use of mark ‘NANDHINI’.=The appellant herein, on the other hand, is in the business of running restaurants and it adopted the mark ‘NANDHINI’ for its restaurants in the year 1989 and applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants. The respondent had opposed the registration and the objections of the respondent were dismissed by the Deputy Registrar of the Trade Mark who passed orders dated August 13, 2007 allowing the registration of the said mark in favour of the appellant.= Section 8 of the Trade Marks Act as compared to Section 5 of the Trade Marks Act, 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and Fourth Schedule of the Rules-We may mention that the aforesaid principle of law while interpreting the provisions of Trade and Merchandise Act, 1958 is equally applicable as it is unaffected by the Trade Marks Act, 1999 inasmuch as the main object underlying the said principle is that the 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.- We also hold that 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 which was soon after the respondent had started using the trade mark ‘NANDINI’.- As a result, the orders of the IPAB and High Court are set aside. These appeals are allowed and 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, as noted in para 18(vii) above.

REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NOS. 2937-2942 OF 2018

M/S. NANDHINI DELUXE …..APPELLANT(S)

VERSUS

M/S. KARNATAKA CO-OPERATIVE MILK

PRODUCERS FEDERATION LTD.

…..RESPONDENT(S)

W I T H

CIVIL APPEAL NO. 2943-2944 OF 2018

J U D G M E N T

A.K.SIKRI, J.

The judgment dated 2nd December, 2014 given by the High

Court of Karnataka in writ petitions filed by the appellant herein is

the subject matter of detailed debate and arguments in the

present proceedings, because of the reason that the dispute in

question has evoked considerable controversy. The dispute

pertains to the use of mark ‘NANDHINI’. The respondent herein,

which is a Cooperative Federation of the Milk Producers of

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 1 of 47

Karnataka, adopted the aforesaid mark ‘NANDINI’ in the year

1985 and under this brand name it has been producing and

selling milk and milk products. It has got registration of this mark

as well under Class 29 and Class 30. The appellant herein, on

the other hand, is in the business of running restaurants and it

adopted the mark ‘NANDHINI’ for its restaurants in the year 1989

and applied for registration of the said mark in respect of various

foodstuff items sold by it in its restaurants. The respondent had

opposed the registration and the objections of the respondent

were dismissed by the Deputy Registrar of the Trade Mark who

passed orders dated August 13, 2007 allowing the registration of

the said mark in favour of the appellant.

2. We may note at this stage itself that the mark used by the

appellant is objected to by the respondent on the ground that it is

deceptively similar to the mark of the respondent and is likely to

deceive the public or cause confusion. According to the

respondent, the appellant could not use the said mark which now

belongs to the respondent inasmuch as because of its long and

sustained use by the respondent, the mark ‘NANDINI’ is held to

have acquired a distinctive character and is well-known to the

public which associates ‘NANDINI’ with the respondent

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 2 of 47

organization. Therefore, according to the respondent, it has

exclusive right to use the said mark and any imitation thereof by

the appellant would lead the public to believe that the foodstuffs

sold by the appellant are in fact that of the respondent. When

these objections were rejected by the Deputy Registrar and

registration granted to the appellant, the respondent approached

the Intellectual Property Appellate Board (for short, ‘IPAB’),

Chennai by filing appeal with the prayer that the registration given

by the Deputy Registrar, Trade Mark in favour of the appellant

be cancelled. These appeals of the respondent were allowed by

the IPAB vide common order dated 4th October, 2011 and the writ

petitions filed by the appellant there against have been dismissed

by the High Court vide impugned order dated 2nd December,

2014, thereby confirming the order of the IPAB and, in the

process, accepting the plea of the respondent therein.

3. Before we proceed further, it is pertinent to mention at this stage

that the milk and milk products, which are sold by the respondent

under the trade mark of ‘NANDINI’, fall under Class 29 and Class

30 as per classification under Schedule IV to the Trade Marks

Rules, 2002. On the other hand, various kinds of foodstuffs sold

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 3 of 47

by the appellant in its restaurants also fall under Class 29 and 30

as well as other Classes.

4. For the sake of clarity and comparison, we may also, at this stage

itself, give the representation of competing marks of the

appellant as well as respondent, which is as under :

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 4 of 47

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 5 of 47

5. Before we proceed to state the arguments of the learned counsel

for appellant and rebuttal thereof by the respondent, it would be

necessary to have a brief discussion in respect of the orders

passed by the Deputy Registrar of Trade Marks, IPAB and the

High Court.

ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:

6. This order discloses that the appellant herein had moved the

applications for registration of trade mark ‘NANDHINI DELUXE

WITH LOGO (Kannada)’’ in respect of meat, fish, poultry and

game, meat extracts, preserved, dried and cooked fruits and

vegetables, jellies, jams, eggs, milk and milk products, edible oils

and fats, salad dressings, preserves and all other goods being

included in Class 29. In the Opposition filed by the respondent

herein, it was, inter alia, stated that respondent was manufacturer

and dealer of milk and milk products, cattle feed and other allied

products which are the source of ‘NANDINI’ products. Trade mark

‘NANDINI’ with device of the cow is being used by the respondent

extensively not only in the State of Karnataka but in other parts of

country as well. This trade mark was registered in the name of

the respondent which was used right from the year 1985. The

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 6 of 47

trade mark sought to be adopted by the appellant was confusingly

and deceptively similar to the respondent’s trade mark. It was a

clever move on the part of the appellant who wanted to trade

upon and benefit from the reputation and goodwill acquired by the

respondent for the last so many years and, therefore, the

appellant could not claim any proprietary rights in the impugned

mark under Section 18(1) of the Trade Marks Act, 1999

(hereinafter referred to as the ‘Act’). Registration was objected to

under Sections 9,11,12 and 18 of the Act.

7. In the counter statement filed by the appellant to the aforesaid

objections, it was pleaded that the appellant had honestly

conceived and adopted the trade mark ‘NANDHINI’ in Kannada

with a particular artistic work, design and getup for running

vegetarian and non-vegetarian Andhra style restaurant. It had

opened as many as six branches (particulars whereof were given)

all over Bangalore by using trade mark ‘NANDHINI’ since 1989.

