Kaira District Co-Operative Milk Producers’ Union Limited (‘Kaira’) was established in India in 1946. It is in the business of the manufacturing and marketing milk products, with 3.2 million producer members and a milk collection average of 14.85 million litres per day. Its trademark AMUL is one of India’s largest food brand.

AMUL is a coined term. It comes from the first letters of Kaira’s earlier name Anand Milk Union Limited and also from the Sanskrit word “Amulya” which means “priceless and precious”. It has been continuously used since 1955 and is widely known not only in India but also across the globe.

Kaira also sells its products under the brand AMUL in Canada since 2010. Kaira is the registered owner of Canadian Trademark Registration No. TMA877339, registered since May 7, 2014, for the trademark AMUL, which has been in use in Canada since June 30, 2010, for milk products. Kaira also owns the trademark design depicting the expression “Amul The Taste of India” at the Canadian Intellectual Property Office (CIPO). This trademark depicting the popular tagline has also been in use in Canada since as early as June 30, 2010.

It also has two websites, www.amul.com and www.amuldairy.com, prominently displaying its trademarks and products bearing its trademarks. These trademarks and associated products have become well known in Canada, India, and throughout the world.

Kaira was aggrieved by the fact that a proprietary, namely, Amul Canada is marketing and selling dairy products in Canada under the marks AMUL and Amul Canada Limited via LinkedIn. This entity is not only using the exact marks and designs belonging to Kaira, but it is also claiming to be Kaira by blatantly copying the information available on Kaira’s websites.

Screenshot of Amul Canada’s LinkedIn page retrieved on 13-07-2020

Source- https://www.linkedin.com/company/amul-canada/about/

Hence Kaira approached⁴ the Federal Court of Canada alleging breach of trademark and copyright in Canada by Amul Canada. Kaira stated that it has never licensed nor provided consent to Amul Canada for using its trademark and copyrighted information. It had also sent a cease and desist notice which was not replied to by Amul Canada. Amul Canada never responded to any of the materials duly served according to the Federal Court Rules, or Federal Court’s orders and directions. As a result, Kaira brought an ex parte Motion for Default Judgment.

The Issues raised before the Court were:

(i) Procedurally, that Kaira has properly brought this Motion, and

(ii) Substantively, whether it proved that a Default Judgment should issue, and their relief sought should be granted.

The Court held that Kaira has satisfied the requirements to bring this Motion for Default Judgment. Since Amul Canada has not responded to any communication, and had no presence at the address listed on their LinkedIn pages advertising “Amul Canada”, the Court agreed that Amul Canada has engaged in evasive conduct since the start of these proceedings.

With respect to the Substantive issue, the Court held that under a Motion for Default Judgment, the plaintiffs must establish, on a balance of probabilities, that:

(i) that the defendants are in default of filing a statement of defense, and

(ii) that the defendants are liable for the causes of action in the claim

Now since Amul Canada had failed to file a Statement of Defence, or anything else, in response to these proceedings, thus the first ground of the requirement for Default Judgment was met.

With respect to the second consideration, the Court held that Amul Canada’s conduct 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.

Passing off

The elements for establishing passing off under Canadian Law are:

(i) the existence of goodwill;

(ii) the deception of the public due to misrepresentations

(iii) actual or potential damages to the plaintiff

The Court found that all three elements are present in the current case. First, Kaira has clearly developed goodwill in its brand, design, and company names. The brand has existed for over 50 years and is advertised globally through online and other channels – and thus has acquired distinctiveness over time. It has also evidenced yearly importation into Canada of over $100,000 of Amul’s dairy products in recent years.

Second, the misrepresentation is creating confusion amongst the public. Amul Canada has engaged in intentional misconduct and deliberate deceitful conduct. It has directed public attention to its business in such a way as to cause confusion in Canada between its goods and business and those of Kaira.

Finally, damage cannot be presumed. There must be some evidence of “proof of actual damage or the likelihood of damage”. There are clearly potential damages that could have related, whether through sales, marketing, distribution, and/or recruiting employees, through the unauthorized use of Kaira’s trademark by Amul Canada on its LinkedIn page. Therefore, the Court held that it is a clear case of passing off.

