December 07, 2017
Date of Order: December 05, 2017
The Plaintiff i.e. Nestle by this application sought to restrain the Defendants i.e. AMUL from manufacturing and marketing in cheese, packaged milk or any other milk products under the Trademark “A+” with or without any prefix or suffix or any other mark as may be identical to or deceptively similar with the Plaintiffs’ registered Trademark “A+ logo”.
In the case the core dispute revolved around use of the trademark “A+” by Nestle and AMUL.
Plaintiff’s contention– That the mark “A+” was initially registered in respect of goods in class 29 in favour of one, Ajit Singh Om Prakash Ltd. On finding this the Plaintiff approached Ajit Singh Om Prakash and they assigned the said mark in favour of the Plaintiff vide Deed of Assignment dated 26.08.2011 and the subject matter of assignment was limited to goods comprising of milk and milk products.
Subsequently, the Plaintiff also filed application under with the Registrar of Trademarks seeking recordal of the Plaintiff as the subsequent proprietor of the Trademark “A+”. Thereafter, the Plaintiff launched Nestle A+ Milk and Dahi on 01.12.2011.
The Plaintiff contended that later they received a notice from the Defendants claiming themselves to be the proprietor of Trademark AMUL A+ and they immediately called upon Plaintiff to cease and desist from use of the Trademark “A+” & “a+” for milk products. However, the Plaintiff contended that based on the Deed of Assignment they were prior user of the mark for milk and milk products.
Defendant’s reply– That they coined and invented trademark labels AMUL CALCI+ and AMUL A+ and that the sign “+” together with “CALCI” and “A” has been prominently used on the said trademark labels.
That an application for registration of Trademark label “AMUL A+” in Class 29 has been filed on 17.06.2011 claiming the user since 02.06.2011.
Here it would be relevant to mention that the proceedings for cancellation of Plaintiff’s trademark is pending before the Intellectual Property Appellate Board.
- That the Defendants commenced the use of the mark “Amul A+” for cheese on 02.06.2011 whereas the Plaintiffs have started using the mark “Nestle a+” with respect to Milk and Dahi on 01.12.2011. The Plaintiff claims priority of use on the basis of the Deed of Assignment dated 26.08.2011 from Ajit Singh Om Prakash whose user is claimed since 27.12.2004 for Milk and Milk Products.
- That from the facts alleged it prima facie appears that M/s. Ajit Singh Om Prakash Limited, did not use the mark A+ in relation to any milk or milk products. The invoices produced by the Plaintiff show that the mark A+ has been used in conjunction with Tea, Kali Ziri, and Refined Oil etc. With regard to milk products, the mark A+ has not been used in the invoices. No package of A+ milk powder or trade mark branded A+ has been produced from which a prima facie inference can be drawn that the mark A+ was never used in relation to milk powder or any other milk products by M/s. Ajit Singh Om Prakash Limited.
- That from the Deed of Assignment it appeared that the assignor, M/s. Ajit Singh Om Prakash Limited was not using the mark A+ for milk and milk products.
- That the mark A+ is laudatory and descriptive and has a very low protective value unless it is used in conjunction with some other mark. For a laudatory and descriptive mark to be protected, it would have to be shown, by leading evidence, that such a mark, by extensive usage, has acquired distinctiveness and is associated only with the claimant and/or its products and/or services.
The Court refrained from taking any final decision in the matter in view of rectification proceedings of Plaintiff’s mark pending with the IPAB.
The Court has ordered the parties to maintain status quo about the use of sub-brand “A+” in relation to the respective goods i.e. to keep things in the state they presently are.