The appellant had also obtained registration of copyright of

‘NANDHINI’ under Copyright Act, 1957. It was further argued that

since the artistic work, design and getup adopted by the appellant

was totally different, there was no question of any deception or

confusion arising in the mind of public. Moreover, the class of

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 7 of 47

purchasers/customers of both the trade marks was entirely

different. The Deputy Registrar noted that the issues involved in

these proceedings were based on Sections1

9, 11 and 18 of the

Act. As per Section 9, the generic words cannot be registered as

trade mark unless they have acquired distinctiveness and are

1 S.9. Absolute grounds for refusal of registration.—(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing

the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate

the kind, quality, quantity, intended purpose, values, geographical origin or the time of

production of the goods or rendering of the service or other characteristics of the goods or

service;

(c) which consist exclusively of marks or indications which have become customary in the

current language or in the bona fide and established practices of the trade,

shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application

for registration it has acquired a distinctive character as a result of the use made of it or is a

well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of

any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper

Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

Explanation.—For the purposes of this section, the nature of goods or services in

relation to which the trade mark is used or proposed to be used shall not be a ground for

refusal of registration.

S. 11 Relative grounds for refusal of registration.—(1) Save as provided in section 12, a

trade mark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or services covered by the

trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services

covered by the trade mark, there exists a likelihood of confusion on the part of the public, which

includes the likelihood of association with the earlier trade mark.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 8 of 47

associated with the persons/company using the said mark. The

case set up by the appellant was that its mark was distinctive one

and was its trading style as well. It was also argued that trade

mark ‘NANDHINI’ is not an invented word and, therefore, there

was no question of copying trade mark of the respondent. The

(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.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be

prevented

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade

mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor

of the earlier trade mark or other earlier right consents to the registration, and in such case the

Registrar may register the mark under special circumstances under section 12. Explanation.—For

the purposes of this section, earlier trade mark means—

(a) a registered trade mark or convention application referred to in section 154 which has a

date of application earlier than that of the trade mark in question, taking account, where appropriate,

of the priorities claimed in respect of the trade marks;

(b) a trade mark which, on the date of the application for registration of the trade mark in

question, or where appropriate, of the priority claimed in respect of the application, was entitled to

protection as a well-known trade mark.

A trade mark shall not be refused registration on the grounds specified in sub-sections (2)

and (3), unless objection on any one or more of those grounds is raised in opposition proceedings

by the proprietor of the earlier trade mark.

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark,

take into account any fact which he considers relevant for determining a trade mark as a well-known

trade mark including—

(I) the knowledge or recognition of that trade mark in the relevant section of the public

including knowledge in India obtained as a result of promotion of the trade mark;

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 9 of 47

word ‘NANDHINI’ represents the name of goddess and a cow in

Hindu Mythology. The trade mark ‘NANDHINI’ is used by people

from all walks of life and it is also referred in puranas and Hindu

mythological stories. Large number of people worship NANDHINI

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including

advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the

trade mark applies;

(iv) the duration and geographical area of any registration of or any application for

registration of that trade mark under this Act to the extent they reflect the use or recognition of the

trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the

extent to which the trade mark has been recognised as a well-known trade mark by any court or

Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or

recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(I) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant

section of the public in India by any court or Registrar, the Registrar shall consider that trade mark

as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a

well-known trade mark, any of the following, namely:—

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark—

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other

than India; or

(v) that the trade mark is well-known to the public at large in India.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 10 of 47

as a goddess and, therefore, the respondent cannot claim

monopoly over the word ‘NANDHINI’.

8. Taking note of the aforesaid submissions and virtually accepting

the same, the Deputy Registrar noted that since the appellant is

using the trade mark continuously from 1st April, 1989 which claim

of the appellant was supported by documentary proof, objection

raised by the respondent under Section 9 stood waived.

(10) While considering an application for registration of a trade mark and opposition filed in

respect thereof, the Registrar shall—

(i) protect a well-known trade mark against the identical or similar trade marks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent

affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material

informations to the Registrar or where right to a trade mark has been acquired through use in good

faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the

registration of that trade mark or right to use that trade mark on the ground that such trade mark is

identical with or similar to a well-known trade mark.

S. 18. Application for registration.— (1) Any person claiming to be the proprietor of a trade

mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to

the Registrar in the prescribed manner for the registration of his trade mark.

(2) A single application may be made for registration of a trade mark for different classes of

goods and services and fee payable therefor shall be in respect of each such class of goods or

services.

(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks

Registry within whose territorial limits the principal place of business in India of the applicant or in

the case of joint applicants the principal place of business in India of the applicant whose name is

first mentioned in the application as having a place of business in India, is situate: Provided that

where the applicant or any of the joint applicants does not carry on business in India, the application

shall be filed in the office of the Trade Marks Registry within whose territorial limits the place

mentioned in the address for service in India as disclosed in the application, is situate.

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may

accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any,

as he may think fit.

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall

record in writing the grounds for such refusal or conditional acceptance and the materials used by

him in arriving at his decision.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 11 of 47

9. Coming to Section 11 of the Act which prohibits registration of

mark and the goods in which it is sought for registration is likely to

deceive or confuse, he noted that whereas respondent’s mark is

‘NANDINI’ per se, the appellant’s mark is ‘NANDHINI DELUXE

WITH LOGO (In Kannada). Moreover, respondent is using trade

mark ‘NANDINI’ in respect of dairy products, i.e., milk and milk

products only. On the other hand, the goods for which the

registration was sought by the appellant were altogether different,

even though both fall in the same Class, i.e., Class 29.

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 tenable. While coming to this conclusion, he also took

aid of some judgments of the IPAB as well as different High

Courts. In the process, he also rejected the contention of the

respondent that the trade mark used by the appellant was a

colourable imitation of the respondent’s trade mark which was

well-known mark under Section 11(2) of the Act.

10. Dealing with the objections on the touchstone of Section 18 of the

Act, the Deputy Registrar came to a conclusion that the appellant

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 12 of 47

is the proprietor of the mark as claimed under Section 18(1) of the

Act, but restricted his entitlement for registration by holding that

the appellant would not be entitled to registration in respect of

milk and milk products. Relevant discussion in this behalf is

reproduced below:

“The balance of convenience is in favour of the applicants.

The applicants are the extensive user of the mark since the

year 1989. the adoption of the mark by the Applicants is

honest and concurrent. To prove their claim, the applicants

have filed documents in support of application. In these

circumstance, the applicants are having definite claim to

the proprietorship of the mark applied for. Hence the

Applicants are the proprietors of the mark as claimed for

under the provisions of Section 18(1) of the Act.

On carefully considered the arguments advanced by both

the counsel and materials available on the record and the

evidence adduced by the concerned parties, in the interest

of justice and purity of the Register since the Applicants are

not using milk and milk products in class-29 whereas the

Opponents have proved that they are the famous Dairy

products producers and the evidence produced by the

Opponents also reveals that they are using the mark for

Milk and Milk products only. Therefore, the applicants are

directed to delete the goods “Milk and Milk products” from

the specification of goods by way of filing a request on from

TM-16 to delete the same and after deletion of the goods,

the same should be notified in the Trade Marks Journal.

