IER @® ® SURANASSURANASSHAASTRAIITMADRAS INTELLECTUAL PROP! MOOT COURT COMPETITION 2022. OPERTY LAW MOOTPROPOSITION THEPARTIES STRONGING, USA 1982. 1991 -Pear| Leah Strong in USA started Selling milk from her inherited 190 acre dairy farm in Pennsylvania Fromthesshumblebeginnings herbusinessgrew.andoverthanext1Ovearesiwasqured ‘Surroundingfarms, finallyamassingSOO0acresoffarmiand, boughtaprocessingpiantanddiversifiedher goods: by starting to sell milk products too, in addition to milk. 292 ~ 2001 -Pearl incorporated her business as STRONG INC, and fied a federal trademark in the USPTO for her house mark and main brand STRONG, under which all the company's goods wore sold {he trademark was registered by the USPTO in 1994 in Classes 29 and 30. Over the next ten years the brand STRONG became a household name in USA and the mark became synonymous with milk ix the minds of the consumers 2002-2014-1n2002STRONGINC, USAstartedexportingitsproducts. Tostrengthenitsbrandprotection it filed trademarks for its brands, including the main brand word mark STRONG in various countries including India, whetherexportstothatparticularcountryhadcommencedornol.Thetrademarkwasfiled in. the Indian Trade Mark Registry in 2002 on a ‘proposed to be used’ basis in Classes 29 and 30 for ‘milk and milk products’ and registration was obtained in 2004. Over the next 19 years STRONG INC, USA became the 4™argest milk producer in the world. 2015 - tll date - In 2015, due to premium customer demand, raised after visits of Indians. overseas, and their exposure to foreign brands through global advertisements in print and visual media, STRONG INC, USA started selling its milk in India online through popular grocery apps MegaBasket, Freshtohouse and Zamanoninquantitiesof2!, Sind Oljars. STRONGINC, USAdidnothaveamanufacturingunitinindia and did not have any plans to have one. All its products were exported from its dairy farms situated in Sri Lanka, In 2020, @ report by an adulteration watch group reported that STRONG INC, USA was using Hydrogen Peroxideto _inhibitmicrobialproliferation andmilkspoilage,sothatthe milkcould _betransportedsafelyfor upto6days al8to10"C.STRONGINC,USAimmediately issuedapressreleasestatingthalitdidnotde so, and only used permitted Class I! preservatives as allowed. STRONGMILK! IVs 2000 - Ms.TehminaGheewala, a serial entrepreneur, and the heiress of one of India’s most prominent business families, the Gheewalas who had dabbled into any and all businesses in India, incorporated her latestventureSTRONGMILKPRODUCTSPRIVATELIMITEDIN2000andenteredintothemanufacturing andsellingofalimilkproductsinciudingghee, yogurt, butterandcheese Thisbusinesswasconceivedas a spin off from the already existing and well established milk company the Gheewala group owned and which had farm lands, machinery,pracessing plants spread over 4000 acres inGujarat,with acapacity of 600 tonnes per month. The milk was sold all over India under the brand GHEEWALAS. STRONG MILK PRODUCTS PRIVATE LIMITED did not sell milk either under the brand STRONG or otherwise. 2000-tilidate-In2000STRONGMILKPRODUCTS —PRIVATELIMITEDfiledatrademarkapplicationfor their house mark and sole brand composite logond 30 for ‘milk February 2000 in Classes 28 876,20 ors neat 20 years STRONG MILE OAC ie rketshar rT Dgrewtobec ikproducteompenyinindia,withamal ie nm poder Se tee eee inthe mik and milk product segment, exeeanat oy Care reg wner GHEEWALA brand for milk, even though the brand STRONG was : ‘and the brand became the common man's choice for mile products in India. DISPUTEB! NTHI ANIES 16November202'tildate-AnadvertisementbySTRONGINC USAwasairedonalicable,satelliteand social media networks The advertisement dapicted a small boy ina Supermarket aisle