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February 2017

Trademarks - Well-known mark associated solely with the proprietor

by Tulika Pandey

In December, the Delhi High Court granted permanent injunction in favour of Mother Dairy (the Plaintiff) in Mother Dairy Fruit and Vegetable versus S.K. Rahee [see end note 1]. Mother Dairy instituted a suit in 2010 against S.K.Raheem pleading that use of the logo mark “VINAY MILK” amounts to tarnishment and dilution of the Plaintiff’s trade mark and also leads to passing off, trademark infringement and copyright infringement.

The single judge of the Delhi High Court had earlier granted an ex-parte ad-interim injunction restraining the Defendant from using the above mentioned logo mark.

 

Brief Facts

The plaintiff, Mother Dairy, is an entity operated and financed by the National Dairy Development Board (hereinafter referred to as the 'NDDB') under the Operation Flood programme to facilitate the selling of milk and milk products at reasonable prices.

The plaintiff submitted that since 1974 it has been selling various products such as curd, milk, ice cream and butter under the Trade name 'Mother Dairy' and that it had also obtained registration for 17 of its products, mainly under classes 29 and 30.

The plaintiff also submitted that it had invested a significant amount of money and effort in advertising and marketing its trademark under the blue-coloured logo since 2003, resulting in the logo garnering immense goodwill and being solely associated with the plaintiff and its products. The Plaintiff also submitted that the market penetration and availability is increased through its 14,000 retail outlets and 845 exclusive outlets and that the plaintiff has a market share of 66% in Delhi.

 

Plaintiff's Submissions

The plaintiff contented that they learned about the defendant and use of the mark ‘VINAY MILK’ for its milk products in June 2010. It was further submitted that the plaintiffs sent a cease and desist notice to the defendants on July 13, 2010, to which an indeterminate response was received. A further letter dated August 21, 2010, was sent by the plaintiff asserting its rights in its trademark, logo, trade dress and packaging being used by the defendant, to which the defendant failed to respond. As a result, the plaintiff instituted the present suit to obtain injunction against the defendant’s actions on the grounds of passing off, trademark infringement and copyright infringement which were in addition to tarnishment /dilution of their well-known mark.

 

Decision of the Court

Despite issuance and service of the summons, the defendants did not file any written submissions, and hence the Court decided to proceed ex-parte against the Defendants.

In its first and foremost observation, the Single Judge stated that the plaintiff was the undisputed sole owner of all the rights relating to the packaging/logo associated with the products, referring to the fact that it has received trademark and copyright registration for the same. The Judge went on to note that Mother Dairy’s blue logo mark had acquired sufficient distinctiveness to be solely associated with the plaintiff and is easily associated and recognized with the products of the plaintiff by the consumers. The Judge noted that such association of the trademark by the consumer leads to the obvious conclusion that the plaintiff’s logo has acquired the status of a 'well-known' mark.

The Court accepted the contentions with regard to plaintiff’s trademark/trade dress and agreed that the use of the mark “VINAY MILK” by the defendant, is deceptively similar and will lead to a likelihood of confusion in the concerned market and among the relevant consumers. The Court in order to assess the likelihood of confusion, referred to the fact that both the products are similar, are being marketed through the same trade channels and even the target consumers are the same.

On these grounds, the Court held that the plaintiff had successfully discharged the burden and proved that the conduct of the Defendants is violative of the plaintiff's rights which had also tarnished the plaintiff’s goodwill and reputation. While the Court granted a permanent injunction against the Defendant, it refused to grant of damages in favour of the Plaintiff. The Court observed that the Plaintiff had not adduced any evidence to support grant of damages and the same could not be awarded on the basis of a solitary witness alone.

[The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, Delhi]

End Note:

  1. CS (OS) 2399/2010

 

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