It is significant to note that both Applicant and Opponent

are carrying business in Bangalore. While the Applicant

claims to be suing the trade mark NANDHINI since 1989,

the Opponents have been using the trade mark NANDINI

prior to Applicant, the artistic work, design and getup are

totally different. While the Applicant has been using the

traded mark NANDHINI with a lamp and written in a

particular style, the Opponents are using NANDINI with

device of cow. The Opponent has not produced any

evidence to show that use of trade mark NANDHINI by

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 13 of 47

Applicant is causing confusion or deception. In view of

continuous user of the trade mark NANDHINI by Applicant,

the Applicant has deemed to have become proprietor of the

trade mark NANDHINI.

Lastly coming to the exercise of discretion of the Registrar

vested with him, the onus to prove the claim of

proprietorship of the mark is always on the Applicants. The

Applicants have successfully discharged their onus that

they are the proprietors of the mark NANDHINI DELUXE

WITH LOGO (Kannada) applied for registration. In order to

safeguard the public interest and to protect the intellectual

and industrial property rights of the Applicants who are

honest adopters and bonafide users, the applicant’s trade

mark is to be protected by granting registration enabling

the applicants to use their mark legally without any

hindrance, this authority has no other alternative except to

allow application and to grant registration of the impugned

mark.

In view of the foregoing, it is ordered that the opposition

No. MAS-194405 is dismissed and application No. 982285

in Class-29 shall proceed to registration subject to deleting

the items “Milk and Milk products” from the specification of

goods by filing a request on form TM-16 and the amended

application should be notified in the Trade Marks Journal.”

ORDER DATED 20TH APRIL, 2010 OF THE IPAB :

11. The aforesaid order rejecting the opposition of the respondent to

the registration of trade mark ‘NANDHINI’ as sought by the

appellant and allowing appellant’s application for registration,

except for milk and milk products, was challenged by the

respondent by filing set of appeals. One such appeal being

OA/4/2008/TM/CH was decided by IPAB vide its order 20th April,

2010. The IPAB referred to the judgment of this Court in

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 14 of 47

Vishnudas Trading as Vishnudas Kushandas vs. The Vazir

Sultan Tobacco Ltd. and Anr.2 and quoted the following

passage therefrom:-

“In our view if a trader or manufacturer actually trades in or

manufactures only one or some of the articles coming

under a broad classification and such trader or

manufacturer has no bonafide intention to trade in or

manufacture other goods or articles which also fall under

the said broad classification, such trader or manufacturers

to get registration of separate and distinct goods which

may also be grouped under the broad classification.”

12. If registration has been given generally in respect of all the

articles under the broad classification and if it is established that

the trader or manufacturer who got such registration had not

intended to use any other article except the articles being used by

such trader or manufacturer, the registration of such trader is

liable to be rectified by limiting the ambit of registration and

confining such registration to the specific article or articles which

really concerns the trader or manufacturer enjoying the

registration made in his favour.

13. The IPAB noted that in the instant case, the respondent is dealing

with milk and milk products whereas the appellant is dealing with

the other products like meat and fish etc. from which dishes are

2 1996 SCALE (5) 267

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 15 of 47

prepared in its restaurants and served to the customers. It took

note of certain principles that when a person trades or

manufactures one good under the broad classification having no

bona fide intention to trade in all other goods falling under that

broad classification, he cannot be permitted to enjoy monopoly in

articles falling under such classification as held in Vishnudas

Trading as Vishnudas Kushandas2

. Therefore, in the instant

case, when the respondent has its limited business only in milk

and milk products with no intention to expand the business of

trading in other goods falling under Class 29 and the appellant

was given registration in other articles only, specifically excluding

milk and milk products, there was nothing wrong in according

registration of those products in favour of the appellant under the

trade mark ‘NANDHINI’. The IPAB also observed that the

respondent had failed to prove that by allowing such registration

in favour of the appellant, any confusion or deception would

ensue. On that reasoning, appeal of the respondent was

dismissed. At the same time, the appellant was asked to file a

request on Form 16 to delete the goods ‘milk and milk products’

The appellant filed the affidavit to this effect, as directed by

IPAB on 18th July, 2011.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 16 of 47

ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :

14. Notwithstanding, order dated 20th April, 2018 passed by the IPAB,

insofar as other appeals of the respondent are concerned, the

events took a different turn as vide orders dated 4th October, 2011

appeals of the respondent herein were allowed by the IPAB. It

accepted the case of the respondent that ‘NANDINI’ is a wellknown

trade mark and a household name in the State of

Karnataka and that it is the registered trade mark of the

respondent. The goods sold are milk and milk products such as

curd, butter, cheese, ghee, milk powder, flavoured milk, paneer,

khoya, ice cream and all milk based sweets. They are sold in

bottles, sachets, tetra packs, polythene containers etc. The

device used by the respondent is standing cow on a grass land

having rising sun in the background. The IPAB also took note of

the statistics given by the respondent in respect of sales turnover

as well as advertisement and sale promotion expenditure for the

last 10 years. It had obtained several registrations in respect of

trade mark NANDINI and label forms in Classes 29, 30, 31 and

32 and had also secured copyright registration as early as in the

year 1984 and 1985.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 17 of 47

15. In the opinion of IPAB, the appellant is running a restaurant which

would come under Class 42 with which the Board was not

concerned. Therefore, the fact that respondent had not raised

any objection to appellant’s mark for 18 years was of no

relevance.

It also noted that insofar as this trade mark ‘NANDINI’ used

by the respondent is concerned, it has acquired distinctiveness.

It 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, therefore, there is likelihood of confusion.

Further, the respondent was using the trade mark prior to the

appellant in the same class of goods and, therefore, registration

of the appellant’s mark could not be permitted. We would like to

reproduce the following discussion as that captures the entire

essence of the reasoning given by the IPAB in support of its

conclusion:

“14. So each case has to be decided on the basis of t he

facts on hand. With regard to the appellant’s mark we find

that one of the documents which is the Kannada Weekly

Sudha where it is stated that “I am using NANDINI. You?”

In Tharanga Kahhanda Weekly, ‘Nandini Ghee has a role

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 18 of 47

in every moment of life celebration” (translated from

Kannada). These are pieces of evidence to show that the

word Nandini itself has become associated with the

appellant’s products and therefore, though it might be a

Hindu name, or even a deity’s name, it has come to be

recognized as a distinctive mark of the appellant by the

appellant’s use of the same for nearly two decades. The

conclusion of the Registrar that it is not likely to confuse

cannot be sustained. The word is identical. The addition

of a letter H by the respondent cannot make a difference.

