M/S. NANDHINI DELUXE versus M/S. KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD.

[2018] 11 S.C.R. 275

M/S. NANDHINI DELUXE

M/S. KARNATAKA CO-OPERATIVE MILK

PRODUCERS FEDERATION LTD.

(Civil Appeal Nos. 2937-2942 of 2018)

JULY 26, 2018

[A. K. SIKRI AND ASHOK BHUSHAN, JJ.]

Trade Mark – Similar marks – Respondent, cooperativefederation of the Milk producers of Karnataka adopted the mark‘NANDINI’ in the year 1985 and under this brand name producedand sold milk and milk products – On the other hand, appellantwas in the business of running restaurants and it adopted the mark‘NANDHINI’ for its restaurants in the year 1989 – Appellant appliedfor registration of the said mark in respect of various food productsincluding milk and milk products – Respondent opposed theregistration of the mark on the ground that it was deceptively similarto its own mark and was likely to deceive the public or causeconfusion – Objections were rejected by the Deputy Registrar andregistration was granted to the appellant – Appeals of the respondentwere allowed by the IPAB – Writ petitions filed by the appellantswere dismissed – On appeal, held: Appellant had adopted the trademark in respect of items sold in its restaurants way back in the year1989 which was soon after the respondent had started using thetrade mark ‘NANDINI’ – There was no document or materialproduced by the respondent to show that by the year 1989 therespondent had acquired distinctiveness in respect of this trade mark,i.e., within four years of the adoption thereof – Therefore, it was acase of concurrent user of trade mark by the appellant –Furthermore, Appellant had abandoned its claim for milk and milkproducts – Therefore, the order of the Deputy Registrar grantingregistration in favour of the appellant restored subject tomodification that registration would not be given in respect of thosemilk and milk products for which appellant has abandoned its claim– Trade Mark Rules, 2002 – Class 29 and Class 30 underSchedule IV.

AAllowing the appeals, the Court

HELD: Whether the appellant is entitled to seekregistration of the mark ‘NANDHINI’ in respect of the goods inwhich it is dealt with and whether such registration in favour ofthe appellant would infringe rights of the respondent.

1. In the instant case, not only visual appearance of thetwo marks is different, they even relate to different products.Further, the manner in which they are traded by the appellantand respondent respectively, it is difficult to imagine that anaverage man of ordinary intelligence would associate the goodsCof the appellant as that of the respondent. [Para 28] [304-G-H]

2. One other significant factor which is lost sight of by theIPAB as well as the High Court is that the appellant is operatinga restaurant under the trademark ‘NANDHINI’ and it had appliedthe trademark in respect of goods like coffee, tea, cocoa, sugar,Drice etc. which are used in the products/services of restaurantbusiness. The aforesaid items do not belong to Class 29 or 30 asper classification under Schedule IV to the Trade Marks Rules,2002. Likewise, stationery items used by the appellant in the aidof its restaurant services are relatable to Class 16 of the Rules.In these circumstances, there was hardly any question of confusionEor deception. [Para 29] [305-A-C]

3. Having arrived at the aforesaid conclusion, the reasoningof the High Court that the goods belonging to the appellant andthe respondent (though the nature of goods is different) belongto same class and, therefore, it would be impermissible for theFappellant to have the registration of the concerned trade mark inits favour, would be meaningless. That apart, there is no suchprinciple of law. [Para 30] [305-C-D]

4. On the facts of this case, it is not convincing to suggestthat the appellant has adopted the trade mark to take unfairGadvantage of the trade mark of the respondent. The use of mark‘NANDHINI’ by appellant in respect of its different goods wouldnot be detrimental to the purported distinctive character or reputeof the trade mark of the respondent. It is to be kept in mind that

NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILKPRODUCERS FEDERATION LTD.

the appellant had adopted the trade mark in respect of itemssold in its restaurants way back in the year 1989 which was soonafter the respondent had started using the trade mark ‘NANDINI’.There is no document or material produced by the respondent toshow that by the year 1989 the respondent had acquireddistinctiveness in respect of this trade mark, i.e., within four yearsof the adoption thereof. It, therefore, appears to be case ofconcurrent user of trade mark by the appellant. [Para 32][308-C-E]

5. As result, the order of the Deputy Registrar grantingregistration in favour of the appellant is hereby restored, subjectto the modification that registration will not be given in respectof those milk and milk products for which the appellant hasabandoned its claim. [Para 34] [309-A-B]

