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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, Kaira 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 appellant’s products. Therefore, the respondent’s adoption of the mark IMUL would cause confusion among the public and in the trade as it was deceptively similar to the appellant’s trademark.
The registrar, however, found that the respondent’s 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 AMUL ex parte. The order of the IPAB (No. 34 of 2013) is available here.
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 AMUL’s 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.