Amul’s cute little girl shows aggression as the company goes on the offensive against infringers of its popular trademark

~By Diljeet Titus and Rai S Mittal

Over the last several decades, Amul’s blue-haired girl in a dotted frock has delighted and entertained the public by commenting on significant events and current issues with wit and timely punchlines. That effort has made the brand one of the most popular and respected in the country.

That achievement comes with its downside. Not many know that Amul has been fighting several significant and serious trademark battles over the years, with the latest being a petition in the Gujarat High Court against five Indian trademark registry offices situated in Delhi, Mumbai, Kolkata, Chennai and Ahmedabad for allowing third parties to register and use the name “Amul” and names similar to “Amul” for a wide range of products.

Amul is an abbreviation of Anand Milk Union Limited. From being identified solely with milk and butter, Amul went on to become a major brand for a range of products that the Gujarat Co-operative Milk Marketing Federation Ltd (GCMMF) marketed.

Due to its wide popularity and reputation, “Amul” was granted the status of “well-known trademark” by the Intellectual Property Appellate Board in 2013 and was included in the list of “well-known trademarks” in 2015 by the Controller General of Patent, Designs and Trade Marks. “Amul” is a reputed and well-known mark, and thus enjoys significant protection in India and globally.

LEGAL PROTECTION

Under Indian law, a “well-known trademark” would denote a mark which has become so famous to a substantial segment of the public which uses such goods that the use of such mark in relation to other goods or services would be likely to be misleading.

The factors generally considered for determining a trademark as well-known in India include—

• Knowledge and recognition of the trademark in the relevant section of the public.
• Duration, extent and geographical area of use and promotion of the trademark.
• Duration and geographical area of registrations and pending applications in respect of the trademark in India, reflecting the use and recognition of the trademark.
• Records of successful enforcement by the entity of its rights to the trademark and whether the trademark has been recognised as well-known by courts/tribunals.

Importantly, in order to be protected as a “well-known trademark”, it is not essential that the trademark should be well known to the public at large in India or that the mark should be well known in any jurisdiction outside India. Under law, a trademark which qualifies to be well-known enjoys better protection—a well-known trademark is allowed to proceed for registration even if the product it represents is otherwise devoid of distinctive character.

The Gujarat High Court granted ad interim relief to Amul, directing registry offices not to entertain any fresh applications for registration of trademark “Amul”.

Further, a trademark registration application can be refused if it conflicts with an earlier registered trademark which is well known, even if such a trademark is sought to be registered in respect of dissimilar goods and/or services.

There has been a growing consensus amongst the authorities that stringent efforts are required to deal with the menace of trademark infringement and passing off, and, in particular, misuse of well-known and leading brands.

Judicial authorities in India have maintained that if a well-known mark is not protected from unauthorised use, then a segment of the public that uses particular goods with a well-known trademark may get confused on seeing the same trademark applied to goods of other persons.

Besides Amul, other Indian and global brands which are protected as well-known trademarks include Bajaj, Bata, Bisleri, Infosys, Nirma, Pepsi, Benz, Philips, Canon, Cartier, Dunhill, Yahoo, Playboy, Microsoft, BBC, Mars and Castrol.

THE ONGOING DISPUTE

Amul discovered that the Indian trademark registry offices were granting applications for registration of its well-known trademark “Amul” to other entities for other products. Amul applied to the Gujarat High Court against the five offices of the trademarks registry. The Gujarat High Court granted ad interim relief to Amul, directing the registry offices not to entertain any fresh applications for registration of the trademark, “Amul”, from any other party.

The case thus reflects a failure on the part of the registry offices to observe legal provisions which bestow a duty on them to protect the exclusivity of well-known trademarks.

This is not the first time that Amul has had to defend its mark. There have been many instances in the past. In a judgment passed by the Gujarat High Court in 2007, it restrained the defendant from using the trademark “Amul”, observing that the registered proprietor has the right to restrict others from using its registered trademark even for a different class of goods. In another case, the Delhi High Court restrained Bharat Confectionery Works from using the mark “Amul” on its biscuits.

Intellectual property is a valuable asset of a business. The problem is that the temptation to use, or misuse, the Amul brand is, utterly butterly delicious.

In 2013, Amul won a dispute with a co-operative union of milk producers against its use of brand “Imul” for milk, as the name “Imul” was found to be deceptively similar to “Amul”. Silver Bakery, a Rajkot firm manufacturing bakery items under the name “Amul”, was restrained by the Anand District Court from such brand misuse. Another dispute with Shakti Dairy/Jarf Dairy for infringement of the “Amul” mark with similar designs/colour scheme on packages for milk witnessed the court granting an injunction order.

Similarly, in a dispute for infringement of the “Amul” mark for milk products with a similar design/colour scheme, the court granted an injunction stay against one Satyam Dairy. As a result of legal action against a company called AmulTek Software Solution, it was forced to rename itself “A Tek”. In addition, several such lawsuits are pending before different courts in India. It is believed that several more cases are also in the pipeline.

RECENT TRADEMARK CASES

The Delhi High Court recently declared Christian Louboutin’s “Red Sole” a well-known trademark.

In another recent judgment, the Delhi High court ruled that the name of Kentech RO Systems and their domain name www.kentechro.com infringed upon the “KENT” mark. In yet another case, the Bombay High Court restrained the use of the mark “KWIK­HEAL” as the word “KWIK” was considered to be the dominant part of the plaintiff’s trademark “FEVIKWIK”.

However, in a recent case, titled as Toyota vs Prius Auto, the Supreme Court, while holding that intellectual property rights are “territorial” and not “global”, refused to grant an injunction restraining the defendant from using its registered trademark, “Prius”, even though Toyota was the prior user of the mark. The Court observed that even though Toyota’s Prius mark was well known outside India, Toyota had failed to prove that it enjoyed a reputation in the “Indian” market in the year 2001 when the defendant began using the mark in India.

As Amul and many others have vigorously defended their valuable trademarks, the trend of protecting well-known marks from misuse in relation to different products/services will grow as intellectual property is one of the most valuable assets of a business.

The problem is that the temptation to use, or misuse, a brand name like Amul is, as the tagline says, utterly butterly delicious.

—The writers are advocates in Titus & Co