Author: Aishwarya Pande
Citation: ‘Kaira District Co-Operative Milk Producers’ Union Limited & Anr. v. Amul Canada & Ors.’ [2021 FC 636 (Federal Court of Ontario, Canada) (Diner, A.S., J)] Judgement dated June 22, 2021. [< https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/499505/1/document.do>]
The above captioned judgement has ruled in favor of India’s iconic dairy products brand- AMUL owned by Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Cooperative Milk Marketing Federation Ltd. (“Plaintiffs”). The Court has permanently restrained Amul Canada and others (“Defendants”), from infringing upon the Plaintiffs’ valuable AMUL and AMUL TASTE OF INDIA marks (“AMUL marks”) as well as the copyright subsisting therein.
Briefly, the Plaintiffs brought a suit alleging that the Defendants have been advertising and offering for sale products bearing their AMUL Marks in Canada, through their social media page on LinkedIn. The Plaintiffs contended that the Defendants are illegally advertising their products, using their brand name and image, as well as the Plaintiffs’ corporate information on said LinkedIn page. The Plaintiffs claimed that the conduct of the Defendants is clearly an attempt to draw a false association with the Plaintiffs and thereby deceive unwary consumers.
Ex Parte Decision
The Court was faced with two issues viz. (a) on procedural count, whether the Plaintiffs have properly brought the motion for default judgment; and (b) on the substantive front, whether a default judgement must ensue, and relief sought must be granted to the Plaintiffs.
On first issue the Court correctly noted that the Defendants have neither responded to any communication issued by the Plaintiff, nor have they filed their statement of defense in present proceedings. Taking cognizance of the blatantly evasive conduct of the Defendants, the Court concluded that the Plaintiffs deserve the default judgement (akin to an ex parte decision in India).
Passing Off, Copyright and TM Infringement
As regards the second issue, the Court delved into a substantive enquiry into the Defendants’ conduct to determine whether the causes of action for passing off, trademark and copyright infringement were established.
Noting that AMUL is a brand existing for over 50 years in India and is advertised globally, including in Canada, the Court held that it has acquired distinctiveness at least amongst certain segments of the Canadian population. The finding was vehemently backed with invoices amounting to over USD 100,000 demonstrating import of AMUL products into Canada. In addition, by using the identical name and mark, the Defendants deliberately misrepresented themselves to be associated with the Plaintiffs and diverted the public to their own business. Thus, two of the three counts required to establish a passing off action were clearly established. Interestingly, for the damages count, the Court rightly pointed out that the form of damages is unrestricted, and Plaintiffs can suffer damages even from a loss of control over its mark.
However, the quantification of damages in this case was a peculiar task especially because calculation of the extent of sales, advertising etc. appeared almost impossible without the response/engagement of the Defendants in the proceedings. The Court took a remarkably interesting approach around this predicament. Taking into account the 177 followers of the Defendants LinkedIn page for ‘AMUL CANADA’, the Court concluded that a significant number of people continue to be deceived by the Defendants into believing that Defendants are somehow associated with the Plaintiffs. The Court went on further to state that, there might be others who are not following the Defendants’ LinkedIn page but might have come across the same and been deceived in the past. The Court therefore agreed to grant damages as sought by the Plaintiffs.
In comparison to the thorough enquiry for the passing off action, the counts of trademark and copyright infringement were fairly simple to establish. The Plaintiffs owned registrations for the marks AMUL and AMUL THE TASTE OF INDIA in Canada and therefore any unauthorized use by the Defendants even for mere advertising purposes over social media, amounted to infringement. Similarly, the unauthorized copying and reproduction of the Plaintiffs’ literature (available on their website) amounted to copyright infringement.
Accordingly, the Court permanently restrained the Defendants from using the Plaintiffs’ AMUL Marks, directed them to immediately transfer their LinkedIn page to the Plaintiffs and also to provide a detailed list of entities that contacted the Defendants about their business through the LinkedIn page.
The approach taken by the Court in this case is of particular relevance in the current age of social media dominance. The Court has gone a step ahead to appreciate the impact social media has on a consumer. The judgement will act as a precedent for cases where the only evidence that a plaintiff has is the use of its mark by a defendant over social media. In addition, the case is of particular importance to Amul, as its marks are now recognized as reputed in a foreign jurisdiction, and also have a successful record enforcement there. For the Indian business community, it is a welcomed judgement as the goodwill earned by a homegrown brand over decades has been recognized and protected by an overseas court.
Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.
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