going towards certain milk products, the packaging of which closely resembled that of STRONG MILK PRODUCTS PRIVATELIMITE DeontainingthemarkSTRONGprominentiydisplayedandtheGHEEWALAmilkpackets kept next to them The boy's mother catches hin and steers him away from them, and towards the milk (cansofSTRONGINC USAwiththecaption onsereenreading—‘Drinkthe ActualSTRONGMilkforTrue Health’. with usage date from 04 inthe Indien Trade Mark Regt) Wi eg. Over the products’ and registration was & December 2021 - STRONG MILK PRODUCTS PRIVATE LIMITED issued a Cease and Desist Legal NotiseagainstSTRONGINC, USA.u/S.26(8)ofthe TradeMarksAct, 1999andaskingthemtotakedown the advertisement, clearly stating: i ishistory, i —_brandvalueandrecall, fi registeredmarkiningia 14December2021-STRONGING. USAlssuedaReplyNotice ciearlystatingthat: i ‘theparticuiaradvertisementis CRT EO racer sementisnotageinsthereputationofSTRONGMILKPRODUCTS PRIVATE itshistory, brandvaiveandrecall, é a 1. registeredmarksinUSAsndindia, ¥ itswell-knownmarkstatusinUSA, “. assumingarguendonotwellknowninindia thenitsiransborderreputation vw vi theuseofthewordmarkSTR ONGbythelndiancompanyformikandalledgoods aliegingmalafideintentionintheadoptionolthemarkSTRONGbythem,whenSTRONGING, had Conceived the mark in 1982, and with trademark filings from 1992 en aoe! ~ STRONG MILK PRODUCTSPRIVATELIMITEDIssued aRejoinder tothe Reply Notice |. itwasnotdealingintheproductionorsaleotmik, {_assumingarguendothattwas,then thetrademarkS TRONGwassynonymouswithitsgoods andnot that of STRONG ING, USA, fi STRONGINC, USAhadnilorandrecallinindia v. _goingbyitscontentionthatitwasselinginine STRONG MILK PRODUCTS PRIVATE LIMITEDs barscrrams ooomerroince of vw its malafide intention to trade off on the reputation of STRONG Mi eee LK PRODUCTS PRIVATE eet tonoh ere content of the ad and that the presence of its products were noftheindiancompany’sproductsevenwithoutthead,sinceSTR s Sit ONG INC, ens as were sub-standard, and this was a serious issue since milk was an essential thebrandST RONGisacompositetogainwhichthewordSTRONGisoneofthecomponen The word STRONG was coined by it in 2000 as the English translation of the name or iatourcer Ms. Tehmina, the word tehmina meaning strong in Hebrew and Arabic. Itwasfurtherfiledin2000inindiaandcontinuouslyinusesincethen,thusbeingthefirsttofile andfirstto use in India, whereasSTRONG INC, USA'Strademark wasfiledona proposedio be used basis in India. vil, _ themarkSTRONGisdescriptiveofthederivativeeffectorquaiityofthegoods(mitk}onwhich STRONG INC, USA'S trademark was applied vil 27December2021-STRONGINCUSAissuedaReplytothisRejoinderstatingthat PRODUCTS PRIVATE LIMITED'S explanation regarding coining of and ; poe bag word STRONG was an afterthought. Rather STRONG ING USA was clearly the rightful owner of the brand STRONG for mik and allied products, the use ofits founders ‘mark being clearly known to the public. i SE eee that the use of the maik STRONG by STRONG MILK PRODUCTS ‘ PRIVATELIMITEDwasonlyonalliedmiikpreductsandnotonmik.eventhiswoulddiutethe brand ‘and damage the global goodwill and reputation enjoyed by STRONG INC, USA PRESENTSUIT infringement suit C.S. (Commercial) 12/2022 before the 4 lat 2022, STRONG INE. PetiuradetondertearatatcthelighCoueMasras)aganet enone MILK PRODUCTS PRIVATE LIMITED and sought: order of i raining use of registered trademark by the {an ints ode of Hany parade Mark Regiar on rectteabon Pen fled by STRONG ING, USA against STRONG MILK PRODUCTS PRIVATE LIMITED S tradem STRONG MILK PRODUCTS PRIVATE LIMITED raised 8 ‘counter claim under S. 29(8) rw S.142 of the Trace Marts Act 1998 004 080 aon tq 22022 entairg he seeing oe irovares ‘advertisement by the Defendant, pending final disposal of the ‘suit.