Thirumala Milk Products v. Tirumalaa Daairy: Madras HC injuncts Kute from using Thirumala’s trademark, records prima facie infringement

The Madras High Court has injuncted the Kute Group from using the name Tirumalaa 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 Tirumalaa Daairy in respect of the use of the former’s registered marks ‘Thirumala’ and ‘Tirumala’..Recording a prima facie finding of infringement as well 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 need not be actual sales of the products, but when there is aggressive advertisement and soliciting of the customers of the plaintiff, and holding out, though the products have not been launched, still they are “a name of trust in the dairy sector', it is evident that the intention of the defendants is to encroach and take advantage of the reputation already built by the plaintiff.”.The Facts.Tirumala Milk Products Ltd. filed an infringement suit and an application for injunction in the Madras High Court after the Kute group was found using 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 brought to the Court’s attention that it was a dominant dairy product marketer in various South Indian States and in West Bengal. It had recently expanded their reach to Maharashtra after it entered into an agreement with a company based in Latur to sell the company’s products under the brand name Thirumala across Maharashtra. Shortly after, the defendants ventured 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 in the dairy sector' though they had not even started business.The plaintiffs argued that the defendants' act of using a deceptively similar name to market and brand their dairy products was done with the sole intention to mislead the general public and to cash in on the reputation and goodwill of the plaintiff. There was every likelihood of confusion and the actions of the defendants were completely mala fide and dishonest, it was vehemently asserted..What the Defendants said:.The defendants on the other hand stated that the name the plaintiff adopted was not a unique name. It was the name of Lord Venkateshwara’s abode, it was stated. The plaintiffs themselves had cited this reason whilst rebutting objections to the registration of their trademark. They had additionally also said that the name Thirumala was used by hundreds of other businesses. The defendants used 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 agreeing 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 despite the initial objections, they stated in rejoinder.Their product had acquired a distinctiveness and the name Thirumala came to be associated with their dairy products. It was reiterated by the plaintiffs that the defendants sought to take advantage of their goodwill, which could potentially dent the reputation of the plaintiff’s products.It was submitted that the plaintiff was already getting calls from their suppliers in Maharashtra after the defendant started promoting their phonetically similar mark..Court Jurisdiction for Trademark Infringement can be invoked under CPC or Trade Marks Act, Delhi HC.What did the Court rule and how was the finding reasoned?.Ruling that the plaintiff had established a prima facie case for the grant of injunction, the Court found it significant that the defendants had not denied 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 prima facie made the act infringement.The Court rejected the defendant’s offer to add the group name before the "Tirumalaa" in the defendants' mark, terming it a ploy because the group itself proceeded to change their name to Tirumalaa Daairy..An interim injunction was ultimately granted because the plaintiff was able to show:The two companies marketed their products under a similar name that raised a likelihood of confusion;The defendants continued to use the purportedly infringing mark;The defendants aggressively marketed the product and wasdirectly involved in drawing away customers..The injunction will last till the disposal of the original suit that is pending before the High Court..Advocate PV Balasubramaniam argued for the plaintiff, and Advocate Hiren Kamod represented the defendant Company and its Directors..Read the Judgment: