Delhi High Court: In a rectification petition filed under Sections 47 and 57 of the Trade Marks Act, 1999 (‘the Act’) by petitioner against Respondent 1 seeking rectification of the Register of Trade Marks by removal of Respondent 1’s trade mark 
(‘the impugned mark’), Anish Dayal, J.*, opined that there was little doubt that trade mark ‘AMUL’ had gained a wide, expansive, comprehensive and nation-wide reputation and products of ‘AMUL’, which had gone far beyond milk and milk products were available not only in shops and retail stores, but also in shops which were operated or franchised by AMUL, selling ‘AMUL’ products exclusively. Therefore, the mark ‘AMUL’ had acquired huge, undiluted, enduring significance and was relatable to source of goods of petitioners, also its protection would transcend all classes having been declared a well-known mark. Accordingly, the Court allowed the rectification petition and removed the impugned mark from the Register. The Court also stated that these directions to be carried out within four weeks after the present judgment was pronounced.
Background
Petitioner 1 submitted that it was a co-operative society registered under Bombay Co-operative Societies Act, 1925. Petitioner 1’s former name was Anand Milk Union Limited and therefore, ‘AMUL’ being an acronym was adopted as the trade mark. It was further asserted that trade mark ‘AMUL’ had since then found a distinctive place in Indian history, tracing its roots back to 1946 when petitioner was registered.
Petitioner 1 averred that initially it had consented and allowed other co-operative unions in Gujarat to use the brand name ‘AMUL’, in the spirit of cooperation and goodwill, and to symbolize the Co-operative dairy movement amongst farmers. However, later it realised that with the growing business, it was commercially unwise to market their products with individual brands, and an all-India entity was needed to market the Co-operative’s products. Thus, Gujarat Co-operative Milk Marketing Federation Limited-Petitioner 2 was formed in 1973 under the Gujarat Co-operative Societies Act, 1969. On 12-01-2001, Petitioners 1 and 2 entered into a license agreement, whereby Petitioner 2 was allowed uninterrupted use and management of petitioner’s trade mark ‘AMUL’ and its variants. Petitioner stated that trade mark ‘AMUL’ was also declared as a well-known trademark by the Intellectual Property Appellate Board (‘IPAB’) in 2011.
Petitioners’ grievance was against the impugned mark being registered in respondents’ favour for their application which was filed on 12-03-2023. Petitioner submitted that Respondent 1 had not file any document at all to show that they had been using the said mark since 1957, and only document which had been filed was the trade marks certificates and one singular label 
which had no detail. Thus, petitioners claimed that the impugned mark should be removed as per Section 47 of the Act for non-use.
Comparison between the marks:
Analysis, Law, and Decision
The Court opined that to seek rectification of a mark, petitioner must be able to show that any of the grounds under Sections 9, 11, 47 or 57 of the Act were made out. Further, without drawing a comparison with an earlier registered mark, grounds under Sections 9 and 47 of the Act were available to petitioner to claim that the impugned mark ought not to have been registered on absolute grounds, and if registered, it could be removed for reason of non-use. The Court opined that what was striking in the present case, was that Respondent 1 had produced no document which would prove their use since 1957, as claimed. There was not a sliver of any documentation, photograph, advertisement, invoice or any other visual or documentary proof to support their assertion that they were indeed using the said mark on some goods.
The Court opined that the singular picture provided by Respondent 1 only showed an ‘AMUL Leechi fruit drink’ manufactured by Weldon Chemical and Food Products, which was being operated by Respondent 1. However, there was no detail whatsoever which supported that the said label was used on products since 1957, or even later. Since, Respondent 1 had not stated anything in its response, the Court opined that the ground of non-use would be made out for removal under Section 47 of the Act.
The Court opined that there was little doubt that trade mark ‘AMUL’ had gained a wide, expansive, comprehensive and nation-wide reputation and products of ‘AMUL’, which had gone far beyond milk and milk products were available not only in shops and retail stores, but also in shops which were operated or franchised by AMUL, selling ‘AMUL’ products exclusively. Therefore, the mark ‘AMUL’ had acquired huge, undiluted, enduring significance and was relatable to source of goods of petitioners, also its protection would transcend all classes having been declared a well-known mark.
The Court opined that it was admitted position that petitioners’ application was made in 1998 in the device mark, though it was granted in 2005. Respondent 1’s application was made in 2003 was therefore preceded by more than five odd years by a prior application of petitioner. The Court opined that the mark ‘AMUL’ had a reputation since much before 1998 and it was incumbent upon the Registrar to have taken notice of the many registered marks in various classes.
Further, regarding Respondent 1’s contention that petitioners’ registration was a device mark and different from a simple word registration of impugned mark, the Court opined that this contention was quite specious, infirm, and untenable. The Court opined that ‘AMUL’ was a predominant aspect of the petitioner’s registered mark with only a by-line stating, “The Taste of India”. Further the mark ‘AMUL’ had been registered since 1956 in other classes, as also various families of marks, both word and device, in relation to ‘AMUL’. The Court opined that the AMUL range of products was large and expansive, as it included the ‘AMUL tru’ drinks as well, aside from other drinks.
Thus, on these grounds, Section 11(1) and 11(2) of the Act would be made out, triggering removal of the impugned mark from the Register. Aside from that, the possibility of application of law of passing off was also protected under Section 11(3)(a) of the Act. Accordingly, the Court allowed the rectification petition and removed the impugned mark from the Register. The Court also stated that these directions to be carried out within four weeks after the present judgment was pronounced.
[Kaira District Cooperative Milk Producers Union Ltd. v. D.N. Bahri Trading, 2024 SCC OnLine Del 2550, decided on 08-04-2024]
*Judgment authored by: Justice Anish Dayal
Advocates who appeared in this case :
For the Petitioners: Vishal Nagpal, Advocate;
For the Respondents: Ajayinder Sangwan, Devendra Singh, Siddharth Gill and Smit Singh Kuru, Advocates; Harish Vaidyanathan Shankar, CGSC, Srish Kumar Mishra, Alexander Mathai Paikaday, Lakshay Gunawat and Krishnan V. Advocates.
