With the rapid advent of globalisation and the world becoming one big marketplace for trade and commerce, brand owners have also often indulged in trademark enforcement in foreign territories based on cross-border reputation attained by their trademarks.

One such example is the recent instance where AMUL, one of the largest food brands in India which is being marketed by Kaira District Co-Operative Milk Producers’ Union Limited (“Kaira/Plaintiff/AMUL India”) has moved the Federal Court of Canada against Amul Canada and 4 others. The websites of AMUL displays the trademark and its tag line as well which is a registered and well-known trademark not only in India but also in Canada. Sometime in January 2020, Kaira found that the defendant had blatantly copied their trademark along with tagline and created a page for it in LinkedIn. It was also found that the defendant (AMUL Canada) started selling and marketing dairy products using the page they created on LinkedIn. The defendants claimed themselves to be Kaira based on the information available on their website. The defendants had copied everything about Kaira’s well-known trademark without changing a thing which was likely to cause visible confusion among the public. The Defendant also appeared to have employees in Canada even though the Plaintiffs had never licensed nor provided consent for either Amul Canada or any of the four individual Defendants to use the Plaintiffs’ trademarks and copyrights in any manner. Following the evasive behaviour of the Defendants and the fact that the Plaintiffs had exhausted all reasonable attempts in demanding the Defendants to cease and desist their conduct both prior to and through the commencement of these proceedings, the court held that the Plaintiffs had the right to bring the Motion for Default Judgment in ex-parte manner to stop the blatant abuse of their intellectual property.

Passing off has been statutorily codified in section 7(b) of the Trademarks Act, RSC 1985, c T-13 (Trademarks legislation of Canada). The elements for establishing passing off are- the existence of goodwill; the deception of the public due to misrepresentations; and actual or potential damages to the plaintiff. The elements of passing off was established in this case obviously and thus, the Federal Court of Canada held that the Defendants had engaged in deliberate deceitful conduct and had channelled public attention to its business in such a way as to cause confusion in Canada between the goods and business of the Defendants, and those of the Plaintiffs. Accordingly, the Bench stated that there were clearly potential damages that could have been caused, either through sales, marketing, distribution, and/or recruiting employees, through the unauthorized disguise of Amul Canada. Hence, concluding that each of the three elements was met in the instant case, the Bench stated, “Not only has the Amul brand existed for well over 50 years and is advertised globally through online and other channels – and thus acquired distinctiveness over time – and the volumes of milk and cheese distribution illustrate that Amul products have a reputation within at least a certain segment of consumers of its dairy products in Canada.” It is also pertinent to note that Kaira was awarded damages and costs for the trademark and copyright infringement actions indulged in by the Defendants.

The above judgement of the Canadian court is certainly a welcome decision for Indian brand owners and businesses who propose to take their brand and business globally.