Whether it is Nandini or Nandhini, it is pronounced

identically. And in Kannada there is no difference in the

spelling of the trademark of the appellant and that of the

respondent.

15. We have referred to the advertisement which says ‘I

am using Nandini”. It is clear that the consumer and the

general public who are the source of the goods ‘when the

word Nandini is used. When that is so, we cannot permit

the respondent to use the identical mark in relation to

goods which are akin to the appellants.

16. The addition of the Word Deluxe cannot improve the

case of the respondent since the word NANDHINI is

identical and it definitely will confusion in the minds of the

consumers.

17. The priority in use is indisputably the appellants. It

has been so and consistently used that the marks have

become entrenched in the minds of the consumer. It will

definitely not being in the interest of the public to allow the

respondent to use the mark in connection with the goods in

question. The balance of convenience is not in favour of

the respondent.”

IMPUGNED JUDGMENT OF THE HIGH COURT:

16. The High Court upholding the order dated 4th October, 2011 of the

IPAB and dismissing the writ petitions of the appellant herein has

done nothing except accepting the the aforesaid reasoning of the

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 19 of 47

IPAB, namely, (a) mark NANDINI as held by the respondent has

acquired a distinctive character and has become well-known; (b)

the use of another mark is different only in one alphabet but with

no difference in spelling or pronunciation in the local language

and would very likely to cause confusion in the minds of public if

allowed to be registered for the commodities falling in the same

class; (c) argument of the appellant herein that it was running the

business of restaurant since 1989 and the respondent had started

using mark ‘NANDINI’ since the year 1985 only for milk and not

for other products was rejected on the ground that there is no

foundation in facts for the aforesaid argument and no material

was produced to substantiate the same.

17. As stated in the beginning, very detailed arguments are advanced

by counsel for both the parties. The precise nature of the

arguments of the parties is as follows:

18. Mr. Sushant Singh, learned counsel appearing for the appellant,

advanced the following propositions, while laying attack to the

orders of IPAB as well as the High Court:

(i) In the first instance, he submitted that both the High Court

of Karnataka as well as IPAB grossly erred in law in interpreting

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 20 of 47

the provisions of Section 11 of the Act to mean that once a

trademark has acquired a distinctive character, then the

registration of the trade mark is barred and is likely to cause

confusion if it is allowed to be registered in the commodities

within the same class. His response was that this finding of the

High Court of Karnataka as well as of IPAB, is in principle

erroneous inasmuch as there is no proposition of law which

supports this interpretation to Section 11 of the Act. Learned

counsel emphasised that no proper weightage and consideration

was given to the fact that goods and services of the appellant

were totally different from that of the respondent and, therefore,

there was no likelihood of confusion or deception among the

public. Instead, the courts below compared only the marks. This

is not in accord with Sections 9 and 11 of the Act. He also

referred to the following judgments in support of his plea:

(a) Eco Lean Research and Development A/S v. Intellectual

Property Appellate Board and The Asst. Registrar of Trade

Marks, Trade Mark Registry3

:

“11. As noticed above, the intimation given to the petitioner

at the first instance by the Trade Mark Registry on

6.12.2007 is by stating that the registration has been

refused under Sections 9 and 11 of the Act. However, in

the grounds of decision, the order proceeds only under

Section 11 and not under Sections 9 and 11 of the Act.”

3 MANU/TN/3041/2011

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 21 of 47

(b) British Sugar Plc v. James Robertson & Sons Ltd.4

:

“(d) Infringement pursuant to section 10(2)?

Because “Treat” is the very mark registered and is

clearly used by Robertson’s I think the case falls to be

considered under section 10(2)(a), the identical

mark/similar goods provision. I do not think it falls within

section 10(2)(b) because I reject the argument that the sign

used is to be regarded as “Robertson’s Toffee Treat”. That

is used too but the first two words are added matter and it

does not matter in what capacity “Treat” is used.

The questions arising under section 10(2)(a) are:

(1) Is the mark used in the course of trade?

(2) Are the goods for which it is used similar to those

covered by the registration?

(3) Is there a likelihood of confusion because of that

similarity?

The first of these questions causes no difficulty here.

The problems arise under the second and third questions.

British Sugar seek to elide the questions of confusion and

similarity. Their skeleton argument contends that there is

“use in relation to a product so similar to a dessert sauce

that there exists a likelihood of confusion because the

product may or will be used for identical purposes.” I do

not think it is legitimate to elide the question in this way.

The sub-section does not merely ask “will there be

confusion?”: it asks “is there similarity of goods?”, if so, “is

there a likelihood of confusion?” The point is important.

For if one elides the two questions than a “strong” mark

would get protection for a greater range of goods than a

“weak” mark. For instance “Kodak” for socks or bicycles

might well cause confusion, yet these goods are plainly

dissimilar from films or cameras. I think the question of

similarity of goods is wholly independent of the particular

mark the subject of registration or the defendant’s sign.”

4 (1996) RPC 281 (CH)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 22 of 47

(c) London Rubber Co. Ltd. v. Durex Products Incorporated

& Anr.5

:

“8. The provisions of Sections 8 and 10 of the Act are

enabling provisions in the sense that it is not obligatory

upon a proprietor of a mark to apply for its registration so

as to be able to use it. But when a proprietor of a mark, in

order to obtain the benefit of the provisions of the Trade

Marks Act, such as a legally protected right to use it,

applies for registration of his mark he must satisfy the

Registrar that it does not offend against the provisions of

Section 8 of the Act. The burden is on him to do so.

Confining ourselves to clause (a) the question which the

Registrar has to decide is, whether having regard to the

reputation acquired by use of a mark or a name, the mark

at the date of the application for registration if used in a

normal and fair manner in connection with any of the goods

covered by the proposed registration, will not be

reasonably likely to cause deception and confusion

amongst a substantial number of persons (See 38

Halsbury’s Laws of England pp. 542-43). What he decides

is a question of fact but having decided it in favour of the

applicant, he has a discretion to register it or not to do so

(Re Hack’s Application [(1940) 58 RPC 91] ). But the

discretion is judicial and for exercising it against the

applicant there must be some positive objection to

registration, usually arising out of an illegality inherent in

the mark as applied for at the date of application for

registration (Re Arthur Fairest Ltd. Application [(1951) 68

RPC 197] ). Deception may result from the fact that there is

some misrepresentation therein or because of its

resemblance to a mark, whether registered or unregistered,

or to a trade name in which a person other than the

applicant had rights (Eno v. Dunn [(1890) 15 AC 252] ).

