Gujarat Co-Operative Milk Marketing Vs. Terre Primitive

FACTS

In Gujarat Co-operative Milk Marketing Federation Limited v. Terre Primitive,[1] Amul Dairy, the brand operated by Gujarat Co-operative Milk Marketing Federation Limited (“Plaintiff”), known as one of Asia’s largest dairy companies and ranked among the top global dairy organizations, filed for a temporary injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 against Terre Primitive (“Defendant”), a company incorporated in Italy. Plaintiff 2, the registered proprietor of the “AMUL” trademarks, had licensed Plaintiff 1 to use the trademark for various dairy products. The suit alleges that Defendant was selling cookies and chocolate-covered biscuits under the mark “Amuleti,” which closely resembled the “AMUL” trademark. Amul argues that Defendant’s products were marketed online, through websites and social media platforms, using the impugned mark that was deceptively similar to Amul’s well-known and widely recognized brand.

The Plaintiff discovered that Defendant had adopted the mark “Amuleti,” which encompassed “Amul” within it, and merely added the suffix “eti.” The Plaintiff further argued that Defendant had copied not only the name but also the font style, making it even more visually similar to the “AMUL” brand. Amul claimed that Defendant’s actions were a blatant case of passing off, deliberately misleading consumers into believing that the goods sold by Defendant emanated from or were associated with Amul.

The Plaintiff provided evidence that “AMUL” had been in continuous use since 1958, while Defendant had only started using the impugned mark in 2020. A side-by-side comparison of the marks demonstrated structural, visual, and phonetic similarities, which, according to the Plaintiff, were likely to confuse the public and cause irreparable harm to Amul’s established goodwill and market position.

Issues Raised

1. Whether the Plaintiff is entitled to exemption from filing legible copies of documents?
2. Whether the Plaintiff is required to undergo Pre-Institution Mediation?
3. Whether the Defendant’s use of ‘Amuleti’ constitutes passing off and misrepresentation of the Plaintiff’s trademark?

Arguments Advanced

The issue concerning Trademark Infringement and Passing Off

• The Plaintiff argued that Defendant’s use of “Amuleti” infringes their registered “AMUL” trademark. By adopting a deceptively similar mark and identical font, Defendant 1 is intentionally misleading consumers into believing that their products are associated with or endorsed by Amul.
• The Plaintiff asserted that Defendant’s actions amount to passing off, as they are exploiting the goodwill and reputation built by Amul over decades. The phonetic and structural similarity of the marks, coupled with the identical nature of the goods (dairy products), is likely to cause confusion among the unwary public.

The issue concerning the Interim Injunction

• The Plaintiff sought an ex parte ad interim injunction, arguing that it has a strong prima facie case. The Plaintiff has established that it is the rightful owners of the “AMUL” mark, which has gained immense recognition both in India and abroad. If Defendant is allowed to continue using the impugned mark, Amul will suffer irreparable harm to its reputation and goodwill. Furthermore, the balance of convenience lies in favor of the Plaintiff, as Defendant only recently adopted the infringing mark, while Amul has been using “AMUL” for over six decades.

Court’s Decision and Interim Orders

Upon hearing the Plaintiff’s submissions, the Delhi High Court ruled in favor of the Plaintiff, finding that they had demonstrated a prima facie case for the grant of an ex parte ad interim injunction. The court agreed that the balance of convenience lay in favor of the Plaintiff and that without immediate relief, they would suffer irreparable harm.

The court restrained Defendant from:

• Selling, marketing, advertising, or promoting any products bearing the impugned mark “Amuleti” or any mark deceptively similar to “AMUL” in both the physical and online markets.
• Using any similar marks on any social media or e-commerce platforms.

Additionally, the court ordered Defendant to take down its product listings bearing the impugned mark from its website and surrender all materials bearing the infringing mark for destruction. Social media platforms hosting the infringing materials were also ordered to remove related content immediately. The case was scheduled for the next hearing on January 7, 2025.

Analysis

The Court’s ruling highlights the critical need to protect well-established trademarks from deceptive imitations that can mislead consumers. Amul, a globally recognized brand with decades of built-up reputation, faced a significant threat to its goodwill from Defendant 1’s use of a strikingly similar mark. By granting the interim injunction, the court safeguarded Amul’s rights, recognizing that the potential harm from continued use of the infringing mark far outweighed any inconvenience to the defendant.

Additionally, the court also highlighted the importance of swift judicial action in trademark infringement cases, particularly when the infringement involves online and social media platforms, where consumer confusion and damage to a brand’s reputation can escalate rapidly.

Conclusion

Amul Dairy successfully established that Defendant’s use of the mark “Amuleti” infringed upon its well-known “AMUL” trademark. The court granted an ex parte ad interim injunction, protecting the Plaintiff from further harm while the case proceeds. This case reinforces the role that trademark law plays in preserving the distinctiveness of a brand and preventing competitors from capitalizing on another’s established reputation.

[1] CS(COMM) 768/2024 & I.A. Nos. 38737/2024, 38738/2024 & 38739/2024.