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Thirumala Milk Products v. Tirumalaa Daairy: Madras HC injuncts Kute from using Thirumala’s trademark, records clear infringement
The Madras high court has injuncted Kute Group from making use of the name Tirumala in marketing, and sale of their products.
(Tirumala Milk Products Private Limited v. Swaraj India Industries Limited)
Milk marketing company Tirumala Milk Products obtained an injunction in their favour against Kute Group’s Tirumala Dairy in respect of the utilization of the former’s registered marks ‘Thirumala’ and ‘Tirumala’.
Recording a clear finding of infringement also as passing off Justice C Karthikeyan stated:
“... the defendants have commenced aggressive marketing of the products and have advertised the products. This itself can be termed as passing off. There needn't be actual sales of the products, but when there's aggressive advertising and soliciting of the purchasers of the plaintiff, and holding out, though the products haven't been launched, still they're “a name of trust within the dairy sector', it's evident that the intention of the defendants is to encroach and cash in of the reputation already built by the plaintiff.”
The Facts:
Tirumala Milk Products Ltd. filed an infringement suit and an application for an injunction within the Madras supreme court after the Kute group was found employing a mark Tirumalaa Daairy that was argued to be phonetically similar to the Thirumala group’s trademarks.
The Contentions
What the Plaintiff said:
During proceedings in respect of the injunction application, the plaintiff delivered to the Court’s attention that it had been a dominant foodstuff marketer in the various South Indian States and in West Bengal. It had recently expanded its reach to Maharashtra after it entered into an agreement with a corporation based in Latur to sell the company’s products under the name Thirumala across Maharashtra.
The defendants moved into the same line of products and opened three units in the State. On their website, the defendants stated that they were ‘a name of trust within the dairy sector' though that they had not even started a business.
The plaintiffs argued that the defendants' act of using a deceptively alike name to market and brand their dairy products was done with the sole intention to mislead the general public and to take advantage of the reputation and goodwill of the plaintiff. There was every likelihood of confusion and the actions of the defendants were completely carried out in a bad faith and dishonest way, it was vehemently asserted.
What the Defendants said:
The defendants on the other hand stated that the name the plaintiff adopted was not a special name. It was the name of Lord Venkateshwara’s abode, it had been stated. The plaintiffs themselves had mentioned this reason whilst rebutting objections to the registration of their trademark. They had additionally also said that the name Thirumala was utilized by hundreds of other businesses. The defendants made use of this name because they were devotees of the deity and their spiritual guru had advised them to do this.
The Plaintiff's rejoinder:
The plaintiff, while accepting that they had made the averments during the registration process of their mark, stated that the other businesses had been in other trades. Apart from this, their mark had been registered in spite of the initial objections, they stated in rejoinder.
Their product had obtained a distinctiveness and therefore the name Thirumala came to be related to their dairy products. It was reiterated by the plaintiffs that the defendants sought to require advantage of their goodwill, which could potentially dent the reputation of the plaintiff’s products.
It was set forth that the plaintiff was already getting calls from their suppliers in Maharashtra after the defendant started promoting their phonetically similar mark.
What did the Court rule and how was the pronouncement reasoned?
Ruling that the plaintiff had established a prima facie case for the permit of an injunction, the Court found it significant that the defendants had not turned down the plaintiff’s specific averment that it had a strong presence in Maharashtra and the charge that the defendants attempted to solicit business. These were taken as admitted facts, which in the first impression made the act infringement.
The Court rejected the defendant’s offer to feature the group name before the "Tirumala" within the defendants' mark, terming it a ploy because the group itself proceeded to vary their name to Tirumala Dairy.
An interim injunction was ultimately granted because the plaintiff was ready to show:
The two companies marketed their products under an identical name that raised a likelihood of confusion;
The defendants continued to utilize the purportedly infringing mark;
The defendants aggressively marketed the product and were
directly involved in drawing away customers.
The injunction will last till the discarding of the original suit that is pending before the High Court.
Adv. PV Balasubramaniam argued for the plaintiff and Adv. Hiren Kamod represented the defendant Company and its Directors.
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