Vishnudas Trading as Vishnudas Kushandas v. The VazirSultan Tobacco Ltd. and Anr. 1996 (5) SCALE 267 :[1996] 3 Suppl. SCR 329 ; Eco Lean Research andDevelopment A/S v. Intellectual Property AppellateBoard and The Asst. Registrar of Trade Marks, TradeMark Registry MANU/TN/3041/2011 ; London RubberCo. Ltd. v. Durex Products Incorporated & Anr. [1964]2 SCR 211 ; Cadila Health Care Ltd. v. CadilaPharmaceuticals Ltd. (2001) 5 SCC 73 : [2001] 2 SCR743 ; National Sewing Thread Co. Ltd. v. JamesChadwick and Bros. AIR 1953 SC 357 : [1953] SCR1028 ; Bhanu Kumar Jain v. Archana Kumar and Anr.(2005) 1 SCC 787 : [2004] 6 Suppl. SCR 1104 ;Hope Plantations Ltd. v. Taluk Land Board, Peermadeand Another (1999) 5 SCC 590 : [1998] 2 Suppl. SCR514 – referred to.

Polaroid Corporation v. Polarad ElectronicsCorporation 182 F. Supp. 350 (1960) ; Shree NathHeritage Liquor Pvt. Ltd. & Ors. v. Allied Blender andDistillers Pvt. Ltd. (2015) 221 DLT 359 ; Nestle IndiaLtd. 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.

ACase Law Reference

CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 2937-2942 of 2018

From the Judgment and Order dated 02.12.2014 of the High CourtDof Karnataka at Bengaluru in Writ Petition Nos. 37192-37193,37194-37195 and 37203-37204 of 2013

WITH

Civil Appeal Nos. 2943-2944 of 2018.E

Sushant Singh, Ms. Namita Choudhary, Manish Choudhary,Harshul Choudhary, Ms. Kritika Khurana, Advs. for the Appellant.

Raghavendra S. Srivatsa, Saurabh Agarwal, Ms. Komal M.,Pankaj Kumar Mishra, A. S. Bhasme, Advs. for the Respondent.F

The Judgment of the Court was delivered by

A. K. SIKRI, J. 1. The judgment dated 2[nd] December, 2014given by the High Court of Karnataka in writ petitions filed by the appellantGherein is the subject matter of detailed debate and arguments in thepresent proceedings, because of the reason that the dispute in questionhas evoked considerable controversy. The dispute pertains to the use ofmark ‘NANDHINI’. The respondent herein, which is CooperativeFederation of the Milk Producers of Karnataka, adopted the aforesaidmark ‘NANDINI’ in the year 1985 and under this brand name it has

been producing and selling milk and milk products. It has got registrationof 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 adoptedthe mark ‘NANDHINI’ for its restaurants in the year 1989 and appliedfor registration of the said mark in respect of various foodstuff itemssold by it in its restaurants. The respondent had opposed the registrationand the objections of the respondent were dismissed by the DeputyRegistrar of the Trade Mark who passed orders dated August 13, 2007allowing the registration of the said mark in favour of the appellant.

2. We may note at this stage itself that the mark used by theappellant is objected to by the respondent on the ground that it isdeceptively similar to the mark of the respondent and is likely to deceivethe public or cause confusion. According to the respondent, the appellantcould not use the said mark which now belongs to the respondentinasmuch as because of its long and sustained use by the respondent,the mark ‘NANDINI’ is held to have acquired distinctive characterand is well-known to the public which associates ‘NANDINI’ with therespondent organization. Therefore, according to the respondent, it hasexclusive right to use the said mark and any imitation thereof by theappellant would lead the public to believe that the foodstuffs sold by theappellant are in fact that of the respondent. When these objectionswere rejected by the Deputy Registrar and registration granted to theappellant, the respondent approached the Intellectual Property AppellateBoard (for short, ‘IPAB’), Chennai by filing appeal with the prayer thatthe registration given by the Deputy Registrar, Trade Mark in favour ofthe appellant be cancelled. These appeals of the respondent were allowedby the IPAB vide common order dated 4[th] October, 2011 and the writpetitions filed by the appellant there against have been dismissed by theHigh Court vide impugned order dated 2[nd] December, 2014, therebyconfirming the order of the IPAB and, in the process, accepting the pleaof the respondent therein.

3. Before we proceed further, it is pertinent to mention at thisstage that the milk and milk products, which are sold by the respondentunder the trade mark of ‘NANDINI’, fall under Class 29 and Class 30as per classification under Schedule IV to the Trade Marks Rules, 2002.On the other hand, various kinds of foodstuffs sold by the appellant in itsrestaurants also fall under Class 29 and 30 as well as other Classes.