Trademark Infringement

Amul Canada has advertised Kaira’s registered trademark in association with goods listed in the Kaira’s registration through their LinkedIn page. The Court held that it is unclear what Amul Canada hoped to achieve through its unauthorized advertising of Kaira’s mark on LinkedIn. However, at a minimum, Amul Canada is falsely advertising its desire to increase sales in Canada, so that it may attract further interest in the company, potentially hoping to attract more purported employees, distributors, and/or consumers through these social media pages. The Court held that this unauthorized use of Kaira’s mark is sufficient to infringe Kaira’s trademark rights under the Canadian Trademark law.

Copyright Infringement

The Canadian Copyright Law states: “it is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do”. Copyright is defined as “… the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever…”. Thus, to demonstrate that the unauthorized reproduction of work constitutes infringement, Kaira needed to show that Amul Canada has:

(i) produced or reproduced the work,

(ii) in any material form; and

(iii) that all or a substantial part of the work has been copied

In the present case, Amul Canada has not only copied the mark but also Kaira’s literature as prominently displayed on Kaira’s websites. The image and wording used is an exact imitation of that owned by Kaira. This reproduction of Kaira’s copyrighted material without its consent amounts to infringement of Kaira’s copyright in the said content.

In light of the above points, the Court held that Amul Canada has infringed the exclusive trademark rights as well as the Copyright of Kaira.

Hence the Court granted a permanent injunction in favour of Kaira restraining Amul Canada from infringing Kaira’s trademark and copyright. The Court also awarded damages to the tune of $10,000 for trademark infringement and $5,000 for copyright infringement in favour of Kaira. In addition to this, the Court also awarded costs in the lump sum of $17,733.

⁴KAIRA DISTRICT CO-OPERATIVE MILK PRODUCERS’ UNION LIMITED and GUJARAT COOPERATIVE MILK MARKETING FEDERATION LTD. Vs. AMUL CANADA, MOHIT RANA, AKASH GHOSH, CHANDU DAS, and PATEL PATEL 2021 FC 636 dated June 22, 2021.

Frank Peterson, a music producer, approached Bundesgerichtshof- the Federal Court of Justice, Germany (German Court) suing YouTube LLC and its parent company Google LLC for copyright infringement, when certain users uploaded several copyrighted phonograms belonging to him on YouTube in 2008.

In another case, a Netherlands-based publishing group company, viz. Elsevier approached the German Court against the file-hosting service, Cyando after its users uploaded several of Elsevier’s copyrighted works on Cyando in 2013 without its approval.

Several such long-running battles are on-going between Europe’s creative industry and online platforms that host content.

Consequentially, the German Court sought advice from the Court of Justice of the European Union (CJEU).

The Attorney General, suggested that the Court rule that platforms such as YouTube and Cyando do not, in principle, indulge in ‘communications to the public’. Thus, the platforms are not directly liable for any infringement when their users illegally upload protected works.

Article 3 of Directive 2001/29 gives authors the exclusive right to communicate their works to the public, while Article 14 of Directive 2000/31 exempts intermediary service providers from liability for the information which they store at the request of users of their services.

Therefore, the question before the German Court in the two matters was whether the former provision applies to such platform operators, whether they may rely on the latter provision and how those provisions are interrelated.

Some online platforms allow large-scale copyright infringement, from which their operators profit to the detriment of the copyright holders, which justifies the imposition of extensive obligations to monitor the content uploaded to those platforms by users of their platforms.

While those that do not fall in the first category, imposing on them extensive obligations to monitor the content uploaded on their platforms would significantly affect their activity and the rights of those users would undermine freedom of expression and creativity online.

He also stated that as per a new directive enacted in 2019 with respect to operators such as YouTube, a specific liability regime was established for works illegally uploaded by users. However, since the new directive came into force in the course of the present preliminary ruling proceedings, the same does not apply to the disputes in the main proceedings. These cases will therefore have to be determined through the lens of the legal framework prior to that, regardless of whatever approaches may have been adopted by the EU legislature.

The CJEU in its judgment dated 22nd June 2021⁵ held that, "As currently stands, operators of online platforms do not, in principle, themselves make a communication to the public of copyright-protected content illegally posted online by users of those platforms However, those operators do make such a communication in breach of copyright where they contribute, beyond merely making those platforms available, to giving access to such content to the public.".

