Trade Mark – Similar marks – Respondent, a cooperative federation of the Milk producers of Karnataka adopted the mark ‘NANDINI’ in the year 1985 and under this brand name produced and sold milk and milk products – On the other hand, appellant was in the business of running restaurants and it adopted the mark ‘NANDHINI’ for its restaurants in the year 1989 – Appellant applied for registration of the said mark in respect of various food products including milk and milk products – Respondent opposed the registration of the mark on the ground that it was deceptively similar to its own mark and was likely to deceive the public or cause confusion – Objections were rejected by the Deputy Registrar and registration was granted to the appellant – Appeals of the respondent were allowed by the IPAB – Writ petitions filed by the appellants were dismissed – On appeal, held: Appellant had adopted the trade mark in respect of items sold in its restaurants way back in the year 1989 which was soon after the respondent had started using the trade mark ‘NANDINI’ – 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 trade mark, i.e., within four years of the adoption thereof – Therefore, it was a case of concurrent user of trade mark by the appellant – Furthermore, Appellant had abandoned its claim for milk and milk products – Therefore, the order of the Deputy Registrar granting registration in favour of the appellant restored subject to modification that registration would not be given in respect of those milk and milk products for which appellant has abandoned its claim – Trade Mark Rules, 2002 – Class 29 and Class 30 under Schedule IV.
Allowing the appeals, the Court
HELD: Whether the appellant is entitled to seek registration of the mark ‘NANDHINI’ in respect of the goods in which it is dealt with and whether such a registration in favour of the appellant would infringe rights of the respondent.
1. 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 respondent respectively, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent. [Para 28] [304-G-H]
2. 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 trademark ‘NANDHINI’ and it had applied the trademark in respect of goods like coffee, tea, cocoa, sugar, rice etc. which are used in the products/services of restaurant business. The aforesaid items do not belong to Class 29 or 30 as per classification under Schedule IV to the Trade Marks Rules, 2002. Likewise, stationery items used by the appellant in the aid of its restaurant services are relatable to Class 16 of the Rules. In these circumstances, there was hardly any question of confusion or deception. [Para 29] [305-A-C]
3. Having arrived at the aforesaid conclusion, 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. [Para 30] [305-C-D]
4. On the facts of this case, it is not convincing to suggest that the appellant has adopted the trade mark to take unfair advantage of the trade mark of the respondent. The use of mark ‘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 which was soon after the respondent had started using the trade mark ‘NANDINI’. There is no document or material produced by the respondent to show that by the year 1989 the respondent had acquired distinctiveness in respect of this trade mark, i.e., within four years of the adoption thereof. It, therefore, appears to be a case of concurrent user of trade mark by the appellant. [Para 32] [308-C-E]
5. As a result, the order of the Deputy Registrar granting registration in favour of the appellant is hereby restored, subject to the modification that registration will not be given in respect of those milk and milk products for which the appellant has abandoned its claim. [Para 34] [309-A-B]
Vishnudas Trading as Vishnudas Kushandas v. The Vazir Sultan Tobacco Ltd. and Anr. 1996 (5) SCALE 267 : [1996] 3 Suppl. SCR 329 ; Eco Lean Research and Development A/S v. Intellectual Property Appellate Board and The Asst. Registrar of Trade Marks, Trade Mark Registry MANU/TN/3041/2011 ; London Rubber Co. Ltd. v. Durex Products Incorporated & Anr. [1964]
2 SCR 211 ; Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 : [2001] 2 SCR
743 ; National Sewing Thread Co. Ltd. v. James Chadwick and Bros. AIR 1953 SC 357 : [1953] SCR 1028 ; Bhanu Kumar Jain v. Archana Kumar and Anr. (2005) 1 SCC 787 : [2004] 6 Suppl. SCR 1104 ; Hope Plantations Ltd. v. Taluk Land Board, Peermade and Another (1999) 5 SCC 590 : [1998] 2 Suppl. SCR
514 – referred to.
Polaroid Corporation v. Polarad Electronics
Corporation 182 F. Supp. 350 (1960) ; Shree Nath Heritage Liquor Pvt. Ltd. & Ors. v. Allied Blender and Distillers Pvt. Ltd. (2015) 221 DLT 359 ; Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. (2010) 42 PTC 514 (Del) (DB) ; British Sugar Plc v. James Robertson & Sons Ltd. (1996) RPC 281 (CH) – referred to.
As published in the Supreme Court Reports, Supreme Court of India. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
This page is for informational and research purposes only and does not constitute legal advice. Consult a qualified advocate for advice specific to your situation.