5. Before we we proceed to state the arguments of the learnedcounsel for appellant and rebuttal thereof by the respondent, it would benecessary to have brief discussion in respect of the orders passed bythe 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 theapplications for registration of trade mark ‘NANDHINI DELUXE WITHLOGO (Kannada)’’ in respect of meat, fish, poultry and game, meatextracts, preserved, dried and cooked fruits and vegetables, jellies, jams,eggs, milk and milk products, edible oils and fats, salad dressings, preservesand all other goods being included in Class 29. In the Opposition filed bythe respondent herein, it was, inter alia, stated that respondent wasmanufacturer and dealer of milk and milk products, cattle feed and otherallied products which are the source of ‘NANDINI’ products. Trademark ‘NANDINI’ with device of the cow is being used by the respondentextensively not only in the State of Karnataka but in other parts of countryas well. This trade mark was registered in the name of the respondentwhich was used right from the year 1985. The trade mark sought to beadopted by the appellant was confusingly and deceptively similar to therespondent’s trade mark. It was clever move on the part of the appellantwho wanted to trade upon and benefit from the reputation and goodwillacquired by the respondent for the last so many years and, therefore,the appellant could not claim any proprietary rights in the impugned markunder Section 18(1) of the Trade Marks Act, 1999 (hereinafter referredto as the ‘Act’). Registration was objected to under Sections 9,11,12and 18 of the Act.

7. In the counter statement filed by the appellant to the aforesaidobjections, it was pleaded that the appellant had honestly conceived andadopted the trade mark ‘NANDHINI’ in Kannada with particularartistic work, design and getup for running vegetarian and non-vegetarianAndhra 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 registrationof copyright of ‘NANDHINI’ under Copyright Act, 1957. It was furtherargued that since the artistic work, design and getup adopted by theappellant was totally different, there was no question of any deceptionor confusion arising in the mind of public. Moreover, the class ofpurchasers/customers of both the trade marks was entirely different.The Deputy Registrar noted that the issues involved in these proceedings

Awere based on Sections[1] 9, 11 and 18 of the Act. As per Section 9, thegeneric words cannot be registered as trade mark unless they have

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

B(b) which consist exclusively of marks or indications which may serve intrade to designate the kind, quality, quantity, intended purpose, values, geographicalorigin or the time of production of the goods or rendering of the service or othercharacteristics of the goods or service;

(c) which consist exclusively of marks or indications which have becomecustomary in the current language or in the bona fide and established practices of theCtrade,

shall not be registered:

Provided that trade mark shall not be refused registration if before the dateof application for registration it has acquired distinctive character as result of the usemade of it or is well-known trade mark.

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

(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 religioussusceptibilities 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 ofEImproper Use) Act, 1950 (12 of 1950).

(3) mark shall not be registered as trade mark if it consists exclusivelyof—

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

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

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

Explanation.—For the purposes of this section, the nature of goods orservices in relation to which the trade mark is used or proposed to be usedshall not be ground for refusal of registration.

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

Gsection 12, trade mark shall not be registered if, because of—

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

(b) its similarity to an earlier trade mark and the identity or similarity of thegoods or services covered by the trade mark, there exists likelihood of confusion onthe part of the public, which includes the likelihood of association with the earlier tradeHmark.

acquired distinctiveness and are associated with the persons/companyusing the said mark. The case set up by the appellant was that its markwas distinctive one and was its trading style as well. It was also argued

(2) 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 forwhich the earlier trade mark is registered in the name of different proprietor, shall notbe registered, if or to the extent, the earlier trade mark is well-known trade mark inIndia and the use of the later mark without due cause would take unfair advantage of orbe detrimental to the distinctive character or repute of the earlier trade mark.

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

(a) by virtue of any law in particular the law of passing off protecting anunregistered 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 trade markwhere the proprietor of the earlier trade mark or other earlier right consents to theregistration, and in such case the Registrar may register the mark under specialcircumstances under section 12. Explanation.—For the purposes of this section, earliertrade mark means—

(a) registered trade mark or convention application referred to in section154 which has date of application earlier than that of the trade mark in question,taking account, where appropriate, of the priorities claimed in respect of the trademarks;

(b) trade mark which, on the date of the application for registration of thetrade mark in question, or where appropriate, of the priority claimed in respect of theapplication, was entitled to protection as well-known trade mark.

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 inopposition proceedings by the proprietor of the earlier trade mark.

(6) The Registrar shall, while determining whether trade mark is well-known trade mark, take into account any fact which he considers relevant for determininga trade mark as well-known trade mark including—

(I) the knowledge or recognition of that trade mark in the relevant section ofthe public including knowledge in India obtained as result of promotion of the trademark;

Athat trade mark ‘NANDHINI’ is not an invented word and, therefore,there was no question of copying trade mark of the respondent. The

(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 tradeBmark, including advertising or publicity and presentation, at fairs or exhibition of thegoods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any applicationfor registration of that trade mark under this Act to the extent they reflect the use orrecognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; inparticular, the extent to which the trade mark has been recognised as well-known trademark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether trade mark isDknown or recognised in 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 thegoods or services;

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

(8) Where trade mark has been determined to be well-known in at least onerelevant section of the public in India by any court or Registrar, the Registrar shallconsider that trade mark as well-known trade mark for registration under this Act.

