Introduction:

The Supreme Court held that it is insignificant whether the plaintiff and the defendant trade in
the same field or in the same or similar products. The court laid down certain criteria to
determine passing off of an unregistered trademark:
• The nature of the marks (word, label or composite);
• The degree of resemblance between the marks;/
• The nature of goods for which the marks are used;
• Similarities in the nature, character and performance of goods of rival traders;
• The class of purchasers who are likely to buy goods bearing the marks;
• The method of purchasing the goods or placing orders; and
• Other circumstances that may be relevant.

CASE 1:

Kaira District Cooperative Milk Producers Union Limited vs Shri Shakti Dairy

After a 20-year-old legal battle, Kaira District Cooperative Milk Producers Union Limited
popularly known as Amul has successfully protected its trademark from Shri Shakti Dairy and
Kuldeep Enterprises, who were held by the Commercial Court in Vadodara to be guilty of
infringing Amul's trademark by selling and marketing their products under names that were
matching with Amul's original tradename.
It was held by the Vadodara Commercial Court that the usage of the name "Anul" by the
Defendants was an infringement of the Plaintiff's trademark and brand name "Amul". The
reasoning used by the Court to arrive at this conclusion was that the Defendant's tradename of
"Anul" rhymed with the Plaintiff's tradename "Amul" and was thus very likely to cause
confusion in the mind of the consumers.

Brief Facts

 In 1998, it was brought to the notice of Kaira District Cooperative Milk Producers Union
Limited, known as Amul Dairy and the Gujarat Cooperative Milk Marketing Federation
Limited (hereinafter referred to as 'the Plaintiffs') that a private dairy named Shri Shakti
Dairy (hereinafter referred to as 'the Defendant') based in Naroda was selling milk
pouches very similar in name and design to its trademarked brands 'Amul Taaza' and
'Amul Shakti'. The copied pouches were being sold by Kuldeep Enterprises as Anul Taaza
and Anul Shakti.
 After they learned of it, the Plaintiffs sent a legal notice to the Defendant as well as
Kuldeep Enterprises, who were marketing "Anul Shakti" and "Anul Taaza".
 The Defendant continued to sell their products with the similar brand names over the
years. The Petitioner then moved to the District Court in Nadiad against them.
 Later, the case was transferred to Vadodara where a new Commercial Court had been
set up.
Issues

 Whether Defendant's actions of selling and manufacturing their goods by the name of
"Anul" under the names "Anul Shakti" and "Anul Taaza" was an infringement of the
trademarks of Amul?

Plaintiff's Contention

 It was contended that the Defendant was engaged in the selling and manufacturing of
items named as "Anul Taaza" and "Anul Shakti", which were deceptively similar to
Amul's well-known brands "Amul Taaza" and "Amul Shakti".
 It was argued that the products of the Defendant were sold at village areas under the
name "Anul" where the village folk could very easily get confused as it would be difficult
for them to differentiate between the two.
 It was also argued that the color scheme used by Anul on their dairy pouches was also
similar to that of Amul's.
 It contended that the Defendant's actions of selling their products under the deceptively
similar name of Anul, using similar get up in the packing and using an identical color
scheme highlighted the Defendant's malafide intention of imitating the trademark and
reputation of the Plaintiff.

Defendant's Contentions

 It was contended that there was no scope for confusion to be caused to the customers
because the names used for its brand was phonetically different.
 It was submitted that there were others as well who were imitating the labels of the
Plaintiff Amul, and thus, Amul Dairy did not have any monopoly right on the said label
and trademark.
 It was argued that the case was misconceived because the Defendants have themselves
coined and invented the term "Anul".

Court's Decision

 It held that the brand names "Anul Taaza" and "Anul Shakti" rhymed with the names of
the products of the Plaintiff. Therefore, the brand names were deceptively similar to
Amul's brand name and was likely to cause confusion among customers.
 The Court took note of the fact that there were several documentary evidences of the
registration of Amul and its milk brands that were produced. It was thus held to be clear
that "Amul" is the registered trademark of Amul Dairy. Moreover, the Defendant failed
to furnish any evidence to prove that "Anul" was coined and invented by it.

Thus, the Defendant, its marketing firm along with their agents, dealers and distributors were
injuncted from manufacturing, processing, marketing and packing under the impugned labels.
The Defendants were restrained from selling their dairy products under the name "Anul", "Anul
Shakti" and "Anul Taaza" or any other deceptively confusing trade name.

Case 2:
Coca-Cola Co. Vs. Bisleri International Pvt. Ltd.

Facts:

Bisleri International Pvt. Ltd (Defendant) is an Indian beverages company, best known for
bottled water. It sold and assigned the trademark ‘MAAZA’ including  the right to formulate,
intellectual property right and goodwill attached to the mark for India to Coca-Cola. 

In the year 2008, the defendant filed an application for registration of trademark ‘Maaza’ in
Turkey, and then started exporting the mango flavoured fruit drink with the mark ‘Maaza’. 

Coca-Cola Co. (Plaintiff) filed a petition for permanent injunction and damages for passing-off
and infringement of trademark.

Issue:

Issue before the hon’ble Delhi High Court was, whether exporting a product with the mark is
considered as infringement in the exporting country.

Arguments:

It was argued on behalf of the Plaintiff that as the mark ‘Maaza’ with regard to Indian market
was assigned to Coca-Cola, any manufacture of the product with such mark whether for sale in
India or for the purpose of export would be considered as infringement.

The Defendants argued that as the product is sold in Turkey and not in India, Plaintiff’s rights
are not being infringed. It was further argued as the mark ‘Maaza’ was registered by the
Defendant worldwide, can sell products with that mark anywhere on earth.
 

Decision:

It was held that exporting of goods from a country is considered as sale within the country from
where the goods are exported and the same amounts to infringement of trademark. As the
Defendant were manufacturing and exporting the product with the mark ‘Maaza’ from India,
Delhi High Court had jurisdiction to entertain the matter. Court granted an interim injunction
against Defendant from using the mark in India as well as for export market.