The CJEU stated that the platforms could also be liable if they do not put in place the appropriate technological tools to tackle copyright breaches by their users or in cases where the platform itself provides tools for sharing illegal/unauthorized content.

This case clarifies the position with respect to the long-running debate on the responsibilities of online platforms. Wherever the platform is in a passive role there will be no liability, however, where it is in an active role there will be a liability.

However, the Court did not state any guidelines to differentiate the active and the passive roles of a platform.

After this judgment, platforms like YouTube, Facebook, Instagram, and the like will have to incorporate mechanisms to prevent users from uploading copyrighted materials.

⁵C-682/18 YouTube and C-683/18 Cyando.

Recently, the Delhi High Court has issued a circular stating creation of an Intellectual Property Division (“IPD”) at the Delhi High Court. This move of the Delhi High Court has come after the passing of an ordinance for scrapping of Intellectual Property Appellate Board (“IPAB”) in April, 2021. Under this Ordinance, the powers vested with IPAB were transferred to the High Court which raised several concerns amongst the IP fraternity and stakeholders. We had briefly discussed about the Ordinance in our earlier post here.

As per the office order the IPD would be dealing with the following matters :-

(i) All original proceedings and appellate proceedings including Writ Petitions (Civil), Civil Misc. (Mains), RFA, FAO etc., relating to IPR disputes, except matters that are to be dealt with by a Division Bench.

(ii) All fresh filings in the various IPR categories would also be dealt with by the IPD.

(iii) IPR suits, revocation applications, cancellation applications, other original proceedings, appeals from the office of Registrar of Trade Marks, Controller of Patents, Copyright Registrar and all other proceedings which were hitherto maintainable before the IPAB, under the provisions of the Trade Marks Act, 1999; Copyright Act, 1957; Patents Act, 1970; Designs Act, 2000; Geographical Indications of Goods (Registration and Protection) Act, 1999; Protection of Plant Varieties and Farmers' Rights Act, 2001 and Semi-conductor Act 2000.

NOMENCALTURE AND CASE TYPE :

The press release of the Delhi High Court stated that approx. 3000 cases will now be transferred to the IPD from IPAB. The IPD would be governed by the IPD Delhi High Court Rules which are in the process of being framed. A Committee has already been constituted for framing of the `Delhi High Court Patent Rules’ which shall govern the procedures for adjudication of patent disputes before the Delhi High Court. The first draft of these Rules has already been notified for stakeholders’ comments, which have been received.

The original proceedings before the IPD would also be additionally governed by the Delhi High Court (Original Side) Rules, 2018 and the provisions of the Civil Procedure Code, 1908 as applicable to commercial disputes and the provisions of the Commercial Courts Act, 2015.

Although the creation of IPD by the Delhi HC is a welcome move, the point of concern remains the speedy establishment of its structure and hiring and filling up of necessary vacancies. The appointment of qualified judges and providing them training for expertise in the subject matter will be an unsaid expectation from IPD, failure of which will lose the whole purpose of creating a replacement of IPAB.

We hope that such crucial steps for the constitution of special IP Division, followed globally by various countries like Japan, Malaysia, UK, Thailand, China, etc., will soon be taken by other High Courts of India for effective disposal of matters relating to Intellectual Property Rights.

The Delhi High Court in an appeal against an interim injunction granted by the Single Judge, passed the judgment stating that the right in a trademark once relinquished cannot be claimed unless the terms of relinquishment is revoked/novated. The Judgment was passed by the Division Bench of Hon’ble Mr. Justice Rajiv Sahai Endlaw and Hon’ble Mr. Justice Amit Bansal . ¹

LEGAL PROPOSITION

Can a party restrain another party from using a trademark once the same has been relinquished through a Dissolution Deed and the terms of the Dissolution Deed were not novated at any subsequent point of time. 

FACTS

1. The Respondent (Jagmohan Ratra) and one Hari Dutt Sharma started a partnership firm “M/s Four Diamonds” in 1983 dealing in cycles, tricycles, and other related products and coined the trademark AMPA” and logo“.This was adopted by M/s Four Diamond in 1991. Subsequently on 30th March 1992, M/s Ampa Bikes Pvt. Ltd. (“ABPL”) was established with the Respondent and M/s Four Diamond as the shareholders.

