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M/S. NANDHINI DELUXE V. M/S. KARNATAKA COOPERATIVE MILK PRODUCERS FEDERATION LTD.

Section: D

Category: Case Commentary

Paper Code: CC-NK-03

Page Number: 447 - 454

Date of Publication: February 10, 2021

Citation: Natesh Kumar, M/S. Nandhini Deluxe v. M/S. Karnataka Cooperative Milk Producers Federation Ltd., 1, AIJACLA, 447, 447-454, (2021).

Details Of Author(s):

Natesh Kumar, B.COM; LL.B.(HONS.), School of Law, SASTRA Deemed University


ABSTRACT The ensuing Case Commentary of the Landmark Judgment[1] in trademark law would be addressing a recurrent query concerning identical and similar trademarks. Are Intellectual Property Rights infringed when two companies use a similar trademark for their products? The follow-up questions to the aforementioned query also include, “What are the factors considered by the competent court of jurisdiction while facing issues relating to the usage of similar trademarks by different companies for identical or unidentical products?”, “What if both trademarks are registered under the same class in the trademark registry?” The Hon’ble Supreme Court in the Nandhini Deluxe case ended the muddle by shedding ample light regarding similar trademarks by rendering its categorical judgment on 26 July, 2018.

KEYWORDS Intellectual Property Rights, Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., Similar Trademarks, The Trade Marks Act, 1999, Trademark Law


Appellant: M/S. NANDHINI DELUXE Respondent: M/S. KARNATAKA COOPERATIVE MILK PRODUCERS FEDERATION LTD. Date: 26 July 2018 Citation: AIR 2018 SC 3516 Civil Appeal Nos. 2937-2942 Of 2018 with 2943-2944 Of 2018 Bench: A.K. Sikri, J. and Ashok Bhushan, J.

FACTS ‘Nandini’ has been used as a registered trademark under class 29 and 30[2] by the Karnataka Cooperative Milk Producers Federation Ltd. (hereafter referred to as KCMPFL) for milk and milk products since 1985. Conversely, a restaurant named ‘Nandhini Deluxe’ was established in Bangalore in 1989. The restaurant applied for registration under classes 29 and 30 after having used its mark for 12-13 years. The trademark faceoff between the Andhra cuisine restaurant ‘Nandhini Deluxe’, established in Bangalore, and KCMPFL’s milk product named ‘Nandini’ dates back to 2007 when KCMPFL had opposed the registration of ‘Nandhini’. The objections were rejected and the Deputy Registrar of Trademarks reaffirmed the registration of the restaurant’s mark ‘Nandhini’.

BACKGROUND Order of The Deputy Registrar of Trademarks The Deputy Registrar held that the artistic work, design, and getup of the two marks were dissimilar.[3] The restaurant ‘Nandhini Deluxe’ has been using the mark ‘Nandhini’ with a logo of a ‘Deepa’ (lamp) written in a unique style, whereas KCMPFL was using the mark ‘Nandini’ with a logo of a cow. The Deputy Registrar held that KCMPFL cannot claim monopoly over the trademark in dispute as it is the name of a Hindu goddess, well known to the public. It was further held that KCMPFL has not produced any evidence to show that the use of the trademark by the restaurant is deceptive and creating confusion. The registrar concluded that the adoption of the mark by the restaurant was honest and concurrent since the onus upon the restaurant, Nandhini Deluxe to prove the claim of proprietorship of the mark was successfully discharged.[4] However, the restaurant was directed to file a request on form TM 16 to delete the goods ‘Milk and Milk products’ and the same must be notified in the Trademarks Journal.[5] Unsatisfied with the view of the Deputy Registrar dismissing the objections raised, KCMPFL had approached the Intellectual Property Appellate Board, Chennai challenging the registration of the trademark ‘Nandhini’ sought by the restaurant.

Order of the IPAB dated 20 April, 2010 The IPAB referred to the judgment Vishnudas Trading v. Vazir Sultan Tobacco Ltd.[6], while upholding the order of the Deputy Registrar and reiterated that when a person manufactures one product under the broad classification having no bona fide intention to trade in all other products falling under that broad classification, he cannot be permitted to enjoy a monopoly in goods falling under such classification.[7] The IPAB, while upholding the order passed by the Deputy Registrar, observed that KCMPFL failed to prove confusion or deception upon the event of granting registration to the Trademark ‘Nandhini’.