Where the deception or confusion arises because of

resemblance with a mark which is registered, objection to

registration may come under Section 10(1) as well (See

note ‘k’ at p. 543 of 38 Halsbury’s Laws of England). The

provisions in the English Trade Marks Act, 1938 (1 & 2

Geo. 6 clause 22) which correspond to Sections 8 and

10(1) to 10(3) of our Act are Sections 11 and 12(1) to

12(3). Dealing with the prohibition of registration of identical

5 (1964) 2 SCR 211

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 23 of 47

and similar marks Halsbury has stated at pp. 543-44, Vol.

38, thus:

“Subject to the effect of honest concurrent use or

other special circumstances, no trade mark may be

registered in respect of any goods or description of

goods that (1) is identical with a trade mark belonging

to a different proprietor and already registered in

respect of the same goods or description of goods; or

(2) so nearly resembles such a registered trade mark

as to be likely to deceive or cause confusion.”

Since the Trade Marks Act, 1940 is based on the English

statute and the relevant provisions are of the same nature

in both the laws, though the language of Section 8(a) is

slightly different from that of Section 11 of the English Act

and that of Section 10(1) from that of Section 12(1) of the

English Act, we see no reason for holding that the

provisions of Section 8(a) would not apply where a mark

identical with or resembling that sought to be registered is

already on the register. The language of Section 8(a) is

wide and though upon giving full effect to that language the

provisions of Section 10(1) would, in some respects,

overlap those of Section 8(a), there can be no justification

for not giving full effect to the language used by the

legislature.”

(ii) He also argued that even if it is assumed that Section 9(2)(a)

is distinct from Section 11(1), insofar as enquiry “likelihood of

confusion and deception” is concerned, it was supposed to be

undertaken by applying well settled factors and variables which

are stipulated in a series of judgments. He referred to Polaroid

Corporation v. Polarad Electronics Corporation6

, Shree Nath

Heritage Liquor Pvt. Ltd. & Ors. v. Allied Blender and

6 182 F. Supp. 350 (1960)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 24 of 47

Distillers Pvt. Ltd.7 and Cadila Health Care Ltd. v. Cadila

Pharmaceuticals Ltd.8

in this behalf.

(iii) Another submission of Mr. Sushant Singh 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.9

where the Court has

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 and the trade mark which is identical or similar in

nature can be registered for the goods which are falling within the

same class inasmuch as giving the monopoly to the entire class

of goods and services to the registered proprietor would lead to

trafficking in the trade mark which is not the object and the

purpose of the Trade Mark Act.

(iv) Learned counsel went to the extent of targeting the finding

that Trademark “NANDHINI” adopted by the respondent is a wellknown

inasmuch as such finding was without any supporting

material. In this behalf, he attempted to show that there was no

7 (2015) 221 DLT 359

8 (2001) 5 SCC 73

9 (1997) 4 SCC 201

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 25 of 47

finding by the IPAB that the mark “NANDHINI” of the respondent

is a well-known mark. He argued that the concept of well-known

trademark enshrined under Section 11(2) of the Act which gives

wider net of protection to the trademarks in respect of different set

of goods is a completely different than that of the Section 11(1). It

is submitted that for arriving at the conclusion of well-known

trademark there are certain defined parameters on which the

trademark is required to be tested, as held by Delhi High Court in

Nestle India Ltd. v. Mood Hospitality Pvt. Ltd.10

(v) According to the learned counsel, the matter also needed to

be examined in the light of the fact that the nature of the mark

“NANDHINI” which is admittedly a common name and name of

the diety and coupled with its level of distinctiveness on account

of its user confined to milk and milk products would not warrant

invocation of Section 11(2) of the Act as the said provision is

applicable in the present case. Stress was laid on the submission

that the use of the mark “NANDHINI” by the appellant is honest

and with due cause since the year 1989. Respondent has never

filed any suit for injunction against the appellant and clearly

10 (2010) 42 PTC 514 (Del) (DB)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 26 of 47

acquiesced to the user of the appellant. Therefore, Section 11(2)

is not applicable.

(vi) Advancing the aforesaid line of argument, his another

submission was that Section 12 is an inbuilt scheme which allows

the Registrar to register same or similar trademark in respect of

same or similar goods. More so, when the name “NANDHINI” is a

common name of the deity and common name of Hindu girl to

which IPAB agrees. In this context, he also referred to the order

passed by the Registrar wherein concurrent user of both the

appellant and the respondent was accepted and submitted that

there was no reason to upset the said finding.

(vii) Mr. Sushant Singh further argued that since the respondent

was in the business of manufacture and marketing of milk and

milk products only, and had admittedly not expanded its business

to any other items in Class 29 or 30, the case of the respondent at

the highest could be qua milk and milk products only. He

submitted that the appellant was ready to give concession by not

claiming any registration or trademarks which fell in the category

of milk and milk products. In this behalf, he submitted the list of

goods which the appellant was ready to delete from its application

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 27 of 47

for registration and the goods in respect of which the appellant

intended to claim registration. This was submitted in the tabulated

form as under:

CLASS GOODS APPLIED IN THE

TRADE MARK APPLICATION

GOODS

PROPOSED

TO BE

DELETED

GOODS

PROPOSED

TO BE

RETAINED

Class 29 TRADE MARK APP. NO. 982285

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,

salad dressings, preserves and

all other goods being included in

Class 29.

Eggs; milk and

milk products

and all other

goods being

included in

Class 29.

Meat, fish,

poultry and

game; meat

extracts;

preserved,

dried and

cooked fruits

and

vegetables;

jellies, jams,

fruit sauces;

edible oils

and fats,

salad

dressings,

preserves

Class 30 TRADE MARK APP. NO. 817305

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

(except salad dressings), spices,

ice and all other goods being

included in Class 30

TRADE MARK APP. NO. 982284

Coffee, tea, cocoa, sugar, rice,

sago, substitute flour and

preparations made from cereal,

bread, biscuits, cakes, pastry and

confectionery, ices, honey, yeast,

baking powder, salt, mustard,

pepper, masala paste, vinegar

Tea, coffee,

cocoa, artificial

coffee, coffee

substitute,

biscuits, cakes,

pastry and

confectionery,

ices, ice and all

other goods

being included

in Class 30.

Sugar, rice,

tapioca,

sago, flour

and

preparations

made from

cereals,

bread, honey,

treacle,

yeast,

bakingpowder,

salt,

mustard,

pepper,

masala

paste,

vinegar,

sauces

(except salad

dressings),

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 28 of 47

sauces, spices spices.

