Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited

Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited

2018 (75) PTC 209 (SC)

Brief Facts:

• Respondent, was using the trademark ‘NANDINI’ for milk and milk products from the year 1985. The Respondent had also registered the said mark in Classes 29 and 30.
• The Appellant adopted the mark ‘NANDHINI’ in 1989 and had a restaurant business. The Appellant applied for the mark ‘NANDHINI’ in respect of various food items sold by it in its restaurants.
• Respondent opposed the said application before the Registrar of Trade Marks. The Registrar of Trade Marks allowed the application and dismissed the opposition.
• Thereafter, Respondent approached the IPAB vide an appeal.
• IPAB vide Order dated 20^th April, 2010 directed the Appellant to remove the words ‘milk and milk products’ from the specification. The same was done by the Appellant by filing an affidavit.
• In 2011, a separate bench of the IPAB, passed an order and allowed the appeal of the Respondent and held that ‘NANDINI’ is a well- known trade mark and a household name in the State of Karnataka and that it is the registered trade mark of the Respondent. IPAB further held that since milk and milk products fall under Classes 29 and 30 and the goods registered in the name of the Appellant also fall in the same class, the average consumer would conclude that goods manufactured by the Appellant belonged to the Respondent and thus, there is likelihood of confusion.
• Aggrieved by the decision of the IPAB, Appellant approached the Hon’ble High Court which dismissed the writ petitions of the Appellant in 2014 and upheld the IPAB decision of 2011.
• Hon’ble Court further stated that the goods belonging to the two parties (though the nature of the goods being different) belong to same class and thus it would be impermissible for the Appellant to have the registration in its favour.
• Aggrieved by the Hon’ble High Court’s decision, Appellant filed the present Appeal in 2018.

Appellant’s Major Contentions:

• Irrespective of the goods belonging to the same classes in a broad sense, the parties’ goods are completely different. Appellant is dealing with fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc. and the Respondent is dealing only with milk and milk products. Thus, there is no likelihood of confusion or deception.
• The IPAB and the Hon’ble High Court only compared the marks but not the goods.
• Finding of the Hon’ble 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.[1] where the Court has observed that the monopoly under trade mark only extends to the goods which are falling in a particular class and not the entire class of goods.
• Use of the mark ‘NANDHINI’ by the Appellant is honest and with due cause.

Respondent’s Major Contentions:

• The trade mark of the Appellant was deceptively similar to that of their own registered trade mark.
• IPAB and Hon’ble High Court have observed the mark of the Respondent to be distinctive and given a finding of likelihood of confusion in the present matter.
• IPAB also found the mark of the Respondent to be a well-known mark.
• Appellant is not an honest and concurrent user as it was aware about the Respondent and has in fact admitted to purchasing milk from Respondent for their restaurant.  

Supreme Court’s Observations:

• Though Respondent was prior in use, Appellant was also using the mark for 12 – 13 years before applying for registration.
• The goods fall under the same class but are different.
• NANDINI/NANDHINI is not an invented or coined word.
• The nature and style of the business of the parties’ are altogether different. Whereas Respondent is a Cooperative Federation of Milk Producers of Karnataka and is producing and selling milk and milk products under the mark ‘NANDINI’, Appellant is running restaurants.
• The trade mark with logo is altogether different.  
• In light of the above, it is difficult to conclude that the mark of the Appellant will cause any confusion. The earlier order dated 20^th April, 2010 of IPAB approached the subject matter in correct perspective.
• One other significant factor which is lost sight of by the IPAB as well as the High Court is that the Appellant is operating a restaurant under the trade mark ‘NANDHINI’ and it had applied the trade mark in respect of goods like coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry, spices, bill books, visiting cards, meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces, etc. which are used in the products/services of restaurant business. The aforesaid items do not belong to Class 29 or 30. Likewise, stationery items used by the Appellant in the aid of its restaurant services are relatable to Class 16. In these circumstances, there was hardly any question of confusion or deception.
• The reasoning of the High Court that the goods belonging to the Appellant and the Respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the Appellant to have the registration of the concerned trade mark in its favour, would be meaningless. That apart, there is no such principle of law.
• Proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods.
• Further, all the ingredients laid down in Section 11(2)[2] of the Act, have not been satisfied.
  • The Appellant has not adopted the trade mark to take unfair advantage of the trade mark of the Respondent.
  • Use of ‘NANDHINI’ by Appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trade mark of the Respondent.
• It is to be kept in mind that the Appellant had adopted the trade mark in respect of items sold in its restaurants way back in the year 1989. There is no document or material produced by the Respondent to show that by 1989, the Respondent had acquired distinctiveness. It, therefore, appears to be a case of concurrent user

The orders of the IPAB and High Court were set aside.

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[1] (1997) 4 SCC 201

[2] Section 11 (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.