Gujarat Co-operative Milk Marketing Federation Ltd. and ANR. v Terre Primitive and ORS

Case title:  Gujarat Co-operative Milk Marketing Federation Ltd. and ANR. v Terre Primitive and ORS

Citation:  2024 SCC OnLine Del 6486

Case number :  CS (COMM) 768/2024

COURT:  Delhi High Court

Bench:  Hon’ble Ms. Justice Mini Pushkarna (Single Bench)

Date of order:  September 9, 2024

Nature of order:  Ex Parte Ad Interim Injection

Introduction

In an era where foreign businesses ,through digital commerce and social media, can market products directly to Indian consumers without maintaining a physical presence in India, “  trademark infringement has transformed from a territorial concern into   a transnational challenge . The 2024 decision of the Delhi High Court in Gujarat Co-operative Milk Marketing Federation Ltd. and Anr. v Terre Primitive and Ors. addresses this evolving reality.

At its core, the case concerns an Italian company’s adoption of the mark ‘AMULETI’; a word that wholly incorporates India’s most iconic dairy trademark” ‘AMUL’. This article, through this case analysis,   highlights the tension between territorial principles of trademark law and the borderless nature of digital commerce. It demonstrates how Indian courts are increasingly adapting conventional doctrines of  infringement, reputation, and jurisdiction to address contemporary online disputes.

Facts of the case

The plaintiff, Gujarat Co-operative Milk Marketing Federation Ltd. ( Hereinafter referred to as GCMMF) is Asia’s largest dairy cooperative and one of the world’s foremost dairy organisations ,ranked 8th globally by the International Farm Comparison Network. It markets its product under the iconic trademark ‘AMUL’, which has been in continuous use since 1955 and was formally registered in India from 1958 onwards under multiple classes including classes 5, 29, 30, 31, 32 ,and 35. The mark features on the Indian trademark of the official list of wellness trademarks and was recognised as the top food and dairy brands globally in the Brand Finance Food and Drink Report 2024.

The defendant, Terre Primitive is an Italian company engaged in the manufacturing and distribution of cookies and biscuits.  Defendant marketed and sold products under the ‘AMULETI’ brand through its official website and through active promotional campaigns through the tech company META. They entered the market in July 2020.

Representatives of GCMMF discovered them in August, 2024. A comparison of the two marks revealed that the defendant had not merely adopted a phonetically similar name but also had replicated the distinctive script, font styles, and overall visual presentation of the AMUL logo with the soul addition of the suffix ‘eti’. This constituted a brazen attempt to misappropriate Amul’s established goodwill and to mislead consumers into associating ‘AMULETI’ products with ‘AMUL’ as per the Plaintiff.

GCMMF institutes civil suit CS (COMM) 768/2024 before the Delhi High Court seeking a permanent injunction, a declaration of passing off damages and rendition of accounts. Simultaneously it moved an application for an ex parte ad interim injection. Despite being served in advance no representative of the defendant appeared before the court on the date of hearing.

Legal issues

1. Whether the mark ‘AMULETI’ is phonetically, visually and structurally deceptively similar to the registered and well known Trademark ‘AMUL’ so as to constitute infringement under the section 29 of the Trademarks Act 1999?
2. Whether Terre Primitive’s promotion and sale of products under the ‘AMULETI’ mark through digital platforms accessible in India amounts to passing of by missed representation of trade origin?
3. Whether GCMMF had established a prima facie case, balance of convenience and irreparable harm sufficient to warrant an ex parte ad interim injunction?
4. Weather Indian Courts have jurisdiction over a foreign entity whose infringing digital activities are directed at Indian consumers?
5. Whether third party digital platform such as META (Facebook and Instagram) can be directed to take down infringing content as part of interim Trademark releif?

Petitioners Arguments

Counsel for GCMMF advanced the following arguments in support of the application for interim relief:

• GCMMF has been the registered proprietor of The trademark ‘AMUL’ and its stylised variants since 1958, and the mark has been in continuous and extensive use since 1955 the mark is formally recognised as a well-known trademark by the Indian Trademarks Office, entitling it to the highest level of protection under section 11(6) of the Trademarks Act 1999.
• The mark ‘AMULETI’entered the market in 2020 that is 65 years after ‘AMUL’. The mark ‘AMULETI’ wholly encompasses and retains the plaintiff’s mark AMUL with the addition of the suffix ‘eti’ providing no meaningful differentiation. The Defendant had further adopted a font, script and visual presentation strikingly similar to Amul’s distinctive logo. Overall trade dress of the two marks are similar within the meaning of section 29(2)(b) and section 29(4) of the act.
• Both parties operate in the food and consumable good segment thus sharing an identical target mark and consumer base.
• There is high chance of rendering confusion in the mind of an average consumer of ordinary intelligence and imperfect recollection; therefore satisfying the standard for infringement under the act.
• The defendants active digital marketing through its website and META company constitutes use of infringing mark within the territory of India as META accounts are accessible to Indian consumers. It brings the conduct squarely within the jurisdiction of Indian courts and the provisions of the Trademarks Act 1999.
• In the absence of interim relief, GCMMF would suffer irreparable

harm to its goodwill and brand equity built over 6 decades, which could not be adequately compensated through damages alone.

