Delhi High Court: In a suit filed for seeking permanent injunction restraining the defendants from dealing in any product the mark ‘AMUL’ or any other mark, which was identical/deceptively similar to the plaintiff’s registered trade mark ‘AMUL’, Mini Pushkarna, J., stated that the defendants’ adoption of the infringing mark, could not be considered as bonafide or honest. The defendants knowingly infringed the plaintiffs’ trade mark and cannot plead ignorance of prior existence, as well as the reputation of the plaintiffs’ ‘AMUL’ trade mark. The defendants had no plausible justification for adopting the plaintiffs’ trade mark, other than to ride upon the plaintiffs’ immense reputation and goodwill.
Thus, the Court restrained the defendants, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in products and/or providing services that bear/use the name or mark or logo ‘AMUL’ or any other mark/name which was identical/deceptively similar to the plaintiffs’ well-known trade mark ‘AMUL’ resulting in infringement/ passing off of plaintiffs’ well-known trade mark ‘AMUL’.
Background
Plaintiff 1 was a Cooperative Society, originally registered under the Bombay Cooperative Societies Act, 1925. Plaintiff 2 was also a Cooperative Society, originally registered under Gujarat Cooperative Societies Act, 1961. Plaintiff 1 permitted Plaintiff 2, under a License Agreement dated 15-01-2001, to market products with the trade mark ‘AMUL’ and its various variants. Under the agreement, Plaintiff 2 was marketing the products of Plaintiff 1 throughout the country, including areas falling within the territorial jurisdiction of this Court.
The word ‘AMUL’, irrespective of the goods it is applied upon, was the sole repository and identifier of the plaintiffs and its members. The word ‘AMUL’ symbolized a movement among Indian rural community towards prosperity and the Indian public perceives the word ‘AMUL’ having association or connection with the plaintiffs alone and no other. The trade mark ‘AMUL’ was recognized as a well-known trade mark. The trade mark ‘AMUL’ was also listed in the List of Well-Known Marks, as maintained by the Registrar of Trade Marks.
The plaintiffs stated that the defendants had knowingly infringed the plaintiffs’ well known and household trade mark ‘AMUL’ and the defendants’ could not plead ignorance of prior existence as well as the reputation of the plaintiffs’ ‘AMUL’ trade mark. The plaintiff’s filed the present suit on the ground that the defendants were found to be advertising and offering to sell/selling the impugned products under the mark ‘AMUL’. Defendant 1 was found to be engaged in the business of dealing in pharmaceutical tablets, i.e., Pharmaceutical Preparation, which was seemingly used as an antipsychotic medication under the mark ‘AMUL’, being sold on various E-commerce websites such as www.1mg.com, www.company.pharmahopers.com, www.indiamart.com.
Thus, the plaintiffs’ served a legal notice upon the defendants, calling upon them to cease and desist from using the plaintiffs’ well-known mark ‘AMUL’. However, the defendants stated that they had conceived and invented the trade mark ‘AMUL’ in the year 2013. The defendants also filed a trade mark application eight days after receiving the legal notice, claiming to be using the said mark ‘AMUL’ for its pharmaceutical products since the year 2013. Thus, the present suit was filed.
Analysis, Law, and Decision
The Court noted that vide order dated 09-12-2022, the defendants were restrained from dealing in goods and services using the name/mark/logo ‘AMUL’ or any other mark name/mark/logo, which was deceptively similar, to the registered trade mark of the plaintiffs. Further, the Court noted that no plausible justification or explanation was provided by the defendants as to why the trade mark ‘AMUL’ was adopted. No written statement was filed on behalf of the defendants. The conduct of the defendants highlighted their mala fide and dishonesty in adopting the same mark, as that of the plaintiffs’.
Thus, the Court stated that it was clear that the defendants had infringed the plaintiffs’ registered trade mark, which, had been recognised as a well-known trade mark. The defendants were not entitled to use the mark ‘AMUL’ or any other mark, which was deceptively similar to the plaintiff’s trade mark. The Court stated that an ordinary consumer, having average intelligence and without minute examination on the background of the defendants, was likely to be confused that the defendants had some association or connection with the plaintiffs. Thus, use of the mark ‘AMUL’ by the defendants gave an unfair advantage to the defendants and was detrimental to the distinctive character or repute of the plaintiff’s well-known registered trade mark.
The Court stated that the defendants’ adoption of the infringing mark, could not be considered as bonafide or honest. The defendants knowingly infringed the plaintiffs’ trade mark and cannot plead ignorance of prior existence, as well as the reputation of the plaintiffs’ ‘AMUL’ trade mark. The defendants had no plausible justification for adopting the plaintiffs’ trade mark, other than to ride upon the plaintiffs’ immense reputation and goodwill.
The Court stated that the fact that the defendants were using the mark in question since the year 2013 and continued the use, till the year 2022, was also a material factor. Considering the ensuing facts and circumstances of the present case, and considering the goods confiscated by the Local Commissioner, the Court held that the plaintiffs were entitled to costs and damages.
Thus, the Court restrained the defendants, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in products and/or providing services that bear/use the name or mark or logo ‘AMUL’ or any other mark/name which is identical/deceptively similar to the plaintiffs’ well-known trade mark ‘AMUL’ resulting in infringement/ passing off of plaintiffs’ well-known trade mark ‘AMUL’.
The Court stated that infringing goods/material, including the package material/labels/etc. which were confiscated by the Local Commissioner and returned on Superdari to the defendants, should be destroyed by the defendants, in the presence of the representative of the plaintiffs. Further, the plaintiffs were entitled to costs of Rs. 4,00,000 and damages of ₹ 1,00,000, totalling to ₹ 5,00,000, which should be paid by the defendants to the plaintiffs within a period of six months. In case the amount was not paid within the aforesaid period, the same should carry an interest at the rate of 9% per annum.
[Kaira District Cooperative Milk Producers Union Ltd. v. Bio Logic and Psychotropics India (P) Ltd, 2024 SCC OnLine Del 6427, decided on 10-09-2024]
Advocates who appeared in this case :
For the Plaintiffs: Vishal Nagpal, Suhrita Majumdar, Advocates;
For the Defendants: Pran Krishna Jana and Anjali Kumari, Advocates.