(viii) The learned counsel submitted that neither the IPAB nor the

High Court had answered all the questions/issues which had been

raised by the Registrar on the basis of which findings of the

Registrar had been premised including under Section 12 of the

Act. Moreover, argued the counsel, IPAB did not even refer to or

take into consideration the earlier order dated April 20, 2010

passed by IPAB itself wherein IPAB had dismissed the appeal of

the respondent on the same issue. Therefore, the appeal filed by

the respondent before the IPAB was even barred by the Principle

of Issue Estoppel.

19. Mr. S.S. Naganand, learned senior counsel appearing for the

respondent submitted, per contra, that IPAB had properly

considered all the contentions expressly argued in the appeal as

well as in the review petition. It had recorded the factual position

and upon such appreciation of facts, the IPAB concludes not only

that “the word Nandhini has acquired a distinctiveness” but also

that “there is no doubt that if goods under Class 29 and 30

bearing the respondent’s (petitioner herein) trademark come out

in the market, the average consumer would conclude that it

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 29 of 47

belongs to the Karnataka Cooperative Milk Producers

Federation”. The IPAB was also pleased to hold that “the work

Nandhini itself has become associated with the appellant’s

(present respondent’s) products and, therefore, though it might

be a Hindu name, or even a deity’s name, it has come to be

recognized as a distinctive mark of the appellant by the

appellant’s use of the same for nearly two decades. The

conclusion of the Registrar that it is not likely to confuse cannot

be sustained.” These findings were expressly affirmed by the

High Court in the impugned judgment. Mr. Naganand also

submitted that all the essential characteristics of a well-known

mark as understood under Section 11(2) read with Section 11(8)

of the Act have been found by the IPAB in the respondent’s mark

“NANDHINI”. Under Section 11(8) of the Act, if any Court or

Registrar has found that a trade mark is well-known in at least

one relevant section of the public in India, it shall be a well-known

trade mark for purposes of the Act. Based on the facts and

evidence on record, IPAB has clearly recorded a finding that the

respondent’s trademark is associated with the respondent

organisation and that it has acquired distinctiveness in Paras 9

and 14 of the IPAB order. These findings of fact cover the

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 30 of 47

essentials to be considered as a ‘well-known’ trademark and a

household name. The High Court has affirmed the correct

findings of the IPAB. He asserted that the respondent’s

trademark “NANDHINI” is a household name in the entire South

India, and more so in Karnataka. “NANDHINI” is to Karnataka

what “Amul” is to Gujarat. Therefore, there can be no doubt as

to “NANDHINI” being a well-known mark. It is important to note

that the appellant is running Restaurants only in the city of

Bangalore in Karnataka and one town in Tamil Nadu. Outside the

city of Bangalore, the public are not aware of the respondent’s

restaurant and “NANDHINI” all over Karnataka is related

exclusively to the respondent organisation.

20. Insofar as argument of the appellant that “NANDHINI” is the

name of a God/Deity and, therefore, cannot be registered as

Trademark, reply of the learned senior counsel was that this

argument is counterproductive and against the appellant’s own

interest. He submitted that the prevailing question in the present

petition is whether or not the appellant can register a trademark

bearing the name “NANDHINI”. If it is the appellant’s averment

that the name “NANDHINI” is the name of a Hindu deity and as a

result cannot be registered, then such an argument will not only

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 31 of 47

render futile the very registration the appellant has applied for, but

will also render the present petition otiose.

Without prejudice to the above, he argued that merely

because the word “NANDHINI” denotes a Hindu Goddess or

deity, does not mean that it cannot be registered. He submitted

that the only provision contained in the Act on the subject matter

of registration of trademarks that affect religious sentiments is

contained in Section 9(2)(b) which is set out below for ready

reference:

“Section 9(2) : A mark shall not be registered as a

trademark if:

(b) : it contains or comprises of any matter likely to hurt

the religious susceptibilities of any class or section of

the citizens of India.”

21. According to the learned senior counsel, the significance of

Nandhini, as a symbol of purity and the source of wholesome milk

is the reason for the adoption of that word by the respondent. In

view of the same, the registration of the trademarks of the

respondent in the present case, do not fall within the ambit of the

provisions of Section 9(2)(b) of the Act. There is no prohibition in

law to include the name of any God as a part of a trademark. It is

settled law that if a mark has obtained a secondary

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 32 of 47

distinctiveness in the minds of the consumer, then the same

should be registered and protected. He emphasised that the

respondent has been able to prove that the appellant’s case was

covered by Section 11(2) of the Act and, therefore, it could not be

registered. For this purpose, he referred to the judgment of Delhi

High Court in Nestle India Ltd. wherein the Court laid down

following conditions which need to be satisfied for the applicability

of Section 11(2):

“(a) The mark has to be identical with or similar to an

earlier trademark and is to be registered for goods or

services which are not similar to those for which the

earlier trademarks is registered – both the

aforementioned conditions (forming sub-section (a)

and (b) of Section 11(2)) have to be satisfied and not

just one, due to the use of the word and between them.

(b) The registered Trademark must have a reputation

in India, and

(c) The use of the mark in question must be without

due cause, and

(d) Such use must take unfair advantage of or be

detrimental to the distinctive character or repute of the

registered trademark.”

22. In this hue, another submission of the learned senior counsel for

the respondent was that the appellant’s contention regarding

honest and concurrent user was untenable for the following

reasons:

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 33 of 47

(a) The question of the Court/Registrar taking into consideration

the provisions of Section 12 of the Act, which provides for

registration in the case of honest and concurrent user does not

arise as the very basis for the application of this Section is the

“honesty of the concurrent use.” The appellant was wellaware

of the widespread use of the mark Nandhini by the

respondent and has admitted that they were purchasing Nandhini

milk for their restaurant. Therefore, the appellant cannot claim to

be an honest or concurrent user, as such claims would be

contrary to the evidence placed on record and their own

admissions.

(b) Section 12 of the Act relates to identical or similar goods or

services. The appellant is not in the business of selling milk or

milk products and the claim made by it is with regard to the

trading style for their restaurants’ name “NANDHINI”. Therefore,

the goods or services of the appellant are neither identical, nor

similar, to those of the the respondent.

(c) At any rate, Section 11(2) being couched in negative

language indicates that it is mandatory nature and would override

the provisions of Section 12.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 34 of 47

(d) Section 12 has never been expressly pleaded by the

appellant. In any case, this contention has not been expressly

argued on behalf of the appellant before the lower fora.