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

GIndia;

(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; orH

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

word ‘NANDHINI’ represents the name of goddess and cow in HinduMythology. The trade mark ‘NANDHINI’ is used by people from allwalks of life and it is also referred in puranas and Hindu mythologicalstories. Large number of people worship NANDHINI as goddessand, therefore, the respondent cannot claim monopoly over the word‘NANDHINI’.

(10) While considering an application for registration of trade mark andopposition filed in respect thereof, the Registrar shall—

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

(ii) take into consideration the bad faith involved either of the applicant or theopponent affecting the right relating to the trade mark.

(11) Where trade mark has been registered in good faith disclosing the materialinformations to the Registrar or where right to trade mark has been acquired throughuse in good faith before the commencement of this Act, then, nothing in this Act shallprejudice the validity of the registration of that trade mark or right to use that trademark on the ground that such trade mark is identical with or similar to well-knowntrade mark.

S. 18. Application for registration.— (1) Any person claiming to be the proprietorof 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 ofhis trade mark.

(2) single application may be made for registration of trade mark for differentclasses of goods and services and fee payable therefor shall be in respect of each suchclass of goods or services.

(3) Every application under sub-section (1) shall be filed in the office of theTrade Marks Registry within whose territorial limits the principal place of business inIndia of the applicant or in the case of joint applicants the principal place of businessin India of the applicant whose name is first mentioned in the application as having aplace of business in India, is situate: Provided that where the applicant or any of thejoint applicants does not carry on business in India, the application shall be filed in theoffice of the Trade Marks Registry within whose territorial limits the place mentionedin 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 applicationor may accept it absolutely or subject to such amendments, modifications, conditionsor limitations, if any, as he may think fit.

(5) In the case of refusal or conditional acceptance of an application, theRegistrar shall record in writing the grounds for such refusal or conditional acceptanceand the materials used by him in arriving at his decision.

8. Taking note of the aforesaid submissions and virtually acceptingthe same, the Deputy Registrar noted that since the appellant is usingthe trade mark continuously from 1[st] April, 1989 which claim of theappellant was supported by documentary proof, objection raised by therespondent under Section 9 stood waived.

B9. Coming to Section 11 of the Act which prohibits registration ofmark and the goods in which it is sought for registration is likely to deceiveor 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 theCother hand, the goods for which the registration was sought by theappellant were altogether different, even though both fall in the sameClass, i.e., Class 29. Highlighting this factual difference of the nature ofgoods in which the appellant and respondent are trading, the DeputyRegistrar was of the view that the respondent’s objection under SectionD11 was not tenable. While coming to this conclusion, he also took aid ofsome judgments of the IPAB as well as different High Courts. In theprocess, he also rejected the contention of the respondent that the trademark used by the appellant was colourable imitation of the respondent’strade mark which was well-known mark under Section 11(2) of the Act.

E10. Dealing with the objections on the touchstone of Section 18 ofthe Act, the Deputy Registrar came to conclusion that the appellant isthe proprietor of the mark as claimed under Section 18(1) of the Act, butrestricted his entitlement for registration by holding that the appellantwould not be entitled to registration in respect of milk and milk products.Relevant discussion in this behalf is reproduced below:F

“The balance of convenience is in favour of the applicants. Theapplicants are the extensive user of the mark since the year 1989.the adoption of the mark by the Applicants is honest andconcurrent. To prove their claim, the applicants have fileddocuments in support of application. In these circumstance, theGapplicants are having definite claim to the proprietorship of themark applied for. Hence the Applicants are the proprietors of themark as claimed for under the provisions of Section 18(1) of theAct.

On carefully considered the arguments advanced by both thecounsel and materials available on the record and the evidenceadduced by the concerned parties, in the interest of justice andpurity of the Register since the Applicants are not using milk andmilk products in class-29 whereas the Opponents have provedthat they are the famous Dairy products producers and theevidence produced by the Opponents also reveals that they areusing the mark for Milk and Milk products only. Therefore, theapplicants are directed to delete the goods “Milk and Milkproducts” from the specification of goods by way of filing arequest on from TM-16 to delete the same and after deletion ofthe goods, the same should be notified in the Trade MarksJournal.

