WELL-KNOWN TRADEMARK: A JUDICIAL PHIZ

Mother Dairy Fruit & Vegetable Pvt. Ltd. is a wholly owned subsidiary of National Dairy Development Board (NDDB), established and constituted under the National Dairy Development Board Act, 1987. The said body corporate is the registered proprietor of the trademark “MOTHER DAIRY” engaged in selling various products, namely, liquid milk, dahi (curd), ice creams, dairy whitener and butter etc. The said mark and several of its formative variants are duly registered under Classes 29 and 30 encompassing a wide range of products. The need for such scrupulous introduction is basically to try and establish the goodwill as earned by the brand. The said brand is quite well-known with regard to the goods that it offers for sale, so much so that customers are well aware of its existence and relates to the goods as sold under the same thereby making the trademark distinctive and capable of distinguishing its goods from that of another.

Section 11 (6) to (9) of the Trade Marks Act, 1999 lays down the following pointers for determining a mark to be designated as a well-known trademark:-

  • Knowledge of the existence of the trademark amongst a certain section of public
  • Extent of use of the trademark over a given geographical boundary
  • Nature and extent of advertisement and/or promotion of the trademark
  • Declaration by any Court that the trademark is a well-known mark

The trademark “MOTHER DAIRY” has duly conformed to all the conditions as required to be tagged as a well-known trademark.

The question is that “is a trademark really protected?”

Albeit the trademark “MOTHER DAIRY” has sought for due protection under the Trademark Laws in India, there still exists unscrupulous imitation of the same. A recent Delhi High Court judgment throws light upon the extent of imitation and how far the law seeks to protect such unwarranted imitation. In Mother Dairy Fruit & Vegetable Pvt. Ltd. v. S. K. Raheem & Anr., it was found that the defendants were engaged in manufacture, sale and distribution of their impugned products under identical or deceptively similar trademark “VINAY MILK” in packaging/ trade dress of the plaintiff. Such activities were supervised from their manufacturing facility in the city of Hyderabad in addition to an agency that was engaged in marketing the said impugned goods of the defendants.

Mother Dairy Fruit & Vegetable Pvt. Ltd. instituted the suit alleging that the impugned acts of the defendants in copying and slavishly reproducing their trademark and packaging was done with the intention to affect the business, rights and interests amounting to tarnishing and dilution of their trademark “MOTHER DAIRY”; it was a clear attempt to pass off all the goods of the defendants as those of Mother Dairy Fruit & Vegetable Pvt. Ltd. Additionally, the latter also prayed for a direction to the defendants for surrendering all the printed matter, including packaging, stationery, dyes, blocks, cartons, labels, etc. bearing the impugned trademark and packaging as mentioned in the plaint to the authorized representative of Mother Dairy Fruit & Vegetable Pvt. Ltd. for the purposes of destruction and further for rendition of accounts of profits made by the defendants.

By virtue of such extensive protection as sought under the trademark laws by Mother Dairy Fruit & Vegetable Pvt. Ltd. for its trademark “MOTHER DAIRY” and other formative variants, the Delhi High Court passed an ad interim ex parte injunction upon the defendants on the use of their mark “VINAY MILK”. The defendants were correctly restrained from copying, marketing and packaging the trademark logo “MOTHER DAIRY” with the distinctive blue and white colour combination; the defendants are free to otherwise market their products under the “VINAY MILK” logo but in no manner representing similarity with the trademark “MOTHER DAIRY” and its formative variants.

However, what catches the eye is that the defendants as held guilty of passing of their goods under the earned goodwill of another was directed to pay only an amount of Rs. 20,00,000 and costs as incurred in the proceedings; no relief was granted in the nature of direction for delivery of printed material to the representatives of Mother Dairy Fruit & Vegetable Pvt. Ltd., no payment of profits as accrued by the defendants on grounds of unauthorised copying.

This leaves us pondering that what could be the possible reason for the Hon’ble Court to not grant a larger punitive direction upon the defendants, for eg., keeping silent over attaching their account of profit. The only plausible explanation would be lack of cogent evidence in support of such allegation as presented by Mother Dairy Fruit & Vegetable Pvt. Ltd. in support of their prayer. Such emphasizes the deficit as prevailing in the legal system due to which Mother Dairy Fruit & Vegetable Pvt. Ltd. had an unyielding outcome when compared to the quantity of products sold by the defendants, more so being identical goods, sold over the same counter. The judgment appeared as a mere mandatory corollary to trademark infringement and not a lesson well taught.

 

Ms. Sulagna Nandy

Trademark Attorney

L.S. Davar & Co.

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