Madras High Court dismisses claim of exclusivity over ‘ARUN’ and rules it is a common Indian name
Hatsun Agro Product Ltd (Hatsun) and Sri Ganapathy Dairy (Ganapathy) wrestle out the use of brand name Arun for ice cream and ghee (clarified butter). Hatsun asserts rights over ARUN trademark before the Madras High Court, alleging trademark infringement and passing off.
Hatsun in the suit contends:
- They are one of the largest food and dairy products manufacturers, including dairy whitener, skimmed milk powder, ‘Agmark certified’ ghee, butter, cooking butter, etc. The products are marketed under various trademarks such as ARUN AROKYA, HATSUN and IBACO. The trademarks are well-known among the trade and public and exclusively associated with them.
- The trademark ‘ARUN’ is well-known, being used since 1970, registered both in India and overseas, and they have expended a substantial amount to promote the said brand.
- In March 2018, Hatsun became aware of Ganapathy’s use of an identical mark ‘ARUN’ for ghee. Ganapathy’s adoption and use of an identical mark in relation to allied and cognate products is malafide and will cause confusion in the market.
- In response to the cease-and-desist letter, Ganapathy contended that the products are not identical and have claimed prior use since 1989.
Ganapathy, in their response, stated:
- They are a registered partnership firm, and the brand name ‘ARUN’ is derived from the first four letters of the promoter, Mr. Arunachalam.
- Hatsun has claimed use of the mark ‘ARUN’ for ghee from 30th January, 2006, whereas, they honestly adopted the label mark ARUN AGMARK GHEE in 1989. Prior user cannot be injuncted from using the mark by a non-user.
- Hatsun is using the mark ‘ARUN’ only for ice creams. There is no chance for confusion as they sell and market ghee under the mark ‘HATSUN.’
- The rival marks are visually and structurally different. Ganapathy’s ARUN branded ghee is rated as superior with an AGMARK certificate. ‘HATSUN’ branded ghee is of standard grade. Thus, there is no infringement or passing off.
Both sides adduced evidence. The Court, after considering the pleadings, arguments, and case laws, held:
- On reviewing the documents, it is evident that Hatsun’s trademark registrations are not for the word ARUN in isolation but for the combination of the words like ARUN ICECREAMS or AIC Arun ICE CREAMS . Hatsun has obtained the trademark registration for the word ARUN for its products in class 29 which includes ghee and the trademark word is in stylish font with capital ‘A’ followed by small letters.
- Hatsun’s registration for the mark ARUN in classes 29 and 30 is of 2013. Moreover, the evidence led by the parties shows that Hatsun use the brand ARUN to sell only ice creams.
- Documents evidence that Ganapathy is the prior user of the word ‘ARUN’ for ghee products. Section 34 of the Trademarks Act protects the prior user who has honestly adopted the name. In this case, Ganapathy has used the mark since 1990. Therefore, it cannot be restrained because of the subsequent grant of trademark for allied or cognate goods or even for similar goods.
- Ganapathy is the prior user and honest adopter of the mark ARUN, considering it is the first four letters of the elder family member, Mr. Arunachlam. Therefore, it will not amount to infringement.
- ‘ARUN’ is not an invented word and is a common Indian name that means ‘dawn’ or ‘sun’ in Sanskrit. ARUN being a common name can never gain the status of well-known mark or acquire secondary meaning. There are several business houses in India with the name ‘ARUN’ and carrying on business in various goods.
- The argument that owing to extensive advertisement and availability of products in all shops, the mark ‘ARUN’ has gained secondary meaning to connote the products of Hatsun alone will not succeed. The reputation, goodwill, and expenses for publicity of the products’ ARUN ICE CREAMS’ cannot extend to the word ‘ARUN.’ as it is not an invented word, and the rival marks are visually and structurally distinct.
- Ganapathy is the honest, prior user of the mark, and the products are of superior quality. As the marks and goods are not identical or similar and Hatsun has failed to establish deceptive adoption, passing off does not arise.
In light of the above, the Court dismissed the suit filed by Hatsun.