Canada Court confines copycat company creating 'utterly-butterly' confusion

Canada Court confines copycat company creating 'utterly-butterly' confusion

The Federal Court of Canada held that the impersonator 'Amul Canada' infringed the exclusive trademark and copyright of the Amul brand name owned by Indian entities

A Canadian court has come down heavily on a copycat company impersonating the famous Indian brand Amul to sell its products in the country.

The Federal Court at Ontario has debarred a local entity Amul Canada from infringing trademark and copyright of the plaintiffs - Kaira District Co-operative Milk Producers' Union Limited and Gujarat Co-operative Milk Marketing Federation Ltd that legally owns the trademark "AMUL".

Justice Alan S Diner ruled that Amul Canada infringed the exclusive trademark and copyright of the plaintiffs and awarded damages of $10,000 for trademark, $5,000 for copyright infringements aside for lump sum legal costs on a solicitor and client basis of $17,733.

The Court has also ordered the defendants to transfer to the plaintiffs within 30 days of judgment, ownership and all rights access, administration and control for and over the LinkedIn pages, domain names and other social media pages controlled by the defendants displaying the plaintiff's trademark or copyright.

Justice Diner noted in his order that Amul Canada directed public attention to their business in such a way as to cause confusion in Canada between their business and the goods and business of the plaintiffs, a homegrown Indian brand that has grown into an international company.

The legal owners of the Amul brand approached the Federal Court alleging breaches of trademark and copyright in Canada through Amul Canada's LinkedIn website, advertising their product, using their brand image, name and corporate information.

They further claimed that they were selling, advertising and distributing Amul trademarked products in Canada since 2010 and Kaira was the registered trademark owner of the Canadian Trademark Registration for Amul brand since 30 June 2020 which were well-known in India, Canada and throughout the world.

Kaira also owned trademarks design having the expressions - "Amul The Taste of India" and "Amul Pasteurised Butter - utterly butterly delicious".

"They have acquired goodwill starting in India and then through the years around the world. The Plaintiffs allege that there is also goodwill in Canada, at least amongst Canadians of Indian origin," the Court stated.

The plaintiffs attempted to have the defendants cease and desist in advertising, marketing, offering for sale, selling and providing goods identical to the plaintiff's goods in Canada with the trademarks and trade names AMUL and Amul Canada Limited through LinkedIn.

The plaintiffs submitted to the court that they had never licensed or provided consent to the defendant or its employees to use the trademarks in any manner.

"The defendants are not only using the exact marks and designs belonging to the plaintiffs, but they are claiming to be the plaintiffs, through copying the information available on the AMUL websites regarding the Plaintiffs' background and activities," the Federal Court observed.

Considering the material to support the breaches alleged, the Court concluded that the defendants' conduct exceeded the usual case of confusion caused by slight altercations to the mark, similar description of copyrights material or modification of a design.

"Rather, they are using, without any colour of right, an exact duplicate of the Plaintiffs' mark, and an exact copy of their copyrighted material," Justice Diner observed.

The Court held that by using the Amul designed and coined name the defendants have confused certain individuals, job-seekers, distributors, and/or corporations who viewed their social media pages.

The Court, therefore, granted relief to the plaintiffs ruling that the defendants have infringed the copyright of the plaintiffs contrary to Section 27 of the Copyright Act and trademark rights of the plaintiffs, contrary to Sections 19 and 20(1)(a) of the Trademarks Act.