The Taste of India Prevails in Canada

INTRODUCTION

milk productionThe case of Kaira District Co-operative Milk Producers’ Union Limited (“Kaira”) and Gujarat Cooperative Milk Marketing Federation Ltd. (“Gujarat”) v. Amul Canada, Mohit Rana, Akash Ghosh, Chandu Das, and Patel is the first-ever victory seen by AMUL on the foreign soil. One of India’s prominent dairy giants – AMUL had to take a rough road with a Canadian company called Amul Canada (“defendants”). The Federal Court of Canada dealt with the case of trademark and copyright infringement. Kaira and Gujarat (“plaintiffs”) filed a statement of claim which alleged the defendants of infringing the trademark and copyright of the plaintiffs’ brand by way of using their brand name, image, and corporate information in Canada.

The defendants allegedly advertised, marketed, and supplied products through LinkedIn which were identical to that of the plaintiffs’ products. The defendants evidently used the trade names and trademarks which the plaintiffs originally had obtained on May 7, 2014, in Canada specifically. In this case, Kaira has contended that it owns the well-known expression of “Amul the Taste of India” since 2010, along with owning copyright in all the associated trademarks and other common-law rights of the previously mentioned marks. The plaintiffs also contended that these untoward activities took place without any license or consent from them of any sort.

ISSUES IN THE CASE

The paramount issue that stood in front of the plaintiffs was if the motion of default judgment was rightly brought to the court. This situation arose due to the lack of response by the defendants. The defendants failed to respond to the cease-and-desist order and the written statement issued by the plaintiffs. The court, at last, found it appropriate to let the motion of default judgment prevail wherein the court decides to resolve the matter in the absence of the defendants. The case of Louis Vuitton Malletier SA v. Yang explains that if a Statement of defense has not been filed by the defendant(s) then, the burden of proof falls on the plaintiff to explain that the Statement of Claim was served to the defendants but received no response. The plaintiff(s)must provide the court with evidence that helps the court in striking a balance between the probabilities of the defendant had infringed the concerned statute.

In the present case, the plaintiffs provided evidence of Amul Canada having sold products identical to the Plaintiff’s products under its brand “AMUL”. In addition to that, the defendants’ LinkedIn profile had a description that was exactly the same as the description of the Plaintiff’s products in relation to its brand of “AMUL”. This description gave the consumers an impression, at the first instance itself, that the defendant’s brand is directly related to that of the plaintiff. As a result of which, the consumers would start entrusting Amul Canada, not knowing the truth. Therefore, the motion of default judgment was approved by the federal court.

THE ACTION OF PASSING OFF

The plaintiffs opted for passing off, which is one of the most prominent actions under the common law. Passing off under the Trademark Act, RSC 1985, c T-13 (“Trademark Act”) demands some elements to be fulfilled under section 7(b), which supported in the case of Ciba-Geigy Canada Ltd. v. Apotex Inc. These elements are as follows:

  1. There should be an existence of goodwill of the defendants’ good and/or services in the market which in this case was definitely present because the plaintiffs are a well-established brand and have a presence in the market for a long time. Moreover, the mark of AMUL has been accepted as a well-known mark therefore, its goodwill speaks for itself.
  2. The consumers should be deceived due to the misrepresentation created by the defendant, which is fulfilled in the present case by using unauthorized trademarks of Kaira and putting up a description on its LinkedIn which is identical to the information on the website of the original brand. Therefore, the act of defendants can very easily deceive the consumers, which may lead to losing brand credibility.
  3. Lastly, damages that can be actually or potentially suffered by the plaintiffs have to be shown as stated in the case of Ciba-Geigy Canada case. In this case, direct harm is inflicted upon the reputation and goodwill of the plaintiffs due to the untoward actions of the defendants. Similarly, in the case of Subway IP LLC v Budway, Cannabis &Wellness Store, as stated in para 34, there was no direct financial harm caused. However, the brand did lose control of the market and commercial aspect of their product and trademark.

REGISTRATION AND INFRINGEMENT

Section 19 of the Trademarks Act confers exclusive rights on the owner of the registered trademark throughout Canada. Accordingly, Kaira has duly registered the trademark of expression – “Amul the Taste of India” in Canada in 2010, making it an exclusive trademark owner.

Now, wrongfully using this expression without taking due consent and license from Kaira led the defendant to infringe the rights guaranteed under section 20(1)(a) of the Trademarks Act. After all, the defendants used the trade names and marks of the plaintiffs to advertise, market, and sell their products in the Canadian market without due consent. However, it is not easy to seek remedy under this section. The plaintiffs are supposed to sufficiently prove that the defendant used the registered trademark which is well-known in the market without consent, which indeed led to depreciating the plaintiffs’ goodwill and the value of their goods in the market.

It is however important to observe that the meaning of “goodwill” differs under sections 7(b) and 22(1). This is because many more factors are required to be fulfilled to prove the depreciation of goodwill in the case of section 22(1). These factors include – fame, geographic reach, the volume of sales, credibility, degree of advertising, and market impact created by the goods. However, the defendants at the time of filing the application had 177 followers on their LinkedIn account and no record of any sales. Therefore, the meaning of goodwill under section 22(1) wouldn’t apply.

COPYRIGHT INFRINGEMENT

Section 27 of the Copyright Act RSC 1985, c C-42 (“Copyright Act”), states that if any person reproduces any work without the consent of the owner of the copyright of that work is said to infringe the rights. The defendants have infringed the rights of the plaintiffs by using the Amul design. The defendants also copied the literature of the website. The image and the words-to-word plagiarism amounts to copyright infringement.

CONCLUSION

The defendants were made liable for various damages, which started with transferring any ownership and rights they wrongfully held through LinkedIn. This is a straightforward case wherein an infringement was remedied by the Federal Court of Canada and provided justice to the rightful owner of the trademarks and copyright. This case very efficiently sets an example for all the big corporations and the micro, small and medium enterprises to get their products, expressions used, and several other related IP’s to be protected under Intellectual Property Rights. These rights work their charm in the time of need and also help in preventing others from encashing other entities ’ intellectual property rights. This was seen in the present case also, wherein the court awarded the plaintiff CAD 32,733 as damages which the defendant was liable to pay.

Author: Priyal Dhandhukia – a student of Symbiosis Law School (Pune), an intern at Khurana & Khurana, Advocates and IP Attorney,  in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com

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