully sued an entity using the name ‘Amul Canada’ for trademark and copyright infringement in the Federal Court of Canada.
Amul Dairy is a 74-year-old brand owned by the Kaira District Co-Operative Milk Producers’ Union Limited (‘Kaira’). The brand sources its produce from a huge collective of 3.2 million members. Kaira is the owner of the mark AMUL, along with the expression AMUL THE TASTE OF INDIA in various jurisdictions.
The mark AMUL was coined through the initials of Kaira’s erstwhile name ‘Anand Milk Union Limited’ and has been in use since 1955. The owners also cite the Sanskrit word ‘Amulya’ which means ‘priceless and precious’ as the inspiration behind the mark.
Since 2010, Amul products have been sold in Canada. The mark AMUL, and the tagline with its design, have been registered for selling milk products at the Canadian Intellectual Property Office (CIPO) since 2014.
Kaira alleged that an entity called ‘Amul Canada’ was marketing and selling dairy products in Canada using their marks through a LinkedIn page called ‘Amul Canada Limited’. Since no license to use or sell was provided by Kaira to the defendant, they sent a cease-desist notice but received no response.
Throughout the proceedings, no representation was ever made by ‘Amul Canada’, and no address was present on the LinkedIn page of the defendant. The court considered this to be evasive conduct and the suit proceeded ex-parte.
The court held that the defendant’s behaviour “exceeds the usual case of confusion caused by slight alterations of the mark, similar description of copyrighted material, or modification of a design. Rather, they are using, without any colour of right, a duplicate of Kaira’s mark, and an exact copy of its copyrighted material.”
Next, the court evaluated whether the case qualified for the action of passing off. The major elements involving the existence of goodwill, deception due to misrepresentation to consumers and actual damage to the brand owner were all present in the case. The court considered Kaira’s long-standing history of trade all over the world to establish goodwill. The element of misrepresentation could be proven due to the elusive conduct of the defendant which directed public attention to its online profile and caused confusion among the public. Even though the actual damage to the plaintiff could not be ascertained, this did not bar the consideration of the likelihood of damage or potential damage to the plaintiff.
The issues related to the establishment of copyright and trademark infringement could be substantiated by the mere fact that the defendant interfered with Kaira’s exclusive right over its intellectual property by displaying the marks on a LinkedIn page. The court held that the defendant falsely advertised the marks to generate the interest of consumers and other stakeholders in the company. The unauthorized use and display of the plaintiff’s exact logos and taglines amount to infringement.
Finally, the court awarded damages to the plaintiff in the amounts of $10,000 for trademark and $5,000 for copyright infringements and lump sum legal costs on a solicitor and client basis of $17,733.
The nonchalance towards using the intellectual property of a brand on social media can have serious repercussions. The key takeaway from this decision is that courts are not lenient towards obscure offenders who indulge in such activities since a misrepresentation can create larger issues for the brand owner in future.
Indian dairy giant Amul successfully sued an entity in the Federal Court of Canada for infringing on its trademark and copyrights. Manisha Singh and Simran Bhullar give an analysis of the judgment in this article.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
