Amul India v. Amul Canada- legal takeaways
Adv. Sakshi Shairwal
Kaira District Co-Operative Milk Producers' Union Ltd. and Ors. v. Amul Canada and Ors. (22.06.2021 - INOT): MANU/INOT/0006/2021
Facts and Background
Kaira, founded in India in 1946, is
engaged in dairy products manufacturing
and marketing with an average of
4.85 million liters of milk collection every day. Its AMUL trademark is the largest food brand in India. It says that Kaira’s AMUL trademark is the world's biggest vegetarian brand of cheese and the biggest pouched milk brand in the world.
A broad variety of food products like cheese, ghee, butter, ice cream, beverages, yogurts, cream, and associated products (milk powder, buttermilk, condensed milk), coffee, chocolates, sweets, spreads, desserts, and bread are being marketed and sold at Gujarat. The AMUL trademark has been shown prominently. Internationally, including in Canada, the Plaintiffs market Kaira’s trademarks.
The name AMUL has been coined. The complainants argue that this stems from the first letters of the old name of Kaira (Anand Milk Union Limited) and also from the Sanskrit term "Amulya" meaning "priceless and precious." It has been used regularly since 1955 and is well-known for its ad films in India. For over 60 years in newspapers, magazines, radio & television, and now, online, via its own website as well as Google and YouTube, it has also been widely advertised both in India and internationally.
Kaira holds the Canadian trademark "Amul The taste of India" used in Canada since June 30, 2010. Kaira further submits that it also has the appropriate common law rights to the design trademark. Kaira also possesses a trademark and design that refers to the statement "Amul Pasteurized Butter utterly butterly delicious" and that is used in conjunction with milk products, fats, and edible oils.
It has two websites, www.amul.com and www.amuldairy.com, which show its trademarks prominently and its products bearing their trademarks. In Canada, India, and worldwide these marks and related items are well known.
Issues and Analysis
The fact that Amul Canada, the proprietor, is marketing and selling Canadian dairy products as AMUL and Amul Canada Limited through LinkedIn was a primary concern of Kaira. Not only does this business use the exact graphics and trademarks of Kaira, but it also claims to be Kaira by replicating the data provided on the Kaira website openly.
Hence Kaira brought the alleged breach of trademarks and copyright in Canada by Amul Canada before the Federal Court of Canada. Kaira asserted that it has never licensed or given Amul Canada approval to use its copyrighted or trademark information. It had also sent a notice of cease and desist that Amul Canada had not responded to. Amul Canada never replied to any document duly served pursuant to the rules of the Federal Court or the orders and instructions of the Federal Court. Kaira consequently submitted an ex-parte motion for a default judgment.
The Court held that the defendant has been evasive since the beginning of the proceedings, in that they have failed to reply in any way, including prior court directives, jointly and severally, and/or in response to service and subsequent communications in relation to these proceedings in their social media pages.
The motion presented two important questions: whether the complainants brought the motion lawfully, and whether, in essence, they established that a default judgment had to be issued and the remedy sought should be given.
The Court held that the plaintiffs have every right in ex-parte to make this motion for default judgment having exhausted all reasonable attempts to have the Defendants cease and desist their conduct before and throughout the initiation of this procedure. The Court further opined that there is little choice but to stop the flagrant abuse of their intellectual property.
The Court also found that the conduct of the defendant is more than the normal situation of confusion produced by small modifications to the mark, a similar description of the copyrighted content, or a design amendment. They use an exact duplicate of the mark of the complainants and an exact copy of their copyright material.
To amount to a violation of intellectual property, the breach of the following elements had to be established:
The elements for establishing passing off under Canadian Law are:
i.) The existence of goodwill;
ii.) Misrepresentation of facts and deception of the public
iii.) Evidence of actual or potential damages to the plaintiff
First, with its brand, design, and business names, Kaira has obviously created and gathered goodwill. For over 50 years, the brand has been advertised worldwide via online and other means – and has therefore become distinguished over time. In recent years, Amul's dairy products have also been imported to Canada for more than $100,000 annually.
Secondly, misrepresentation creates uncertainty and confusion for the consumers. Amul Canada has committed wilful misrepresentation and deceitful behavior. It has focused its operations on the public in such a way that its items and those of Kaira are confused in Canada.
The Court stated in this regard that evidence of actual damage and probability of damage must be provided. Clearly, potential damages may have arisen from the improper use of the trademark by Amul Canada on its LinkedIn page, whether via sales, marketing, distribution, and/or staff recruitment. The Court, therefore, concluded that the infringement was a clear instance of passing off.
In conjunction with goods included in the Registration of Kaira, Amul Canada has announced Kaira registered marks on its LinkedIn profile. The Court opined that Amul Canada's unlawful dissemination of Kaira's mark on LinkedIn did not clarify what it wanted to achieve. At a minimum, however, Amul Canada fakes publicity about its intention to enhance sales in Canada so that it may attract more interest in the company, in order to perhaps attract additional suspected workers, distributors, and/or consumers via these social media pages. This illegal use of Kaira's mark was considered by the Court sufficient to breach Kaira's mark rights under Canadian Trademark Law.
According to Canadian Copyright Law, it is in violation of copyright to do any act that can only be done by the copyright owner, without their consent. Copyright is defined as the sole right to make or reproduce, in any tangible form, the work or any substantive component thereof. Therefore, Kaira was obliged by Amul Canada to prove that the nonauthorized reproduction of the work was indeed a violation.
Amul Canada not only copied the trademark in this instance but also the literature of Kaira as shown extensively on Kaira's websites. The reproduction without authorization of the copyrighted material from Kaira amounts to a violation of the copyright of Kaira in such content.
Having regard to the aforementioned, the Court determined that the exclusive trademark rights, as well as the copyright of Kaira, were violated by Amul Canada.
The Court, therefore, granted a permanent injunction in favor of Kaira to limit the trademark and copyright infringement of Amul Canada. The Court additionally granted $10,000 in damages for the infringement of trademarks and $5,000 for the infringement of Kaira's copyright.
The article first published on Lexology.com and the same can be accessed here.