It is significant to note that both Applicant and Opponent arecarrying business in Bangalore. While the Applicant claims to besuing the trade mark NANDHINI since 1989, the Opponents havebeen using the trade mark NANDINI prior to Applicant, theartistic work, design and getup are totally different. While theApplicant has been using the traded mark NANDHINI with alamp and written in particular style, the Opponents are usingNANDINI with device of cow. The Opponent has not producedany evidence to show that use of trade mark NANDHINI byApplicant is causing confusion or deception. In view ofcontinuous user of the trade mark NANDHINI by Applicant, theApplicant has deemed to have become proprietor of the trademark NANDHINI.

Lastly coming to the exercise of discretion of the Registrar vestedwith him, the onus to prove the claim of proprietorship of themark is always on the Applicants. The Applicants havesuccessfully discharged their onus that they are the proprietors ofthe mark NANDHINI DELUXE WITH LOGO (Kannada)applied for registration. In order to safeguard the public interestand to protect the intellectual and industrial property rights of theApplicants who are honest adopters and bonafide users, theapplicant’s trade mark is to be protected by granting registrationenabling the applicants to use their mark legally without anyhindrance, this authority has no other alternative except to allowapplication and to grant registration of the impugned mark.

ABCDE

In view of the foregoing, it is ordered that the opposition No.MAS-194405 is dismissed and application No. 982285 inClass-29 shall proceed to registration subject to deleting the items“Milk and Milk products” from the specification of goods by filinga request on form TM-16 and the amended application should benotified in the Trade Marks Journal.”

BORDER DATED 20TH APRIL, 2010 OF THE IPAB :

11. The aforesaid order rejecting the opposition of the respondentto the registration of trade mark ‘NANDHINI’ as sought by the appellantand allowing appellant’s application for registration, except for milk andCmilk products, was challenged by the respondent by filing set of appeals.One such appeal being OA/4/2008/TM/CH was decided by IPAB videits order 20[th] April, 2010. The IPAB referred to the judgment of thisCourt in Vishnudas Trading as Vishnudas Kushandas vs. The VazirSultan Tobacco Ltd. and Anr.[2]and quoted the following passagetherefrom:-D

“In our view if trader or manufacturer actually trades in ormanufactures only one or some of the articles coming under abroad classification and such trader or manufacturer has nobonafide intention to trade in or manufacture other goods or ar-ticles which also fall under the said broad classification, such traderEor manufacturers to get registration of separate and distinct goodswhich may also be grouped under the broad classification.”

12. If registration has been given generally in respect of all thearticles under the broad classification and if it is established that thetrader or manufacturer who got such registration had not intended toFuse any other article except the articles being used by such trader ormanufacturer, the registration of such trader is liable to be rectified bylimiting the ambit of registration and confining such registration to thespecific article or articles which really concerns the trader or manufacturerenjoying the registration made in his favour.

G13. The IPAB noted that in the instant case, the respondent isdealing with milk and milk products whereas the appellant is dealingwith the other products like meat and fish etc. from which dishes areprepared in its restaurants and served to the customers. It took note of

certain principles that when person trades or manufactures one goodunder the broad classification having no bona fide intention to trade in allother goods falling under that broad classification, he cannot be permittedto enjoy monopoly in articles falling under such classification as held inVishnudas Trading as Vishnudas Kushandas[2 ]. Therefore, in the instantcase, when the respondent has its limited business only in milk and milkproducts with no intention to expand the business of trading in othergoods falling under Class 29 and the appellant was given registration inother articles only, specifically excluding milk and milk products, therewas nothing wrong in according registration of those products in favourof the appellant under the trade mark ‘NANDHINI’. The IPAB alsoobserved that the respondent had failed to prove that by allowing suchregistration in favour of the appellant, any confusion or deception wouldensue. On that reasoning, appeal of the respondent was dismissed. Atthe same time, the appellant was asked to file request on Form 16 todelete the goods ‘milk and milk products’

The appellant filed the affidavit to this effect, as directed by IPABon 18[th] July, 2011.

ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :

14. Notwithstanding, order dated 20[th] April, 2018 passed by theIPAB, insofar as other appeals of the respondent are concerned, theevents took different turn as vide orders dated 4[th] October, 2011 appealsof the respondent herein were allowed by the IPAB. It accepted thecase of the respondent that ‘NANDINI’ is well-known trade markand household name in the State of Karnataka and that it is the registeredtrade mark of the respondent. The goods sold are milk and milk productssuch 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 therespondent is standing cow on grass land having rising sun in thebackground. The IPAB also took note of the statistics given by therespondent in respect of sales turnover as well as advertisement andsale promotion expenditure for the last 10 years. It had obtained severalregistrations in respect of trade mark NANDINI and label forms inClasses 29, 30, 31 and 32 and had also secured copyright registration asearly as in the year 1984 and 1985.