2. On 21st June 1995 ABPL filed a Trademark Application (No. 669861) under Class 12 for the wordmark “AMPA” claiming use since 1st April 1992. However, the said application was not pursued and was abandoned in 2002.

3. A dispute arose between the Respondent and Hari Dutt Sharma which resulted in the Dissolution Deed dated 1st August 2003. As per the terms of the Dissolution Deed, Hari Dutt Sharma was free to carry on business in the name of ABPL and use the trademark “AMPA” and the Respondent renounced all his claims in favour of Hari Dutt Sharma. M/s Four Diamond became a sole proprietorship to be managed by the Respondent.

4. The Dissolution Deed provided that the Respondent will use the mark ABPL for manufacturing all models up to 14 inches only and further provided that for a period of three years, ABPL (under Hari Dutt Sharma) will not manufacture models upto 14 inches. In short ABPL was free to manufacture all models of the cycle after three years whereas the limitation of manufacturing models upto 14 inches continued for the Respondent.

5. In 2013, the signatory of Hari Dutt Sharma entered into an Assignment Deed for the assignment of the trademark “AMPA” to one Mr. Ajay Kumar Bawa for a consideration of INR 1,00,000/.

6. On 5th June 2018, the Appellant company was incorporated with the son of Ajay Kumar Bawa, the assignee under the Assignment Deed, and the son of Hari Dutt Shama for manufacturing cycles, tricycle, bikes with tyre radius of 14 inches and above under the brand name AMPM. The Defendant thereafter applied for registration of trademark vide application no 3999191 on 15th November 2018, trademark vide application no 4661156 and wordmark AMPA both on 17th September 2020.

FINDINGS

The Hon’ble Court held that in terms of the Dissolution Deed, the Respondent had clearly and unequivocally conceded in favour of the Appellant, the right to use the trademark “AMPA” in respect of models above 14 inches and consented to upto 14 inches after a period of three years.

The Respondent cannot restrain the Appellant from using “AMPA” unless it is able to show that the terms of the Dissolution Deed were novated/ revoked. Therefore it held “Once the Respondent has expressly waived his right on the trade mark in favour of the Appellant, he cannot restrain the appellant/defendant company from exercising the aforesaid rights, even though the said rights have been exercised after passage of considerable period of time.”

CONCLUSION

The Hon’ble Court relied on Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors ²and held that once a party has expressly waived his right in a trademark registered in the name of another party, he cannot claim those rights directly or indirectly. Axiomatically, what cannot be done directly cannot be done indirectly.

¹FAO (OS) (COMM) No. 75 of 2021 titled AMPA Cycles Private Limited vs Jagmohan Ratra

²(2006) 8 SCC 726

Tata Sons Private Limited is the holding company of the TATA Group of companies. It is the registered proprietor of the trademark TATA as well as the device mark .Tata Cliq, a part of the TATA Group, is engaged in the business dealing in various products through its e-commerce platform www.tatacliq.com. Tata Cliq is also the registered proprietor of the domain name www.tatacliq.com since 2015.

Tata Sons and Tata Cliq (jointly referred to as “Tata”) were aggrieved by the fact that M/S Electro International (“Electro”) is the owner of the domain name www.tatacliqsmart.com which is deceptively similar to Tata’s domain name www.tatacliq.com.

As per Tata’s claim, Electro has only added the word "smart" in the domain name of Tata, without Tata’s permission.

Hence, Tata approached³ the Delhi High Court seeking an injunction against Electro. In its plaint, Tata claimed that Electro, through its website www.tatacliqsmart.com, deals in various products including Tata’s products. Tata adduced documents to show that Electro is in fact selling Tata’s products on its website at throw-away prices. It claimed that this act of Electro amounts to infringement of Tata’s registered trademark and copyright.

Tata contended there is a likelihood that by using the word TATA, Electro would be selling counterfeit products of Tata.

The Court tried to access the website www.tatacliqsmart.com but could not do so.

However, the screenshots produced by Tata showed that Electro’s website is being used for selling products, including those of Tata. This made it apparent that Electro has shut down its website only because the present suit has been filed.

Hence the Court granted an interim injunction in favour of Tata. The matter is now to be heard on 19.07.2021. Watch this space for more updates.

