Calcutta High Court | While awarding injunction restraining the defendants for infringement of registered trademark and passing off, Krishna Rao, J. held that Trademark “AMUL” a movement among Indian Rural Community towards prosperity and being a wellrecognized brand should be provided with broader scope of protection against even the non—competing goods and services.
The instant suit was filed by the plaintiff which is a registered proprietor of the trademark “AMUL”, seeking perpetual injunction restraining the defendants, a local candle distributing company in West Bengal who is selling their candles using trade name “Amul Candels”, for infringement of registered trademark and passing off.
The Court observed that after a comparative analysis of the marks, it is clearly seen that defendants have cleverly used the trademark AMUL”' on their candle packet and there is well settled law that the mark should not be meticulously compared side by side as it is not possible for the consumer to have an opportunity to do the same. The Court held that defendants have infringed the registered trademark of the plaintiff under Ss. 29(4)(a), 29(4)(b) and 29(4)(c) of Trade Marks Act, 1999.
Relying on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 and Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1 where the Supreme Court had laid down the following decisive tests for checking deceptive similarity
“5. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
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The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
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The degree of resembleness between the marks, phonetically similar and hence similar in idea.
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The nature of the goods in respect of which they are used as trade marks.
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The similarity in the nature, character and performance of the goods of the rival traders.
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The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
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The mode of purchasing the goods or placing orders for the goods.
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Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
6. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.”
and held that the defendants have tried to mislead the general public by using of an identical mark thereby violated statutory rights as well as the common law rights of the plaintiffs and have indulged into the offence of passing off.
Since the suit is of commercial in nature the Court invoked Or. 8 R. 10 of the Code of Civil Procedure, 1908 which allows expeditious disposal of suits when defendants use dilatory tactics by not filling the written statements and held that the defendants have infringed the registered trademark of the plaintiff as well as committed the torts of passing off. [Kaira District Cooperative Milk Producers Union Ltd. v. Maa Tara Trading Co., 2022 SCC OnLine Cal 2516, judgment dated 01.09.2022]
*Ritu Singh, Editorial Assistant has put this report together.