23. We have duly considered the aforesaid submissions of both the

counsel with reference to the record of the case. Though the

detailed arguments are advanced touching upon various aspects,

it is not necessary to traverse through all these arguments. We

proceed on the presumption that the trade mark ‘NANDHINI’,

which is registered in the name of the appellant has acquired

distinctiveness though the appellant disputes the same.

Otherwise also there is no challenge to the registration of this

name in favour of the respondent. The moot question, according

to us, is as to whether the appellant is entitled to seek registration

of the mark ‘NANDHINI’ in respect of the goods in which it is dealt

with, as noted above. Therefore, the fulcrum of the dispute is as

to whether such a registration in favour of the appellant would

infringe rights of the respondent. The entire case of the

respondent revolves around the submissions that the adaptation

of this trade mark by the appellant, which is phonetically similar to

that of the respondent, is not a bona fide adaptation and this

clever device is adopted to catch upon the goodwill which has

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 35 of 47

been generated by the respondent in respect of trade mark

‘NANDINI’. On that premise, the respondent alleges that the

proposed trade mark ‘NANDHINI’ for which the appellant applied

for registration is similar trade mark in respect of similar goods

and, therefore, it is going to cause deception and confusion in the

minds of the users that the goods in which the appellant is

trading, in fact, are the goods which belong to the respondent.

Precisely, it is this controversy which needs to be addressed in

the first instance.

24. Before we answer as to whether the approach of the IPAB and

the High Court in the impugned orders is correct, as contended

by the respondent or it needs to be interdicted as submitted by

the appellant, some of the relevant facts about which there is no

dispute, need to be recapitulated. These are as follows:

(A) Respondent started using trade mark in respect of its

products, namely, milk and milk products in the year 1985. As

against that, the appellant adopted trade mark ‘NANDHINI’ in

respect of its goods in the year 1989.

(B) Though, the respondent is a prior user, the appellant also

had been using this trade mark ‘NANDHINI’ for 12-13 years

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 36 of 47

before it applied for registration of these trade marks in respect of

its products.

(C) The goods of the appellant as well as respondent fall under

the same Classes 29 and 30. Notwithstanding the same, the

goods of the appellant are different from that of the respondent.

Whereas the respondent is producing and selling only milk and

milk products the goods of the appellant are fish, meat, poultry

and game, meat extracts, preserved, dried and cooked fruits and

vegetables, edible oils and fats, salad dressings, preserves etc.

and it has given up its claim qua milk and milk products.

(D) Insofar as application for registration of the milk and milk

products is concerned, it was not granted by the trade mark

registry. In fact, the same was specifically rejected. The

appellant was directed to file the affidavit and Form 16 in this

behalf to delete the goods ‘milk and milk products’ which affidavit

was filed by the appellant. Further concession is already

recorded above.

(E) NANDINI/NANDHINI is a generic, it represents the name of

Goddess and a cow in Hindu Mythology. It is not an invented or

coined word of the respondent.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 37 of 47

(F) The nature and style of the business of the appellant and

the respondent 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’, the business of the appellant is that of running

restaurants and the registration of mark ‘NANDHINI’ as sought by

the appellant is in respect of various foodstuffs sold by it in its

restaurants.

(G) Though there is a phonetic similarity insofar as the words

NANDHINI/NANDINI are concerned, the trade mark with logo

adopted by the two parties are altogether different. The manner

in which the appellant has written NANDHINI as its mark is totally

different from the style adopted by the respondent for its mark

‘NANDINI’. Further, the appellant has used and added the word

‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed

by the words ‘the real spice of life’. There is device of lamp with

the word ‘NANDHINI’. In contrast, the respondent has used only

one word, namely, NANDINI which is not prefixed or suffixed by

any word. In its mark ‘Cow’ as a logo is used beneath which the

word NANDINI is written, it is encircled by egg shape circle. A

bare perusal of the two marks would show that there is hardly any

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 38 of 47

similarity of the appellant’s mark with that of the respondent when

these marks are seen in totality.

25. When we examine the matter keeping in mind the aforesaid

salient features, it is difficult to sustain the conclusion of the IPAB

in its order dated 4th October, 2011 as well in the impugned order

of the High Court that the mark adopted by the appellant will

cause any confusion in the mind of consumers, what to talk of

deception. We do not find that the the two marks are deceptively

similar.

26. We are of further opinion that the earlier order dated 20th April,

2010 of IPAB approached the subject matter in correct

perspective. The test laid down in Polaroid Corporation vs.

Polarad Electronics Corporation11 is as follows:

“The problem of determining how far a valid trademark

shall be protected with respect to goods other than those to

which its owner has applied it, has long been vexing and

does not become easier of solution with the years. Neither

of our recent decisions so heavily relied upon by the

parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond’s, Inc.,

2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co.,

Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by

defendant, affords much assistance, since in the Ritchie

case there was confusion as to the identical product and

the defendant in the Avon case had adopted its mark

“without knowledge of the plaintiffs’ prior use,” at page 611.

Where the products are different, the prior owner’s chance

11 287 F.2d 492 (1961)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 39 of 47

of success is a function of many variables: the strength of

his mark, the degree of similarity between the two marks,

the proximity of the products, the likelihood that the prior

owner will bridge the gap, actual confusion, and the

reciprocal of defendant’s good faith in adopting its own

mark, the quality of defendant’s product, and the

sophistication of the buyers. Even this extensive catalogue

does not exhaust the possibilities — the court may have to

take still other variables into account. American Law

Institute, Restatement of Torts, §§ 729, 730, 731. Here

plaintiff’s mark is a strong one and the similarity between

the two names is great, but the evidence of actual

confusion, when analyzed, is not impressive. The filter

seems to be the only case where defendant has sold, but

not manufactured, a product serving a function similar to

any of plaintiff’s, and plaintiff’s sales of this item have been

highly irregular, varying, e. g., from $2,300 in 1953 to

$303,000 in 1955, and $48,000 in 1956.”

27. This Court in National Sewing Thread Co. Ltd. vs. James

Chadwick and Bros.12 accepted the following principles which

are to be applied in such cases:

“22. The principles of law applicable to such cases are well

settled. The burden of proving that the trade mark 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 trade mark does not fall within the

prohibition of Section 8 and therefore it should be

registered. Moreover in deciding whether a particular trade

mark is likely to deceive or cause confusion that duty is not

discharged by arriving at the result by merely comparing it

with the trade mark 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, would react to a

particular trade mark, what association he would form by

looking at the trade mark, and in what respect he would

12 AIR 1953 SC 357

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 40 of 47

connect the trade mark with the goods which he would be

purchasing.”

28. Applying the aforesaid principles to the instant case, when we

find that 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, highlighted above, it is difficult to imagine that an

average man of ordinary intelligence would associate the goods

of the appellant as that of the respondent.