³Tata Sons Private Limited & Anr vs M/S Electro International & Ors on 28 June, 2021- CS(COMM) 293/2021

Dassault Systemes Solidworks Corporation (“Dassault”) is a French company which has fostered a software called 'Solidworks'. This software works by displaying and advancing items in a three-dimensional climate. Dassault also setup an Indian office to deal with its undertakings concerning 'Solidworks' in India.

Dassault’s software was created by its employees, and Dassault owns the copyright therein. Its software program and manuals are protected under the Copyright Act, 1957.

Dassault claimed that in May, 2018, it found that certain pirated and unauthorized adaptations of its 'Solidworks' software were allegedly being used by Spartan Engineering Industries Private Limited (“Spartan”). Dassault filed a suit at the Delhi High Court seeking relief of copyright infringement against Spartan. Dassault claimed that the unauthorized use of the software had increased two fold since August, 2020 and its attempts to arrive at a solution were fruitless, as Spartan denied that it was infringing Dassault’s software.

Further, Dassault claimed that there has been a contractual infringement and an intellectual property infringement by Spartan, because of the violation of its End User License Agreement.

In its judgment the High Court held that “Software infringement is a serious issue, and deserves to be nipped in the bud”. The Court granted interim injunction in favour of Dassault by restraining Spartan from utilizing, recreating and disseminating any pirated/unlicensed/unauthorized software projects of Dassault and furthermore from formatting its computer systems as well as deleting any data which may assist in infringing Dassault’s copyright. The matter is pending before the Court. Watch this space for more updates.

-Adv. Chinmay Pawar

Brihadratha Dynasty

Brihadratha Dysnasty was the earliest dynasties which ruled over Magadha kingdom. It was known by the name of its initiator ‘Brihadratha’ also known as ‘Maharatha’. The name Brihadratha means ‘the Lord of a Great Chariot’

The mention of Brihadratha is found in the Rig-Veda. The ancient literary sources say that Brihadratha was the eldest son of Vasu who was the king of another kingdom called ‘Chedi’. According to Ramayana, Vasu founded Vasumati and Grivraja.

The Brihadrath Dynasty ceased to exist in approximately 8th century BC.

-Adv. Chinmay Pawar

Gurudongmar lake: Sikkim

The hilly regions of north east India are known for their unique culture and unspoilt natural beauty. The region is dominated by the Himalayas forming natural wonders that please one’s eyes. At an elevation of 17,000 ft., sits the Gurudongmar Lake enclosed by snow-caped mountains. The origin of name ‘Gurudongmar’ is traced back to 8th Century AD when it was believed that Guru Padmasambhava- founder of Tibetan Buddhism, visited Tibet through this area. The area is said to be blessed by Guru Padmasambhava.

The lake solidifies during the winters except at one spot, the phenomenon is honoured as God’s creation by both Hindus and Buddhists.

Chitradurga Fort- Karnataka

Chitradurga Fort is locally known as ‘Elusuttina Kote’ meaning the fort of ‘seven circles’. The fort originally had 19 gateways, 38 postern-gates, 35 secret entrances and 4 ‘invisible’ entrances. Many of these are non-existent today.

At the Hidimbeshwara Temple, one of the many temples in the fort, a big piece of a bone is kept and it is believed to be a tooth of the demon ‘Hidambasura’. At the Siddheshwara Temple, another larger piece of bone is kept and it is also believed to be a tooth of Hidambasura.

RK Dewan & Co. held its “1st RK Dewan Article Writing Competition”.We received an overwhelming response from students from all over India. The top three winning entries will be shared by us soon. It was indeed an enriching experience to have come in touch with the young minds of the legal fraternity and heartening to see their views of the current trends in Intellectual Property Law.

Confederation of Indian Industry (SR) conducted a conference in June 2021, where Dr. Mohan Dewan was invited as one of the speakers. Dr. Dewan spoke on the topic of “Patent Search & Analytics, Patent Drafting & Patent Prosecution”.

Adv. Sachi Kapoor and Adv. Aboli Kherde attended the Webinar organised by Mahratta Chamber of Commerce, Industries and Agriculture on Leveraging LinkedIn® for Business Development. The Speaker Mr. Sunil Bhave guided the attendees through various facilities of LinkedIn which can be used for business development and networking.