INTRODUCTION/BACKGROUND
The case of Nandhini Deluxe Vs Karnataka Co-operative Milk Producers Federation Ltd.[1] serves as one of the landmark judgments that aims to deal with the issue of registration of a trademark in India. This case revolves around four judicial bodies namely – the Deputy Registrar of Trade Marks, the Intellectual Property Appellate Board (“IPAB”), the High Court of Karnataka, and the Supreme Court. The case towards the end was decided by a two-judge bench of the Supreme Court on July 26, 2018. The Hon’ble Court in the said case, held that the registration of similar or identical trademarks for the same class of goods is permissible so long as the mark is used for different goods or services and the visual appearance of two marks is sufficiently different to prevent confusion or deception among average individuals with ordinary intelligence regarding the associated goods.
BACKGROUND OF THE CASE
A Cooperative Federation of the Milk Producers of Karnataka (respondent), adopted the mark “NANDINI” in the year 1985 and it has been selling and producing milk and milk products under this brand name. The respondent got the said mark registered under Class 29 and Class 30. Nandini Deluxe (appellant), on the other hand, was in the business of running restaurants and had adopted the mark “NANDHINI” for its restaurants in the year 1989 and applied for its registration.[2] The latter mark used by the appellant was objected to by the respondents under Section 11(2) of the Trade Marks Act, 1999, on the ground that it was deceptively similar and identical to the mark of the respondent and was likely to deceive or cause confusion among the public. The issue involved in this case was whether registration of the trademark “NANDHINI” could be granted to the appellant.
A. JUDGMENT UNDER THE DEPUTY REGISTRAR OF TRADE MARK
In this case, the first appeal went to the Deputy Registrar of Trade Marks who via its order dated 13-08-2017 allowed the use and registration of the trademark “NANDHINI” by the appellants. The Registrar noted that the logos of both the appellant and respondent were totally different in nature and visual. The Registrar additionally also noted that the Respondent was in the business of dairy products whereas, the Appellant was in the business of many other things, even though both fall in the same class, i.e., Class 29 and 30. Highlighting this factual difference of the nature of goods in which the Appellant and Respondent are trading, the Deputy Registrar was of the view that the respondent’s objection under Section 11 was not allowed. Under Section 18, the Appellant was ordered to delete the goods “milk and milk product” from his TM-16 list as this would remove all the deceptive means in this case, and most importantly, the respondent had not produced any evidence to show that the use of trademark “NANDHINI” by Applicant is causing confusion or deception. As the Applicant was a continuous user of the trademark “NANDHINI”, he was deemed to have become the proprietor of the same.[3]
B. JUDGMENT OF IPAB
The IPAB delivered two contrasting judgments in this case. Initially, on 20-04-2010, it agreed with the Deputy Registrar of Trade Mark, holding that a party trading in specific goods under a broad classification cannot monopolize unrelated goods it does not produce. However, on 04-10-2011, in response to the appellants’ appeal, the IPAB ruled in favor of the respondent, citing that ‘NANDINI’ had acquired distinctiveness and was a well-known brand in Karnataka with copyright registrations from 1984 and 1985.[4] It held that the marks were phonetically similar, likely to confuse the public, and dismissed the appellants’ claims of prior use, citing a lack of evidence.
C. JUDGMENT OF THE HIGH COURT OF KARNATAKA
The High Court upheld the aforesaid order dated 04-11-2011 of the IPAB and dismissed the writ petitions filed by the appellant. The court in furtherance, accepted all the reasonings and grounds given by IPAB.
In response to the said ruling of the High Court, the appellants filed the present appeal in the Supreme Court of India.
ISSUES RAISED
The issue was whether the impugned orders of IPAB and the High Court were not sustainable in law, i.e., whether the registration of trademark “NANDHINI” could be allowed or granted to the appellant.
CONTENTIONS RAISED BY THE RESPONDENT
The respondent contended that the appellant could not use the said mark because the respondent has been in long and sustained use of it due to which, the mark “NANDINI” was held to have acquired a distinctive character and was also well-known among the public and associates the mark “NANDINI” with the respondent’s organization or goods/services. Therefore, the respondent contended to have an exclusive right to use the said mark and that the appellant should not be allowed to use the same as it may confuse the public of the appellant’s foodstuffs with that of the respondent. It was contended that if goods under Classes 29 and 30 bearing the appellant’s trademark entered the market, consumers would mistakenly associate them with the respondent’s organization.
The respondent supported the findings of the IPAB and the High Court, which concluded that the “Nandhini” mark is distinctive and strongly associated with the respondent’s business, thus barring the appellant’s registration.