Order of the IPAB dated 4 October, 2011 The IPAB, in 2011, rejected the conclusion of the Deputy Registrar that the two marks are not likely to confuse the consumers. The IPAB opined that the addition of the letter ‘H’ and the word ‘deluxe’ cannot improve the case and held that the two marks can certainly create confusion in the minds of the consumers. Since the KCMPFL indisputably obtained the trademark before the other party, the IPAB allowed the plea of KCMPFL and ruled that it will not be in the interest of the public to permit the restaurant to use the trademark ‘Nandhini’.

Impugned judgment of the Hon’ble High Court of Karnataka The HC while dismissing the writ petitions filed by the restaurant, accepted the ratio and reasoning of the IPAB. The respondent KCMPFL had obtained a decree in their favor from the High Court in 2011. The order restrained the appellant’s usage of the trademark. Disgruntled by the judgment, the appellant had approached the Hon’ble Supreme Court. ISSUES BEFORE THE HON’BLE SUPREME COURT I. Whether the appellant is entitled to seek registration of the mark ‘Nandhini’ concerning the goods dealt with? II. Whether such a registration in favor of the appellant would infringe on the rights of the respondent?

CONTENTION OF THE APPELLANT- M/S. NANDHINI DELUXE RESTAURANT Ø The learned counsel of the appellants submitted that the Trademark ‘Nandhini’, artistic work and design adopted by the appellant for running the vegetarian and non-vegetarian Andhra style restaurant since 1989 was honestly conceived, totally diverse, and cannot be questioned on the grounds of deception or confusion created among the public. Moreover, the classes of purchasers/customers of both the trademarks were entirely different even though both fall under Class 29. Ø The counsel reiterated verses from Balkrishna Hatcheries v. Nando'S International Ltd.[8], wherein it was upheld that the question of similarity of goods is independent of the mark and the subject of registration.[9] Ø Another submission of the learned counsel for the appellants was that the finding of the High Court that the mark is prohibited from registration in respect of entire class or classes of goods runs contrary to the principle of law laid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.[10], where the Court observed that the monopoly under Trademark only extends to the goods which are falling in a particular class and not the entire class of goods.[11] The counsel pleaded that such a circumstance may lead to a monopoly in the entire class of goods and services on behalf of the registered proprietor, contrary to the purpose and objective of the Trademark Act. Ø The learned counsel remarked that the appellants were concurrent and honest users of the trademark ‘Nandhini’ since 1989 and the respondents never filed an injunction, thereby rendering Section 11(2)[12] inapplicable. Ø The learned counsel contended that Section 12[13] had an inbuilt scheme that permitted the Registrar to grant registration for similar trademarks concerning similar goods. It was further submitted that the concurrent use of the mark ‘Nandhini’ was a common Indian name and a Hindu deity which the IPAB had approved. Ø It was humbly submitted that the appellant was prepared to compromise and adhere to the order of the Deputy Registrar by not claiming registration in the category, ‘Milk and Milk Products’. The learned counsel submitted the list of goods that the appellant would delete for which the appellant sought registration.[14]

CONTENTION OF THE RESPONDENT- M/S. PRODUCER’S FEDERATION LTD. Ø The respondents placed their contention that the products were susceptible to confuse users as their names were phonetically and deceptively similar. An average consumer may conclude that the goods of the appellant belongs to KCMPFL. Ø The learned counsel for the respondent submitted that they were able to prove the relative ground for refusal of registration of the appellant’s trademark vide Section 11(2)[15]. The respondent substantiated the argument by submitting that the mark of KCMPFL was registered before the other party, has a reputation in India, and hence is a ‘well-known mark’. The counsel relied upon Section 11(2) while buttressing the argument. The aforementioned provision states that a trademark that is identical to an earlier trademark and is registered for goods that are dissimilar to those of the earlier trademark shall not be registered. Besides, the provision also states that if the earlier trademark is a well-known mark in India, the use of the later mark would take unfair advantage and be detrimental to the distinctive character of the earlier trademark.[16] Ø The senior counsel for the respondents refuted the claim that the appellants were the honest and concurrent users of the trademark ‘Nandhini’. The learned counsel submitted that the appellant was aware of the respondent’s mark as they had been purchasing ‘Nandini’ milk produced by KCMPFL. Ø The respondents contended that it was a shrewd move on the part of the appellant who sought to trade upon and profit from the reputation and goodwill of KCMPFL, thereby praying for the cancellation of the appellant’s mark ‘Nandhini’.

