THE RECENT AMUL-IMUL TRADEMARK CONTROVERSY

Ichhamati Co-operative Milk Producers Union

Limited filed an application for registration of the
mark IMUL (depicted in a triangular shape)
(Application No. 1281174) under class 29 (milk
goods and other dairy products) of the
Trademarks Act, 1999. After the advertisement of
this application, Kaida District Co-Operative Milk
Producers Union Limited (appellant) opposed
registration of the trademark. The opposition was
based on the ground that the appellant was
carrying on a well established business of
manufacturing, marketing and exporting milk
products under the name AMUL since 1955.

 By virtue of its long, continuous and

extensive use of the trademark, it
was contended that the public now
associated AMUL with the
appellants products. Therefore, the
respondents adoption of the mark
IMUL would cause confusion among
the public and in the trade as it was
deceptively similar to the
appellants trademark.

 The registrar, however, found that the

respondents adoption of the mark IMUL
was honest and was not deceptively
similar. The decision was based on the
fact that the respondent had been using
this mark since 2001 and its turnover
had increased continuously since then.
According to the registrar, refusal of
registration would cause unnecessary
inconvenience and damage to the
respondents.

 Against this order, the appellant

appealed to the IPAB (Circuit
Bench, Kolkata). Despite notice,
the respondents did not appear
before the IPAB nor did they file
counter statements. The IPAB
decided the matter in favour of
AMULex parte. The order of the
IPAB (No. 34 of 2013) is available.

 After perusing several cases, the

IPAB held that a statement showing
increase in sales turnover (by way
of affidavit) was no ground to grant
registration of a trademark that was
deceptively similar to AMULs
trademark. It was held that the
mark (IMUL) was phonetically
similar to AMUL, except for the first
letter A and I.

 The IPAB used the test of an unwary purchaser with

average intelligence and imperfect recollection to
show that phonetically similar marks are likely to
cause confusion among such purchasers. Moreover,
case law showed that AMUL had become a
household name and the appellant had been
successful, in the past, in restraining others from
using its registered trademark. Also, since the
respondents did not appear before the IPAB to prove
the use of the mark IMUL since 2001 and give
reasons for adopting the same, the IPAB held that
AMUL was a well known mark and the registration of
a deceptively similar mark ought not to have been
allowed. Therefore, the order was set aside.