Kerala Court Awards ₹1 Crore Compensation To 'MILMA' In Trademark Dispute Against 'MILNNA'

The judgment was passed by Smt. Mariam Salomi, Principal Commercial Judge, Thiruvananthapuram.

Facts

The plaintiff is a Co-operative Society incorporated in 1980 and is a state adjunct of the National Dairy Programme 'Operation Flood'. Its flagship brand name “Milma” enjoys a formidable market reputation, goodwill and recall value in the minds of the consumer and members of trade. It is engaged in the business of dairy and dairy derivative products such as curd, clarified butter, butter, cheese, ice creams, desserts, milk -based sweets and chocolates, drinking water, other milk and fruit-based drinks, etc. It has 37 items of registered trademarks with its special style, figures, pictures and colour combination.

In September 2021, the plaintiff came to know that the defendant is engaged in the processing, packaging and marketing of milk under the name “MILNNA” (impugned mark). The plaintiff claimed that it suffered irreparable loss and injury to their business as well their reputation on account of the infringing acts of the defendant. Thus, the plaintiff initiated the present suit for perpetual prohibitory injunction and for realisation of damages from the defendant. Though notice was issued to the defendant, he did not appear before the Court.

Findings

The Court considered the evidence brought in the plaintiff and found that the impugned trademark used by the defendant in his products were deceptively similar to the trademarks of the plaintiffs in Schedules A and B of the plaint.

Distinctive trademark

The trademark “MILMA” was found to be a word invented by the plaintiffs using the words 'milk' and 'marketing'. The said trademark, being a coined one, was completely distinctive in nature and adopted by the plaintiff in 1983.

It observed:

“The font in which the word “MILMA” is written is also unique to the plaintiff's registered trademarks and enjoys a substantial recall value amongst its consumers and members of trade.”

Deceptively similar and violative of Section 29 of Trade Marks Act

The Court found that the impugned mark 'Milnna' is a blatant copy of the prior registered trademark of the plaintiff. It found that the defendant was illegally riding on the wave of the goodwill and reputation earned by the plaintiff.

It observed:

“The defendant is presently misusing the plaintiff's well established registered trademark in the course of trade to ride upon the reputation and goodwill to make illegal profit which is a clear case of infringement of plaintiff's registered trademark under Section 29 of the Trade Marks Act 1999. The reputation and the goodwill enjoyed by the plaintiff for the last several decades would be diluted by the use of the deceptively similar mark by the defendant.”

Well-established in the minds of the public

The Court also found that the consumers and the general public have come to associate the word with the plaintiff's products. It observed:

“The plaintiff's trademarks owing to its continuous and extensive use for the past four decades is well established in the minds of the consuming public and members of trade alike and has come to be associated with the goods of the plaintiff to the exclusion of all others.”

Ordinary consumer with imperfect recollection would associate the trademark with the plaintiffs products

The Court used the test of ordinary person with imperfect recollection in the case. It observed:

“…The packaging consists of the impugned mark 'Milnna', written in the same stylized font along with the device of cow as well as the identical colour combination as that of the products of the plaintiff. The 'device of the cow' and 'the product specification' on the defendant's packaging is placed in exactly the same position as that of the plaintiff…

…The uniqueness of the design of the aforesaid packaging coupled with the use of the plaintiff's trademarks, the ordinary consumer with imperfect recollection and members of trade alike to identify the products as originating from the plaintiff while also creating an assumption in the minds of the consumer regarding the high quality associated with the products of the plaintiff sold under their trademarks.”

Defendant gaining illegal profits

The plaintiff stated that though enquires were made, the exact location of the factory, quantum of trade, details of origin of milk, etc. could not be detected. However, a Facebook video, which showed that consumers were being sold the defendant's products bearing the impugned mark along with the plaintiffs' products, was brought in. It was considered as evidence of the defendant misusing the market value and reputation of the plaintiff. It was also considered as evidence of the defendant gaining illegal profits under the identical/deceptively similar impugned mark.

Plaintiff is a significant player in the market

The Court also considered the fact that the plaintiff is a significant player in the market. It observed:

“The plaintiff has been a significant player in the dairy industry since 1980 and their products are renowned for their purity and strict quality standards…

…also the recipient of several awards and accolades with regard to the safety and quality standards maintained by them with regard to all their dairy and dairy derivative products.”

Dilution of plaintiff's trademark

The Court found that the plaintiff's trademark 'Milma' has become a well-known trademark and use of similar marks would amount to dilution. It observed:

“The reputation acquired by the plaintiff in respect of the plaint A schedule registered trademarks are so enormous that the use of any similar mark by others would result in confusion and deception in the minds of the consumer and members of trade as well as amount to dilution of the plaintiffs formidable brand value and market reputation...”

Confusion in the minds of the public

The channels of trade test, and similarity of product test were applied by the Court in the case. It noted

“…The channels of trade as well as the target audience of both the plaintiff and the defendant is identical. Thus exponentially increasing the likelihood of confusion between the good originating from the defendant and those originating from the plaintiff…

…In all probability, the consumers of the plaintiff's milk and milk products will be misled to purchase the milk and milk products being marketed by the defendant using plaint C schedule impugned mark and trade dress as the same are identical and/or deceptively similar.”

Public deception element

The Court found that there is also the factor of public deception in the case. It observed:

“Furthermore, the element of public deception involved in the matter should be taken into consideration, as the members of the public would be banking on the brand name and goodwill of the plaintiff Trademarks and not expecting to fall victim to the deception perpetuated by the acts of the defendant. Therefore the public at large gets misled in the process and the consequent loss will be solely sustained by the plaintiff.”

The Court felt that the non-appearance of the defendant shows that he is not opposing the claim of the plaintiff.

The Court thus allowed the suit in favour of the plaintiff. A perpetual prohibitory injunction was passed against the defendant, restraining him and his agents from marketing, advertising, offering for sale and, selling milk and milk products using the impugned mark. The defendant was directed to pay an amount of Rupees One Crore with 6% interest to the plaintiff as well as the costs of the suit.

Case No: C. S. No. 169/2022

Case Title: The Kerala Co-operative Milk Marketing Federation Limited v. Jose George

Counsels for the Plaintiff: Advs. V. Ajakumar, Sidharth A. Menon, Thejan Raj, P. Ravikumar, Jishnu Nair, Bharath V. Gopal, Indrajith I.

Counsels for the Defendant: Nil.

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