29. 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, rapioca, 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

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 41 of 47

services are relatable to Class 16. In these circumstances, there

was hardly any question of confusion or deception.

30. 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. On the contrary, this Court in Vishnudas

Trading as Vishnudas Kushandas2 has decided otherwise as

can be seen from the reading of para 47 of the said judgment:-

“47. The respondent Company got registration of its

brand name “Charminar” under the broad classification

“manufactured tobacco”. So long such registration

remains operative, the respondent Company is entitled

to claim exclusive use of the said brand name in respect

of articles made of tobacco coming under the said broad

classification “manufactured tobacco”. Precisely for the

said reason, when the appellant made application for

registration of quiwam and zarda under the same brand

name “Charminar”, such prayer for registration was not

allowed. The appellant, therefore, made application for

rectification of the registration made in favour of the

respondent Company so that the said registration is

limited only in respect of the articles being

manufactured and marketed by the respondent

Company, namely, cigarettes. In our view, if a trader or

manufacturer actually trades in or manufactures only

one or some of the articles coming under a broad

classification and such trader or manufacturer has no

bona fide intention to trade in or manufacture other

goods or articles which also fall under the said broad

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 42 of 47

classification, such trader or manufacturer should not be

permitted to enjoy monopoly in respect of all the

articles which may come under such broad classification

and by that process preclude the other traders or

manufacturers from getting registration of separate and

distinct goods which may also be grouped under the

broad classification. If registration has been given

generally in respect of all the articles coming under the

broad classification and if it is established that the

trader or manufacturer who got such registration had

not intended to use any other article except the articles

being used by such trader or manufacturer, the

registration of such trader is liable to be rectified by

limiting the ambit of registration and confining such

registration to the specific article or articles which really

concern the trader or manufacturer enjoying the

registration made in his favour. In our view, if

rectification in such circumstances is not allowed, the

trader or manufacturer by virtue of earlier registration

will be permitted to enjoy the mischief of trafficking in

trade mark. Looking to the scheme of the registration of

trade mark as envisaged in the Trade Marks Act and the

Rules framed thereunder, it appears to us that

registration of a trade mark cannot be held to be

absolute, perpetual and invariable under all

circumstances. Section 12 of the Trade Marks Act

prohibits registration of identical or deceptively

similar trade marks in respect of goods and

description of goods which is identical or

deceptively similar to the trade mark already

registered. For prohibiting registration under

Section 12(1), goods in respect of which

subsequent registration is sought for, must be (i)

in respect of goods or description of goods being

same or similar and covered by earlier

registration and (ii) trade mark claimed for such

goods must be same or deceptively similar to the

trade mark already registered. It may be noted

here that under sub-section (3) of Section 12 of

the Trade Marks Act, in an appropriate case of

honest concurrent use and/or of other special

circumstances, same and deceptively similar

trade marks may be permitted to another by the

Registrar, subject to such conditions as may deem

just and proper to the Registrar. It is also to be

noted that the expression “goods” and “description of

goods” appearing in Section 12(1) of the Trade Marks

Act indicate that registration may be made in respect of

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 43 of 47

one or more goods or of all goods conforming a general

description. The Trade Marks Act has noted

distinction between description of goods forming

a genus and separate and distinctly identifiable

goods under the genus in various other sections

e.g. goods of same description in Section 46,

Sections 12 and 34 and class of goods in Section

18, Rules 12 and 26 read with Fourth Schedule to

the Rules framed under the Act.

48. The “class” mentioned in the Fourth Schedule may

subsume or comprise a number of goods or articles

which are separately identifiable and vendible and

which are not goods of the same description as

commonly understood in trade or in common parlance.

Manufactured tobacco is a class mentioned in Class 34

of Fourth Schedule of the Rules but within the said class,

there are a number of distinctly identifiable goods which

are marketed separately and also used differently. In our

view, it is not only permissible but it will be only just and

proper to register one or more articles under a class or

genus if in reality registration only in respect of such

articles is intended, by specifically mentioning the

names of such articles and by indicating the class under

which such article or articles are to be comprised. It is,

therefore, permissible to register only cigarette or some

other specific products made of “manufactured

tobacco” as mentioned in Class 34 of Fourth Schedule of

the Rules. In our view, the contention of Mr

Vaidyanathan that in view of change in the language of

Section 8 of the Trade Marks Act as compared to Section

5 of the Trade Marks Act, 1940, registration of trade

mark is to be made only in respect of class or genus and

not in respect of articles of different species under the

genus is based on incorrect appreciation of Section 8 of

the Trade Marks Act and Fourth Schedule of the Rules.”

31. We may mention that the aforesaid principle of law while

interpreting the provisions of Trade and Merchandise Act, 1958 is

equally applicable as it is unaffected by the Trade Marks Act,

1999 inasmuch as the main object underlying the said principle is

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 44 of 47

that the 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.

32. The aforesaid discussion leads us to hold that all the ingredients

laid down in Section 11(2) of the Act, as explained by the Delhi

High Court in Nestle India Ltd., have not been satisfied. We are

not persuaded to hold, on the facts of this case, that the appellant

has adopted the trade mark to take unfair advantage of the trade

mark of the respondent. We also hold that 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 which was soon after

the respondent had started using the trade mark ‘NANDINI’.

There is no document or material produced by the respondent to

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 45 of 47

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.

33. There is some force in the argument of learned counsel for the

appellant that IPAB while passing orders dated 4th October, 2011

ignored its earlier order, of a Coordinate Bench, passed on 20th

April, 2010. Appeal in which order dated 20th April, 2010 was

passed was between the same parties on identical issue. The

IPAB had dismissed the said appeal of the respondent and that

order had attained finality. Prima facie, this would act as an issue

of estoppel between the parties (see the Bhanu Kumar Jain vs.

Archana Kumar and Anr. [(2005) 1 SCC 787]; Hope

Plantations Ltd. vs. Taluk Land Board, Peermade and

Another, [(1999) 5 SCC 590)]. However, as we are holding that

the impugned orders of the IPAB and High Court are not

sustainable in law and have decided these appeals on merits it is

not necessary to make any further comments on the aforesaid

aspect.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 46 of 47

34. As a result, the orders of the IPAB and High Court are set aside.

These appeals are allowed and 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, as noted in para 18(vii) above.

35. In the peculiar facts of this case, we refrain ourselves from

awarding any costs.

………………………………………J.

(A.K. SIKRI)

………………………………………J.

(ASHOK BHUSHAN)

NEW DELHI;

JULY 26, 2018.

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