A15. In the opinion of IPAB, the appellant is running restaurantwhich would come under Class 42 with which the Board was notconcerned. Therefore, the fact that respondent had not raised anyobjection to appellant’s mark for 18 years was of no relevance.

It also noted that insofar as this trade mark ‘NANDINI’ used byBthe respondent is concerned, it has acquired distinctiveness. It furtherheld that since milk and milk products fall under Classes 29 and 30 andthe goods registered in the name of the appellant also fall in the sameclass, the average consumer would conclude that goods manufacturedby the appellant belonged to the respondent and, therefore, there islikelihood of confusion. Further, the respondent was using the tradeCmark prior to the appellant in the same class of goods and, therefore,registration of the appellant’s mark could not be permitted. We wouldlike to reproduce the following discussion as that captures the entireessence 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 onDhand. With regard to the appellant’s mark we find that one of thedocuments which is the Kannada Weekly Sudha where it is statedthat “I am using NANDINI. You?” In Tharanga KahhandaWeekly, ‘Nandini Ghee has role in every moment of lifecelebration” (translated from Kannada). These are pieces ofEevidence to show that the word Nandini itself has becomeassociated with the appellant’s products and therefore, though itmight be Hindu name, or even deity’s name, it has come to berecognized as distinctive mark of the appellant by the appellant’suse of the same for nearly two decades. The conclusion of theRegistrar that it is not likely to confuse cannot be sustained. TheFword is identical. The addition of letter by the respondentcannot make difference. Whether it is Nandini or Nandhini, it ispronounced identically. And in Kannada there is no difference inthe spelling of the trademark of the appellant and that of therespondent.

G15. We have referred to the advertisement which says ‘I amusing Nandini”. It is clear that the consumer and the generalpublic who are the source of the goods ‘when the word Nandini isused. When that is so, we cannot permit the respondent to use

the identical mark in relation to goods which are akin to theappellants.

16. The addition of the Word Deluxe cannot improve the case ofthe respondent since the word NANDHINI is identical and itdefinitely will confusion in the minds of the consumers.

17. The priority in use is indisputably the appellants. It has beenso and consistently used that the marks have become entrenchedin the minds of the consumer. It will definitely not being in theinterest of the public to allow the respondent to use the mark inconnection with the goods in question. The balance ofconvenience is not in favour of the respondent.”

IMPUGNED JUDGMENT OF THE HIGH COURT:

16. The High Court upholding the order dated 4[th] October, 2011of the IPAB and dismissing the writ petitions of the appellant herein hasdone nothing except accepting the the aforesaid reasoning of the IPAB,namely, (a) mark NANDINI as held by the respondent has acquired adistinctive character and has become well-known; (b) the use of anothermark is different only in one alphabet but with no difference in spellingor pronunciation in the local language and would very likely to causeconfusion in the minds of public if allowed to be registered for thecommodities falling in the same class; (c) argument of the appellantherein that it was running the business of restaurant since 1989 and therespondent had started using mark ‘NANDINI’ since the year 1985only for milk and not for other products was rejected on the ground thatthere is no foundation in facts for the aforesaid argument and no materialwas produced to substantiate the same.

17. As stated in the beginning, very detailed arguments areadvanced by counsel for both the parties. The precise nature of thearguments 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 ofIPAB as well as the High Court:

(i) In the first instance, he submitted that both the High Court ofKarnataka as well as IPAB grossly erred in law in interpreting

Athe provisions of Section 11 of the Act to mean that once atrademark has acquired distinctive character, then the registrationof the trade mark is barred and is likely to cause confusion if it isallowed to be registered in the commodities within the same class.His response was that this finding of the High Court of Karnatakaas well as of IPAB, is in principle erroneous inasmuch as there isBno proposition of law which supports this interpretation to Section11 of the Act. Learned counsel emphasised that no properweightage and consideration was given to the fact that goods andservices of the appellant were totally different from that of therespondent and, therefore, there was no likelihood of confusion orCdeception among the public. Instead, the courts below comparedonly the marks. This is not in accord with Sections 9 and 11 of theAct. He also referred to the following judgments in support of hisplea:

(a) Eco Lean Research and Development A/S v. IntellectualDProperty Appellate Board and The Asst. Registrar of Trade Marks,Trade Mark Registry[3]:

“11. As noticed above, the intimation given to the petitioner at thefirst instance by the Trade Mark Registry on 6.12.2007 is bystating that the registration has been refused under Sections 9Eand 11 of the Act. However, in the grounds of decision, the orderproceeds only under Section 11 and not under Sections 9 and 11of the Act.”

