Wednesday, 25 January 2017

India: Mother Dairy given ‘well-known’ mark status by the Delhi High Court

In a recent case decided by the Delhi High Court, Justice R.K. Gauba granted a permanent injunction in favor of Mother Dairy (hereinafter referred to as the ‘Plaintiffs’), restraining the use of its trademark/trade dress by the S.K. Raheem & Others (hereinafter referred to as the ‘Defendants’). One of the key factors providing a firm basis to the Court’s conclusion was that Mother Diary is a ‘well-known mark’.

Brief Facts of the Case:

The Plaintiff is 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 product at reasonable prices.

Since 1974, the Plaintiff has been selling various products such as curd, milk, ice cream and butter under the Trade name ‘Mother Dairy’. It has also obtained registration of 17 of its products, majorly under classes 29 and 30.

With reference to the Plaintiff’s market share, it contended that they have invested a significant amount of money and efforts in advertising and marketing with a blue-colored logo since 2003, resulting in the logo becoming a major recognition factor with the product and the associated goodwill. It has set up around 14,000 retail outlets and 845 exclusive outlets and has a market share of 66% in the relevant market in Delhi.

Plaintiff’s Submissions:

The Plaintiff contented that they learned in June 2010 about the Defendants use of a deceptively similar mark under the name of ‘VINAY MILKS’. It was further stated 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 Plaintiffs claiming its trademark, logo, trade dress and packaging being used by the Defendants, to the Defendants failed to respond.

As a result, this suit was initiated stating that the acts of the Defendants have resulted in passing off, trademark infringement as well as copyright infringement for the use of the Plaintiff’s logo and tarnishment/dilution of their well-known mark. The said conduct on the part of the Defendants makes them liable for passing off, trademark infringement as well as copyright infringement for the unauthorized use of the mark

Decision of the Court:

Since the Defendants did not file any written submissions, even after the due service of summons, the Court decided to proceed ex-parte against the Defendants.

The Court started its observation by stating 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. Also, the blue colored Mother Dairy Logo, which is in question has acquired sufficient distinctiveness to be easily associated and recognized with the products of the Plaintiff by the consumers. This gives rise to the inexorable conclusion that the logo has acquired the status of a ‘well-known’ mark.

The Court agreed with the contentions of the Plaintiff that the trademark/trade dress is deceptively similar and can also create a likelihood of confusion in the concerned market. Also, referring to the fact that both the products are similar and marketed through the same market channels.

On these grounds, the Court held that the Plaintiff has successfully discharged the burden and have successfully proved that the conduct of the Defendants are violative of the Plaintiff’s rights and also have caused damage to the Plaintiff and tarnished its goodwill and reputation. While, the Court granted a permanent injunction against the Defendant, however, it refused to order the granting of damages as the Plaintiff was unable to collect any meaningful evidence in support of these prayers. It was stated that on the basis of a solitary witness no damages could be granted by the Court to the Plaintiff.

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