Amul: the Taste of India and Its Stalwart Reputation

By Ananya Banerjee and Titiksha Sinha

In a recent judgment, the Hon’ble Delhi High Court’s decision on April 04, 2024, in the case of Kaira District Cooperative Milk Producers Union India Ltd. & Anr. V. D N Bahri Trading as the Veldon Chemical and Food Products & Anr ., has affirmed the strength and recognition of well-known trade marks in India. This recognition is not just a testament to AMUL’s enduring legacy in the Indian market, but also a significant milestone in the realm of intellectual property rights. This article delves into the key points of the case, the legal issue at stake, the court’s decision and the importance of trade mark search under Rule 33 of the Trade Marks Rules.

I. Background of the case

The Petitioner, Kaira District Cooperative Milk Producers Union India Ltd., which operates under the name “AMUL”, had filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999 against D N Bahri trading as the Veldon Chemical and Food Products challenging their registration for the mark provide Registration No. 1182469 in Class 32.

II. Submissions by the Parties

1. On Behalf of the Petitioner

   1. The Petitioner also referred to as “AMUL” (earlier known as ANAND MILK UNION LIMITED), is a well-established name in the Indian market, and has several registrations for the mark AMUL and variations thereof in various classes including Class 32, few of which are tabulated below-

      Registration No.	Application Date	User Claim	Trade Mark	Class and goods	Status
      236457	July 16, 1966	February 15, 1956		CLASS     05 – Infants and invalids foods; and dietetic foods.	Valid and subsisting registration
      810876	July 20, 1998	Proposed to be used		CLASS 32 – Mineral and aerated waters and other non- alcoholic drinks, syrups and other preparations for making beverages.	Valid and subsisting registration

      The Petitioner had demonstrated that AMUL was in all kinds of edible products including non-alcoholic drinks (under AMUL tru), and not just dairy.

   2. The Petitioner’s had argued that “AMUL” is a well-known trade mark, recognized as such since 2011, by the IPAB. They also stated that they have numerous court decisions in their favour granting them special recognition in India and it has become a common household word for dairy products (Gujarat Cooperative Milk Marketing Federation Limited & Ors. v. Maruti Metals ). Apart from the statutory right that flows from the registration, they drew the attention towards the net annual financial report of “AMUL” for the year 2021-22 in sales which were Rs. 46, 480/- crores in 2021-22, the marketing / promotional expenses were in the range of Rs.1,187/- crores.
   3. The Petitioner had claimed that the Respondent’s mark vide Registration No. 1182469 in Class 32 was filed on March 12, 2003, with a user claim of December 1957 however, no supporting documents have been filed in this regard. Therefore, the registration shall be removed under Section 47 of the Act for non-use.
   4. Moreover, it was contended that such goods of Petitioner and Respondent No.1 would be stocked on similar shelves and shops and therefore, the likelihood of confusion is extremely high. Reference was also made to a decision of the High Court of Calcutta in CS/107/2020 dated 22nd March 2021, being Kaira District Cooperative Milk Producers Union Ltd & Anr. V. Maa Tara Trading Co. And Ors. wherein the defendant’s mark was injuncted, where the defendant was using the ‘AMUL’ mark for candles being sold at cake shops and confectioneries.
   5. The Petitioner also placed reliance on a decision of IPAB in “M/S. F K Bearing Machine Co. Ltd. v. M/s. Modern Machinery Stores”, a decision dated December 16^th, 2020 which endorsed that under Rule 33, the Registrar is obligated to cause an extensive search amongst registers/ pending marks for ascertaining whether there is an existing mark on record identical /similar to trade marks sought to be registered.

2. On behalf of the Respondent

   1. The Respondents had argued that their mark is structurally and visually different from the Petitioner’s mark in Class 32-

      

      They further argued that any similarity was purely coincidental, and claimed that their branding strategy was independently developed and did not infringe on the Petitioner’s mark. They had further claimed that the Petitioner’s main area of business is milk and milk products, whereas they deal in mineral aerated water.