JUDGEMENT OF A.K. SIKRL, J. AND ASHOK BHUSHAN, J.- HON’BLE SUPREME COURT The Hon’ble SC not only found the visual appearance of the two marks different; but also held that they relate to different products. The Hon’ble SC observed, “considering how they are traded by the appellant and respondent respectively, it is difficult to envision that an average man of ordinary prudence would associate the goods of the appellant as that of the respondent.”[17] “The reasoning of the HC that the goods belonging to the appellant and the respondent belonged to the same class, and therefore, it would be impermissible for the appellant to have the registration of the concerned trademark in its favor, was rendered meaningless by Hon’ble SC.”[18] The court reiterated the principle of law in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.[19]and opined that “registration granted to a trader who manufactures only one or some of the articles under a broad classification and has no bona fide intention to manufacture other remainder goods which fall under the very broad classification, should not be permitted to enjoy a monopoly in respect of all articles.”[20]If such a monopoly is permitted, the proprietor may enjoy the mischief of trafficking in trademark.”[21] The Hon’ble SC had virtuously questioned the IPAB for not standing with its prior decision and deemed this against estoppel. The court held, “the use of the mark ‘Nandhini’ by the appellant in respect of its goods is honest, concurrent and would not be detrimental to the purported unique character and reputation of the respondent’s trademark.”[22] The Hon’ble SC allowed the appeal and upheld the order of the Deputy Registrar restoring registration in favor of the appellant, subject to the modification that registration will not be granted in respect of the milk products for which the appellant had abandoned their claim.

CONCLUSION AND SUGGESTIONS Trademarks facilitate in distinguishing products and providing recognition to companies, but must not be construed as an aid to monopolize. The SC in its rational judgment paved the way to the concept of free trade in trademark jurisprudence and rightly upheld the rule of law by averting the appellant from grave injustice and the arbitrary ruling of the IPAB and HC. The verdict of the SC meticulously discussed the issue and hence plumbing the ambiguity regarding similar trademarks belonging to the same class. Besides, the SC judgment will be a forerunner in the trademark jurisprudence as it elucidated the interpretation of Section 11(2)[23] of the Trademarks Act, 1999. The excessively arbitrary perception that mere similarity of a mark would amount to infringement was nullified and laid to rest. Despite the existence of a phonetic similarity concerning the words ‘Nandhini/Nandini’, the trademark with logo employed by the two parties is unique in toto. The style and manner in which both parties fashioned their marks were mutually exclusive. There is an image of a ‘Deepa’ (fire lamp) with the word ‘Nandhini’ in the logo. The appellant had also inserted the word ‘Deluxe’ and used the phrase, ‘the real spice of life’ in their logo. In contrast, the respondent used the image of a ‘Cow’ as a logo beneath which the word ‘Nandini’ is written, bordered by an oval outline. A mere glimpse of the two marks would represent that there is barely any resemblance. Though a laudable order, matching the quality of adjudication to that of the Hon’ble SC was passed by the Deputy Registrar of trademarks, it is deplorable to witness the discomfort of the parties as the case was presented before multiple jurisdictions, disrupting their flow of business. The erroneous observations of IPAB and the Hon’ble HC concerning the Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd[24] judgment, are instances of lacunas in judicial competence. Another substantial factor that lost the vision of the IPAB, as well as the Hon’ble HC in the impugned judgment, was rightly pointed out by the Hon’ble SC. The Hon’ble SC in its judgment held, “the appellant was operating a restaurant under the trademark ‘Nandhini’ and had applied for the trademark in respect of other goods like coffee, tea, cocoa, spices, meat, sugar, among others, which were used in the restaurant business; the aforementioned articles do not belong to Class 29 or 30, likewise, stationery items used by the appellant for their restaurant services applied to Class 16.”[25] Considering the aforementioned inferences, it can be concluded that there can hardly be an incidental confusion or deception created in the minds of the consumers, as ratified by the Hon’ble Supreme Court.