CONTENTIONS RAISED BY THE APPELLANT
The counsel for the appellant said that the High Court and IPAB both have erroneously interpreted section 11 of the Act, to mean that once a trademark has acquired a distinctive character, then the registration of the trademark is barred and is likely to cause confusion if it is allowed to be registered in the commodities within the same class. The appellant emphasized that their goods and services were entirely different from those of the respondent, and there was no likelihood of confusion or deception among the public. They argued that Section 12 of the Trademarks Act allows for registration of similar trademarks when there is honest and concurrent use. The Registrar’s order accepting concurrent use was cited as support. The appellant claimed that IPAB was barred by the principle of issue estoppel from revisiting its earlier decision dated April 20, 2010, in favor of the appellant.
RULING
The Supreme court answerd in affirmative and allowed the appeal filed by the appellants. The court in its final order said that, the burden of proving that the trademark which a person seeks to register is not likely to deceive or to cause confusion, is upon the applicant. It is for him to satisfy the registrar that his trademark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover, in deciding whether a particular trademark is likely to deceive or cause confusion, that duty is not discharged by arriving at the result or by merely comparing it with the trademark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence who would react to a particular trademark, what association would he form by looking at the trademark, and in what respect would he connect the trademark with the goods which he would be purchasing.[5] The court applied the principles laid down in the case of National Sewing Thread Co. Ltd Vs James Chadwick and Bros.Ltd.[6] ruled that “in the instant case, not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which they are traded by the appellant and the respondent respectively, highlighted above, it is difficult to to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.”[7] Also, another thing that the High Court and the IPAB missed is that the Appellant is operating a restaurant under the trademark ‘Nandhini’ and it had applied for the trademark in respect of goods like coffee, tea, bill books, visiting cards 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.[8] To support the said ruling, the court cited the case of Vishnudas Trading Vs Vazir Sultan Tobacco Co. Ltd.[9] and focued on the principle that the “proprietor of a trademark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trademark in respect of certain goods falling under the same class.”[10] The court also highlighted that fact that there was no document or material produced by the respondent to show that by the year 1989, the Respondent had acquired distinctiveness in respect of this trademark, i.e., within four years of the adoption thereof.[11] Hence, the court allowed the appellant to register the trademark “NANDHINI” but restricted its use for milk and milk products to avoid conflict with the respondent’s trademark “Nandini.”As a result, the Hon’ble Supreme Court set aside the orders of IPAB and the High Court of Karnataka. The court allowed the appeal filed by the appellant in the present case and restored the judgment passed by the Deputy Registrar of Trademarks.
CONCLUSION
This landmark case clarified key principles in trademark law, emphasizing free trade and discouraging monopolistic practices. The court upheld the principle from Vishnudas Kushandas v. Vazir Sultan Tobacco Ltd[12], allowing trademarks for distinct goods within the same class if there is no bona fide intention to trade in all goods under that classification. In essence, the Nandhini Deluxe case balances trademark rights with business ethics, which helps promote fair competition and setting a robust precedent for resolving similar disputes in the future.
Link to the complete judgement: https://indiankanoon.org/doc/3173546/
Author: Ishita Goel, pursuing B.Com LLB (Hons) from Jindal Global Law School
Wish to read similar articles? Click the link to read more: https://jpassociates.co.in/phonepe-v-bharatpe-trademark-dispute/
[1] Nandhini Deluxe Vs Karnataka Co-operative Milk Producers Federation Ltd., 2018 (9) SCC 189.
[2] 2018 (9) SCC 189, para (d).
[3] Ritik Kumar Rath, Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. – A Case Commentar, (2020) 3.1 JIPS 78, 80 (2020).
[4] Ritik Kumar Rath, Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. – A Case Commentar, (2020) 3.1 JIPS 78, 81 (2020).
[5] Ritik Kumar Rath, Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. – A Case Commentar, (2020) 3.1 JIPS 78, 85 (2020).
[6] AIR 1953 SC 357, para 22
[7] Nandhini Deluxe Vs Karnataka Co-operative Milk Producers Federation Ltd., 2018 (9) SCC 189, para 30.
[8] Ibid, para 31.
[9] Vishnudas Trading Vs Vazir Sultan Tobacco Co. Ltd., (1997) 4 SCC 201
[10] Nandhini Deluxe Vs Karnataka Co-operative Milk Producers Federation Ltd., 2018 (9) SCC 189, para 32.
[11] Ritik Kumar Rath, Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. – A Case Commentar, (2020) 3.1 JIPS 78, 86 (2020).
[12] Vishnudas Trading Vs Vazir Sultan Tobacco Co. Ltd., (1997) 4 SCC 201
