Kaira District Cooperative Milk Producers Union LTD. & Anr. vs. Amul Brush Enterprises & Anr.

Facts

The plaintiff, Kaira District Cooperative Milk Producers Union Ltd. & Anr., filed a suit alleging trademark infringement by the defendants, Amul Brush Enterprises & Anr., for using the marks AMUL/KBI AMUL on paint brushes and allied products. The plaintiff claimed priority of registration and user. An interim order dated December 20, 2021, restrained the defendants from using the marks, and a Local Commissioner seized approximately 36,000 to 37,000 paint brushes. On July 21, 2022, the defendants agreed to suffer a decree and ceased using the mark "AMUL". The defendants submitted GST returns to argue their inability to pay costs, but the court noted these were mostly nil returns and uncertified. The court referenced a prior case where similar infringement led to costs of ₹4,00,000/-.

Held

The Court held that the defendants' use of the marks AMUL/KBI AMUL constituted infringement of the plaintiff's well-known registered trademark. The reasoning was based on the substantial quantity of infringing goods (36,000-37,000 brushes) found at the defendant's premises, indicating a clear infringement. The Court rejected the defendants' plea of financial incapacity to pay costs, noting that their GST returns were largely nil and uncertified. Furthermore, the Court observed that the defendants' counsel candidly acknowledged compliance with a prior order imposing costs of ₹4,00,000/- in a similar case, demonstrating their ability to pay. Consequently, the plaintiff was held entitled to actual costs. A decree was passed in favor of the plaintiff in terms of Prayers A and B of the suit. The plaintiff was directed to present the bill of costs before the concerned Taxation Officer. The defendants were permitted to dispose of the seized brushes after effacement of the offending logo within 8 weeks.

Key Issues

1. Whether the defendants' use of the marks AMUL/KBI AMUL constitutes infringement of the plaintiff's well-known registered trademark, as per Section 29 of the Trademarks Act, 1999? 2. Whether the defendants are financially incapable of paying costs awarded in the suit, as evidenced by their GST returns? Contentions: Petitioner/Plaintiff: Argued that the defendants infringed their well-known trademark AMUL/KBI AMUL. Relied on the large quantity of infringing goods seized and the prior order restraining their use. Argued that the defendants' GST returns were not indicative of financial incapacity, citing a precedent of a Coordinate Bench imposing significant costs in a similar case (Satnam Brush Industry v. Kori Brush Industries). Revenue/State: The judgment does not record any specific arguments from the revenue or state as this is a commercial suit between private parties. The defendants' counsel acknowledged that the prior order imposing costs had been complied with.