Products of commercial viability gain eminence through their trade names and trademarks. As a result these become the centroid for a conflict to arise. This is mostly observed in goods belonging to the same class or similar trade, the issue complicating itself when their roots of origin share some mutual record. In such a scenario, the dynamics need to be examined under the microscopic eye, as elucidated in the case of Mother Dairy Fruit & Vegetables P. Ltd. & Anr. v. Gujarat Cooperative Milk Marketing Federation Ltd.& Ors. 2006 (32) PTC 593 (Del)

Mother Dairy Fruit & Vegetables P. Ltd., the plaintiffs in the present suit as well as, Gujarat Cooperative Milk Marketing Federation Ltd. (GCMMF), owners of Amul, are well known names in the dairy industry. This suit was moved to obtain an order for permanent injunction restraining the defendants from manufacturing, selling, stocking and carrying out other marketing operations, directly or indirectly with respect to milk and milk products including but not limited to ice creams and frozen desserts, or any other goods bearing an identical or deceptively similar trademark. The prayer also included a grant for delivery up of all such identical materials apart from a rendition of accounts and damages worth Rs. 20 Lakhs. Further an application under Order 39 Rules 1 and 2 r/w Section 151 of the CPC, 1908 was also moved, for the grant of an ex parte injunction.

The plaintiffs contended that the trademark and trade name 'Mother Dairy' was in use since 1974, and that the same was responsible for distinct status and rights acquired. Whereas the defendants contended that 'Mother Dairy' is infact a concept and a generic term and is incapable of registration and hence they have adopted the concept. This they claimed would justify the usage of the mark by them. In furtherance they argued that they were using the unit of 'Mother Dairy' for the packing all the while and as such they are entitled to even use the term as the said corporate or manufacturing unit name as their trade name and the plaintiffs infact and in law could not raise any grievance in that regard.

Referring to the authorized signatories and probing into the inception of 'Mother Dairy', it was stated that though the ownership and title remained with the one of the plaintiffs, yet the same was licensed to the other plaintiff for marketing and manufacturing purposes. The mark was used so extensively that it appeared to be emanating from the plaintiffs' business alone. They claimed to have spent huge sums on advertising their products.

The Court observed that GCMMF was provided financial and technical assistance by the National Dairy Development Board, which set up 'Mother Dairy'. Further, a dairy by the same name was claimed to have been set up at Gandhinagar, which resulted in the incorporation of other defendant. The defendants rejected the claim of the use of the term 'Mother Dairy' as part of their trademark in Gujarat and were held to be users of 'Amul'. It was contended that the adoption of names such as 'Amul', 'Sagar' and 'Snowcap' was a conscious attempt, and that their adoption of the plaintiff's mark was an attempt in the furtherance of confusion. The floating of advertisements bearing the name 'Mother Dairy' was stated to be an attempt to usurp the plaintiff's intellectual property rights vide newspaper advertisements and pamphlets.

In answer to this, a detailed written statement was filed. Taking into consideration, the objections, with regard to the Gujarat Cooperative Societies Act, 1971, the maintainability of the suit was not served upon the defendants, and that the same had not been instituted by a duly authorized person and the present suit was stated to be an abuse of law. They submitted that the genesis of Mother Dairy was created by the efforts of GCMMF/Amul and that the claim of the plaintiffs on the trademark was malicious and lacking in substance. Further, asserting ‘Mother Dairy’ to be a concept and as an organizational structure created to ensure good quality, they stated that the same was put to used by different cooperative organizations since their inception and in their own distinct logo style.

The defendants raised the plea of long delay, laches, estoppel and acquiescence and held to have adopted the ‘Mother Dairy’ concept prior to the use by the plaintiffs. They further contended that they began business under the ‘Mother Dairy’ trade name, which was in the knowledge of the plaintiffs. The exclusive right of the plaintiffs to use the mark was specifically denied and disputed.

The plaintiffs via their pleadings and affidavit stated that the mark in contention was conceived, created, used and publicized by them. Referring to the definition of trademarks as per section 2(m) of the Trade Marks Act, the defendants contended that the mark was mere description of the manufacturer unit. It was stated that the mark was not a trademark but a disclosure of where the product was manufactured.

Another contention made by the plaintiffs, relying on the judgments in the cases of Parker-Knoll Ltd. v. Knoll – International Ltd. ((1962) 10 RPC-265 (HL)) and Bajaj Electricals Ltd. v. Metals and Allied Products, Bombay and Anr. (AIR 1988 Bom.167) is that a person cannot use his own name even if it lead to infringement and passing off. Referring to a number of precedents, it was submitted that the balance of convenience was clearly in favour of the plaintiffs. Further more, it was held that an injunction order being prevented would cause irreparable loss to the plaintiffs. Reliance was placed on Union Bank of India v. Naresh Kumar and others (AIR 1997 SC 3) to conclude that the plaint not being signed by a duly authorized person could not become a ground to dismiss the plaint or refuse the grant of an injunction order.

Apart from the averments made, physical samples of the goods sold by the parties were also placed on record and the two were found to be different in packaging and appearance. It was observed that packs marketed by the defendants post-November 2004 had the figure ‘Mother dairy’ printed prominently and the word ‘Amul’ was found missing from their packaging. The main grievance held by the plaintiff was that the defendants made a mala fide attempt to infringe or transgress into plaintiff’s arena on the basis that they were prior users having wide publicity and repute. Referring to Section 2(m) and Section 25 of the Trade Marks Act, 1999, it was propounded that the use of a mark as a trademark or corporate or manufacturing name was synonymous with using a trademark. To support the standing in this and the allied issues, Laxmikant v. Patel v. Chetanbhat and Another (AIR 2002 SC 275) was taken note of.

The basic principles governing grant or refusal of injunction were also considered. Furthermore, the defendants contended that the plaintiffs had put forth different cases in the plaint. During the arguments, it was specifically mentioned that the trademarks were registered under Class 30, while in the course of arguments it was revealed that the goods had registration subsisting both in Class 29 as well as 30. These did not further the case of the defendants, instead the plaintiffs stated that they had applied for under Class 30 while the suit was instituted and that further registration under Class 29 was made. Further they emphasized that their business was mainly concentrated in Delhi.

The Court stating that infringement suits could not be treated vide a straight-jacket formula, held that in consideration of the totality of the issue, the equity tilted more so in the favour of the defendants. The court allowed the application thereby granting an order for ad interim injunction restricting the defendants from manufacturing, selling, offering for sale, advertising and supplying milk and milk products under the pre-dominated trademark ‘Mother Dairy’.

As observed in the above case, it seems that clarity regarding all the aspects of a product is but essential in order to resolve disputes with regard to trademarks held by similar brands. Where the goods of both the parties hold repute and acclaim, are of a similar trade and bear conceptual similarity, the stand taken by the court becomes quintessential, to give an insight to matters that may arise on similar lines.