   2. They argued that “AMUL” is a generic word and cannot be monopolized as a trade mark as it is derived from the Hindi word “AMULYA”.
   3. The Respondent claimed that their user claim of 1957 precedes the proposed to-be-used claim of the Petitioner in their application filed in 1998 in Class 32, and further claimed non-use against the Petitioner’s registration in Class 32. Further reliance was placed on a decision of the Hon’ble Supreme Court in Nandini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited[1], in particular, paragraph no. 32 to assert that “if a manufacturer has no bona fide intention to trade in goods and articles falling under the same classification, it should not be allowed to enjoy the monopoly in respect of all the articles in the said classification.”
   4. As regards the well-known mark declaration under Section 2 (z) (g) it was only made in 2011 and the Respondent’s impugned mark was already registered much prior and could not therefore be struck off the Register merely on that basis.

3. Issues:

   1. Whether the impugned mark “AMUL” should be removed from the register of trade marks for non-use under section 47 of the Act?
   2. Whether the registration of Respondent no.1’s mark was valid despite the Petitioner’s claim of being a well-known trade mark?

4. Court’s decision:

   1. The Hon’ble Delhi High Court, presided over by Hon’ble Mr. Justice Anish Dayal, ruled in favor of the Petitioner, acknowledging the “AMUL” trade mark’s widespread and long standing significance across the country. The court determined that AMUL mark had developed a distinct reputation and goodwill, warranting broader protection against unauthorized use, including non-competing products. The court noted the distinctiveness of the word ‘AMUL’ as the acronym for Anand Milk Union Ltd. and its recognition as a well-known trade mark in 2011.
   2. The High Court emphasized “…There is little doubt that the trade mark ‘AMUL’ has gained a wide, expansive, comprehensive and nation-wide reputation and products of ‘AMUL’, which have gone far beyond milk and milk products are available not only in shops and retail stores, but also in shops which are operated or franchised by AMUL, selling ‘AMUL’ products exclusively. The mark ‘AMUL’ has therefore acquired huge, undiluted, enduring significance and is relatable to the source of goods of Petitioners. Also, its protection would transcend all classes having been declared a well-known mark…”
   3. Hon’ble Mr. Justice Dayal rejected the Respondent’s plea that “AMUL” was a generic term, emphasizing the mark’s distinctiveness. The court also noted that the Respondent did not submit any documentary evidence to support their claims of using the “AMUL” mark since 1957, whereas the Petitioner has registered for AMUL since 1956 in various classes.
   4. Hon’ble Mr. Justice Dayal also observed that Rule 33 is prefaced by ‘shall’ and is therefore mandatory and also directs the Registrar to search not only the registered marks but also those that have been applied for. Not only that, the mark ‘AMUL’ had a reputation since much before 1998 and it was incumbent upon the Registrar to have taken notice of the many registered marks in various classes.

      

      In view thereof, the rectification petition was allowed, and the Respondent’s trade mark was ordered to be removed from the register of trade marks.

5. Conclusion:

   1. The Hon’ble Delhi High Court’s decision to recognize AMUL as a well-known trade mark, not only honors the legacy of a brand that has become a household name in India but also establishes a legal precedent for the protection of popular and well-known marks. This particular judgment reflects the changing landscape of intellectual property rights in India, providing a framework for robust, comprehensive, and inclusive brand protection. As we move forward, this decision will undoubtedly serve as a cornerstone for future cases involving well-known trade marks, guiding both the judiciary and businesses in their efforts to protect the integrity of brands from infringement in the Indian markets.The Trade Mark Registry has recently included 150 new trade marks that have been officially recognized as well-known. This expanded list underscores the significance and enhanced legal protection for famous trademarks, safeguarding substantial investments companies have made in their businesses.

Arjun Sehgal, Former Intern at S.S. Rana & Co. has assisted in the research of this article.

[1] (2018) 9 SCC 183 (decided on July 26, 2018)

Related Posts

ITC Bukhara taking Indian Cuisine to “Well-Known” Status