Written by: Adv. Megha Harshwal & Adv. Manoj Soni
The present suit has been filed for permanent and mandatory injunction, passing off, damages and rendition of accounts.
Learned counsel appearing for the plaintiffs submits that Plaintiff No.2 being the registered proprietor of ‘AMUL’ trademarks, has licensed to plaintiff no.1, vide the Trademark License Agreement dated 15th January 2001, the right to use the ‘AMUL’ trade marks for milk and milk products and other foods and beverages. Accordingly, Plaintiff No. 1 has been marketing various products including milk and milk products using the well-known trade mark ‘AMUL’ throughout the country and abroad.
The suit was primarily directed against the defendant Terre Primitive, a company incorporated under the laws of Italy engaged in the business of selling, marketing, promoting, and advertising its cookies and chocolate covered biscuits under the mark ‘Amuleti’. As per the information available on the website of Defendant No.1 at URL: https://www.terreprimitive.it, the said defendant is using impugned marks on its various products. None appeared for the Defendants.
Plaintiff’s Submission:
- That the Defendant No. l’s products bearing the impugned marks are being sold, advertised, marketed and promoted through the website of Defendant No.1 available at URL: https://www.terreprimitive.it and also through social media platforms Facebook and Instagram, which websites and online platforms are interactive websites and are accessible within the jurisdiction of this Court. In this manner, the Defendant No.1 is targeting and promoting its products to the consumers who reside within the jurisdiction of this Court.
- That Defendant No. 1 has adopted a similar font as that of the plaintiffs’ mark for its impugned marks. It is submitted that the blatant imitation and adoption of the plaintiffs’ mark by Defendant No. 1 cannot be ruled out as a mere coincidence. The plaintiffs have been using the trademark ‘AMUL’ for its products since the year 1958. That Defendant No.1’s website https://www.terreprimitive.it/ was created in January 2020. It is, thus, verily believed that the Defendant No. 1 has been using the said mark only since July, 2020.
- That Plaintiff No. 2 has applied for and obtained registration of the trademark ‘AMUL’ and its variants in several classes n India. The Plaintiff No.2 is the proprietor of several trademarks containing the word ‘AMUL’ registered/applied for registration under the Trade Marks Act, 1999. The trademark ‘AMUL’ has been always represented and used by the plaintiffs since the year 1955 in a stylized logo, specially designed by them and said logo has been registered under the Copyrights Act, 1957 under No. A- 2304/67. That Plaintiff No. l has also been recognized as Asia’s largest dairy.
- That plaintiffs being the prior user and having exclusively and extensively used the well-known trademark ‘AMUL’ and having gained immense popularity and unbridled reputation on account of the use of the said Trademarks, are also entitled to protection against ‘Passing Off’.
- That from the actions of Defendant No.1 it is unambiguously evident that Defendant No. 1 is passing off the plaintiffs’ trademarks and goods by misrepresenting to the consumers that their products marketed and sold under impugned marks, originate from the plaintiffs. The said actions are causing continuous injury and damage to the plaintiffs and the goodwill of its trademarks. For the said acts of misrepresentation of the source of origin of the products and the likely confusion among the consumers, the defendant no. 1 is liable for passing off.
- That any person visiting the website/domain of Defendant No. 1 https://www.terreprimitive.it/ will be misled to believe that the goods being sold by Defendant No. 1 under the impugned marks emanate from or are associated with the plaintiffs. The likelihood of consumers being confused/deceived by the use of impugned marks, by Defendant No. 1 is high, given the well-entrenched position of the plaintiffs’ mark ‘Amul’ in the milk and milk products market, including confectionary items such as chocolates.
- Further, the use of an identical and deceptively similar trademark by the Defendant No. 1 leads to dilution and tarnishing of the plaintiffs’ mark as the plaintiffs’ have no control over the quality of products offered by Defendant No. 1. It is, thus, incumbent upon this Court to pass necessary injunctive orders restraining the Defendant No. 1 from using the impugned marks or any other mark which is identical or deceptively similar to the plaintiffs’ well-known mark ‘Amul’.
The Court held that the plaintiffs have demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction is granted, the plaintiffs will suffer an irreparable loss. Further balance of convenience also lies in favor of the plaintiffs, and against the defendants. Hence the court granted interim relief to the plaintiffs by granting an ex parte ad interim injunction in Plaintiffs favor.
The case will be heard next on January 7, 2025.