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

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

Because “Treat” is the very mark registered and is clearlyused by Robertson’s I think the case falls to be considered undersection 10(2)(a), the identical mark/similar goods provision. I donot think it falls within section 10(2)(b) because I reject theargument that the sign used is to be regarded as “Robertson’sGToffee Treat”. That is used too but the first two words are addedmatter and it does not matter in what capacity “Treat” is used.

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

3 MANU/TN/3041/2011H4 (1996) RPC 281 (CH)

(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 likelihood of confusion because of that similarity?

The first of these questions causes no difficulty here. Theproblems arise under the second and third questions. British Sugar seekto elide the questions of confusion and similarity. Their skeletonargument contends that there is “use in relation to product so similar toa dessert sauce that there exists likelihood of confusion because theproduct may or will be used for identical purposes.” I do not think it islegitimate to elide the question in this way. The sub-section does notmerely ask “will there be confusion?”: it asks “is there similarity ofgoods?”, if so, “is there likelihood of confusion?” The point isimportant. For if one elides the two questions than “strong” markwould get protection for greater range of goods than “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 thequestion of similarity of goods is wholly independent of the particularmark the subject of registration or the defendant’s sign.”

(c) London Rubber Co. Ltd. v. Durex Products Incorporated& Anr.[5]:

“8. The provisions of Sections 8 and 10 of the Act are enablingprovisions in the sense that it is not obligatory upon proprietor ofa mark to apply for its registration so as to be able to use it. Butwhen proprietor of mark, in order to obtain the benefit of theprovisions of the Trade Marks Act, such as legally protectedright to use it, applies for registration of his mark he must satisfythe Registrar that it does not offend against the provisions ofSection 8 of the Act. The burden is on him to do so. Confiningourselves to clause (a) the question which the Registrar has todecide is, whether having regard to the reputation acquired byuse of mark or name, the mark at the date of the applicationfor registration if used in normal and fair manner in connectionwith any of the goods covered by the proposed registration, willnot be reasonably likely to cause deception and confusion amongst

5 (1964) 2 SCR 211

substantial number of persons (See 38 Halsbury’s Laws ofEngland pp. 542-43). What he decides is question of fact buthaving decided it in favour of the applicant, he has discretion toregister it or not to do so (Re Hack’s Application [(1940) 58RPC 91] ). But the discretion is judicial and for exercising it againstthe applicant there must be some positive objection toregistration, usually arising out of an illegality inherent in the markas applied for at the date of application for registration (Re ArthurFairest Ltd. Application [(1951) 68 RPC 197] ). Deception mayresult from the fact that there is some misrepresentation thereinor because of its resemblance to mark, whether registered orunregistered, or to trade name in which person other than theapplicant had rights (Eno v. Dunn [(1890) 15 AC 252] ). Wherethe deception or confusion arises because of resemblance with amark which is registered, objection to registration may comeunder Section 10(1) as well (See note ‘k’ at p. 543 of 38Halsbury’s Laws of England). The provisions in the EnglishTrade Marks Act, 1938 (1 & 2 Geo. 6 clause 22) whichcorrespond to Sections 8 and 10(1) to 10(3) of our Act areSections 11 and 12(1) to 12(3). Dealing with the prohibition ofregistration of identical and similar marks Halsbury has stated atpp. 543-44, Vol. 38, thus:

“Subject to the effect of honest concurrent use or other specialcircumstances, no trade mark may be registered in respect ofany goods or description of goods that (1) is identical with atrade mark belonging to different proprietor and alreadyregistered in respect of the same goods or description of goods;or (2) so nearly resembles such registered trade mark as tobe likely to deceive or cause confusion.”

Since the Trade Marks Act, 1940 is based on the English statuteand the relevant provisions are of the same nature in both thelaws, though the language of Section 8(a) is slightly different fromthat 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 reasonfor holding that the provisions of Section 8(a) would not applywhere mark identical with or resembling that sought to beregistered is already on the register. The language of Section 8(a)

is wide and though upon giving full effect to that language theprovisions of Section 10(1) would, in some respects, overlap thoseof Section 8(a), there can be no justification for not giving fulleffect 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 confusionand deception” is concerned, it was supposed to be undertaken by applyingwell settled factors and variables which are stipulated in series ofjudgments. He referred to Polaroid Corporation v. Polarad ElectronicsCorporation[6], Shree Nath Heritage Liquor Pvt. Ltd. & Ors. v. AlliedBlender and 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 findingof the High Court that the mark is prohibited from registration in respectof entire class or classes of goods runs contrary to the principle of lawlaid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.[9]where the Court has observed that the monopoly under Trademark onlyextends to the goods which are falling in particular class and not theentire class of goods and the trade mark which is identical or similar innature can be registered for the goods which are falling within the sameclass inasmuch as giving the monopoly to the entire class of goods andservices to the registered proprietor would lead to trafficking in the trademark which is not the object and the purpose of the Trade Mark Act.(iv) Learned counsel went to the extent of targeting the findingthat Trademark “NANDHINI” adopted by the respondent is well-known inasmuch as such finding was without any supporting material.In this behalf, he attempted to show that there was no finding by theIPAB that the mark “NANDHINI” of the respondent is well-knownmark. He argued that the concept of well-known trademark enshrinedunder Section 11(2) of the Act which gives wider net of protection to thetrademarks in respect of different set of goods is completely different