[1] M/S. Nandhini Deluxe v. M/S. Karnataka Cooperative Milk Producers Federation Ltd., AIR 2018 SC 3516. [2] Trade Marks Rules, 2002, Ministry of Commerce and Industry Class 29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices, ice. [3]M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Advocate Khoj, (Nov 2020, 16, 09:00 PM),https://www.advocatekhoj.com/library/judgments/announcement.php?WID=10306. [4] A. K Sikri, M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Indian Kanoon, (Nov 2020, 12 , 02:00 PM), https://indiankanoon.org/doc/3173546/. [5]M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Advocate Khoj, (Nov 2020, 16, 06:15 PM),https://www.advocatekhoj.com/library/judgments/announcement.php?WID=10306. [6]Vishnudas Trading v. Vazir Sultan Tobacco Ltd., JT 1996 (6). [7] A. K Sikri, M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Indian Kanoon, (Nov 2020, 12, 08:34 PM), https://indiankanoon.org/doc/3173546/ [8]Balkrishna Hatcheries v.Nando'S International Ltd.,2007 (109) Bom L R 306. [9] A. K Sikri, M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Indian Kanoon, (Nov 2020, 12, 03:00 AM), https://indiankanoon.org/doc/3173546/. [10] Vishnudas Trading v. Vazir Sultan Tobacco Ltd., JT 1996 (6). [11] M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Advocate Khoj, (Nov 2020, 16, 02:45 AM),https://www.advocatekhoj.com/library/judgments/announcement.php?WID=10306. [12] The Trade Marks Act, 1999, § 11,(No. 47, Acts of Parliament, 1999 India.). Relative grounds for refusal of registration. — (2) A trade mark which— (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. [13] Trade Marks Act, 1999, § 12, (No. 47, Acts of Parliament, 1999 India), Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trademarks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. [14] M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Advocate Khoj, (Nov 2020, 16, 07:33 PM),https://www.advocatekhoj.com/library/judgments/announcement.php?WID=10306. [15] Trade Marks Act, 1999, § 11(2), (No. 47, Acts of Parliament, 1999 India). [16] Trade Marks Act, 1999, § 11(2), (No. 47, Acts of Parliament, 1999 India). [17]A. K Sikri, M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Indian Kanoon, (Nov. 2020, 12, 03:22 PM), https://indiankanoon.org/doc/3173546/. [18] M/S. Nandhini Deluxe v. M/S. Karnataka Co-operative Milk Producer Federation Ltd., Advocate Khoj, (Nov. 2020, 16, 01:12 AM), https://www.advocatekhoj.com/library/judgments/announcement.php?WID=10306. [19] Vishnudas Trading v. Vazir Sultan Tobacco Ltd., JT 1996 (6). [20] Mr. A. D. Padmasingh Isaac v. Aachi Aappakadai Chettinad A/c Restaurant, Indian Kanoon, (Nov. 2020, 12, 02:20 PM), https://indiankanoon.org/doc/52700318/ . [21] Kedar Nath Gupta v. J.K. Organisation, S. Kapoor, Indian Kanoon, (Nov. 2020, 12, 12:00 PM), https://indiankanoon.org/doc/132046/. [22] Mittal Electronics v. Sujata Home Appliances(P) Ltd. @ ORS Indian Kanoon, (Nov. 2020, 12, 12:30 PM), https://indiankanoon.org/doc/50578813/ [23] Trade Marks Act, 1999, § 11(2), (No. 47, Acts of Parliament, 1999 India). [24]Vishnudas Trading v. Vazir Sultan Tobacco Ltd., JT 1996. (6). [25] Mittal Electronics v. Sujata Home Appliances(P) Ltd. & ORS, Indian Kanoon, (Nov. 2020, 12, 09:12 PM), https://indiankanoon.org/doc/50578813/.

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