Respondent’s arguments

There were three defendants in the suit. Defendant no. 1 was Terra Primitive,the Italian company and primary infringer. Defendant no. 2 was an unnamed/John Doe party that served as part of the border ‘ors’ array. Defended number 3 was meta platform inc., the owner and operator of Facebook and Instagram, added as a necessary party on account of hosting and facilitating the infringing promotional content. The defendant Terre Primitive did not appear before the court despite advance service of notice and therefore no formal arguments were placed on record on behalf of the respondents. The Court accordingly proceeded  at ex parte. It may have been noted for purpose of a balance analytical assessment that potential defences available for the defendant could have included the following:

• The word ‘AMULETI’ is a common Italian noun meaning amulets or charms suggesting a legitimate etymological basis for the mark independent of any association with the Indian dairy brand.
• Terre Primitive operates primarily in the Italian and European market and its products cookies and biscuits are catagorically distinct from Amul’s core dairy offering such as butter cheese and milk potential undermining the claim of consumer confusion.
• The defendant may have argued that its digital presence while technically accessible in India was not specifically directed at or targeted towards Indian consumers thereby contesting the jurisdictional basis of the suit.

Court’s reasoning and analysis

Justice Mini Pushkarna, proceeding ex parte conducted a thorough analyses of the plaintiff submission against the established legal standards for Trademark infringement passing of, and interim injunction under Indian law.

On the question of deceptive similarity the Court observed that the mark ‘AMULETI’ wholly subsumed and incorporated the registered and well known Trademark ‘AMUL’. Applying the principle that marks must be assessed by their overall impression on an average consumer of ordinary intelligence and imperfect recollection. The Court held that the phonetic and visual similarity between the computing marks was self-evident and striking. The adoption of a near identical font style and overall visual presentation further strengthened the inference of deliberate miss appropriation. Accordingly, the Court found a prima facie case of infringement under section 29(2)(b) of the Trademarks Act 1999. On the applicability of section 29(4) the Court took note of ‘AMUL’ status as a formally recognised well and Trademark under the Indian trademarks office registry.

On jurisdiction the Court took a notably progressive position as it held that the defendants maintenance of a website and active social media accounts, accessible to Indian consumers constituted use of the infringing mark within Indian territories. This is sufficient to confer jurisdiction on Indian Court.

On the three-pronged test for interim injunction- prima facie case, balance of convenience, and irreparable harm; the Court held that all three conditions were satisfied in favour of GCMMF. Crucially,  the Court directed META inc. (defendant number 3) to block and delete all Facebook and Instagram accounts and post promoting the ‘AMULETI’ brand.

Judgement

The Delhi high court granted the ex parte ad interim injunction in favour of GCMMF and  issued the following directions operative under the next date of hearing:

• Terre Primitive and all forces acting on its behalf were restrained from selling, marketing, advertising, promoting or in any manner using the mark ‘AMULETI’ or any other mark identical or deceptively similar to ‘AMUL’ in the physical market or E-Commerce platform or on any online platform.
• Terre Primitive was directed to surrender all goods, packaging, materials, cartoons, rappers and labels bearing the impound mark to the plaintiff for destruction.
• Terre Primitive was directed to take down all product listings bearing the impugned mark from its official website.
• META Inc. (Defendant no. 3) was directed to block suspend and delete all social media accounts and posts on Facebook and Instagram through which Terre Primitive was promoting the ‘AMULETTI’ brand.

RATIO DECIDENDI

A registered and well known Trademark is entitled to protection under section 29(2)(b) and 29(4) of the Trademark Act 1999 against a foreign entity’s use of a deceptively similar mark in digital commercial activities accessible to Indian consumers, and Indian Court posses jurisdiction over such cross-border digital infringement. Social media platforms may be directed as third party respondents to take down infringing content as part of interim Trademark relief.

Implications and impact

For Indian brands operating in a globalised marketplace the case provides an important tool i.e. the ability to obtain Swift ex parte release against foreign infringes whose digital conduct target Indian consumers, without the need to litigate in foreign jurisdictions. This is particularly significant for small and medium Indian enterprises that lag the resources for multi-Jurisdictional litigation. From a comparative perspective the court approach aligns with the European Union’s Digital Service Act 2022 framework, which imposes active obligations on very large online platform to address IP violations and with the UK Supreme Court’s reasoning in Starbucks (HK) Ltd v British Sky Broadcasting Group PLC on the jurisdiction reach of trademarks rights in the digital era.

Conclusion

Gujarat  Co-operative Milk Marketing Federation Ltd. v Terre Primitive is a landmark 2024 order that advances Indian Trademarks jurisprudence on three important focus the protection of well and marks from cross border digital infringement the assertion of Indian judicial jurisdiction over foreign digital infrangers and accountability of social media platforms and IP enforcement.

For IP practitioners and scholars the case raises important questions about the evolving relationship between territorial trademark rights and the borderless digital marketplace, the standard of similarity in the era of online commerce.

Reference(S):

(Citation and bibliography excluded from word count — formatted in Bluebook 20th Edition)

1. Gujarat Co-operative Milk Marketing Federation Ltd. & Anr. v. Terre Primitive & Ors., 2024 SCC OnLine Del 6486, CS(COMM) 768/2024 (Delhi H.C. Sept. 9, 2024).
2. Trade Marks Act, 1999, §§ 11(6), 27(2), 29(2)(b), 29(4) (India).
3. Information Technology Act, 2000, § 79 (India).
4. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (India).
5. Starbucks (HK) Ltd. v. British Sky Broadcasting Group Plc, [2015] UKSC 31 (U.K.).
6. Brand Finance, Food & Drink Report 2024 (Brand Finance, 2024).
7. World Trademark Review, Leading Dairy Company Triumphs in Cross-Border Infringement Dispute at Delhi High Court, WORLD TRADEMARK REV. (Nov. 14, 2024), https://www.worldtrademarkreview.com.
8. Mondaq, Dairy Drama: AMUL vs. AMULETI In A Trademark Showdown, MONDAQ (Sept. 20, 2024), https://www.mondaq.com.