6 182 F. Supp. 350 (1960)

7 (2015) 221 DLT 359

8 (2001) 5 SCC 73

9 (1997) 4 SCC 201

Athan that of the Section 11(1). It is submitted that for arriving at theconclusion of well-known trademark there are certain defined parameterson which the trademark is required to be tested, as held by Delhi HighCourt in Nestle India Ltd. v. Mood Hospitality Pvt. Ltd.[10]

(v) According to the learned counsel, the matter also needed toBbe examined in the light of the fact that the nature of the mark“NANDHINI” which is admittedly common name and name of thediety and coupled with its level of distinctiveness on account of its userconfined to milk and milk products would not warrant invocation of Section11(2) of the Act as the said provision is applicable in the present case.CStress 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 appellantand clearly acquiesced to the user of the appellant. Therefore, Section11(2) is not applicable.

D(vi) Advancing the aforesaid line of argument, his anothersubmission was that Section 12 is an inbuilt scheme which allows theRegistrar to register same or similar trademark in respect of same orsimilar goods. More so, when the name “NANDHINI” is commonname of the deity and common name of Hindu girl to which IPAB agrees.EIn this context, he also referred to the order passed by the Registrarwherein concurrent user of both the appellant and the respondent wasaccepted and submitted that there was no reason to upset thesaid finding.

(vii) Mr. Sushant Singh further argued that since the respondentFwas in the business of manufacture and marketing of milk and milkproducts only, and had admittedly not expanded its business to any otheritems in Class 29 or 30, the case of the respondent at the highest couldbe qua milk and milk products only. He submitted that the appellantwas ready to give concession by not claiming any registration ortrademarks which fell in the category of milk and milk products. In thisGbehalf, he submitted the list of goods which the appellant was ready todelete from its application for registration and the goods in respect ofwhich the appellant intended to claim registration. This was submittedin the tabulated form as under:NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK297PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]ACLASS GOODS APPLIED IN THE GOODS GOODS TRADE MARK PROPOSED TO PROPOSED TO BE APPLICATIONBE DELETEDRETAINEDClass 29 TRADE MARK APP. NO. Eggs; milk and Meat, fish, poultry 982285 milk products and game; meat Meat, fish, poultry and game; and all other extracts; preserved, Bmeat extracts; preserved, dried goods being dried and cooked and cooked fruits and included in Class fruits and vegetables; jellies, jams, fruit 29. vegetables; jellies, sauces; eggs; milk and milk jams, fruit sauces; products; edible oils and fats, edible oils and fats, salad dressings, preserves and salad dressings, all other goods being included preserves Cin Class 29.Class 30TRADE MARK APP. NO. Tea, coffee, Sugar, rice, tapioca, 817305cocoa, artificial sago, flour and Coffee, tea, cocoa, sugar, rice, coffee, coffee preparations made tapioca, sago, artificial coffee, substitute, from cereals, bread, flour and preparations made biscuits, cakes, honey, treacle, yeast, Dfrom cereals, bread, pastry and pastry and baking-powder, salt, confectionery, ices, honey, confectionery, mustard, pepper, treacle, yeast, baking-powder, ices, ice and all masala paste, salt, mustard, vinegar, sauces other goods vinegar, sauces (except salad dressings), spices, being included (except salad ice and all other goods being in Class 30. dressings), spices. included in Class 30 ETRADE MARK APP. NO.982284 Coffee, tea, cocoa, sugar, rice, sago, substitute flour and preparations made from cereal, Fbread, biscuits, cakes, pastry and confectionery, ices, honey, yeast, baking powder, salt, mustard, pepper, masala paste, vinegar sauces, spices

(viii) The learned counsel submitted that neither the IPAB northe High Court had answered all the questions/issues which had beenraised by the Registrar on the basis of which findings of the Registrarhad been premised including under Section 12 of the Act. Moreover,

Aargued the counsel, IPAB did not even refer to or take into considerationthe earlier order dated April 20, 2010 passed by IPAB itself whereinIPAB had dismissed the appeal of the respondent on the same issue.Therefore, the appeal filed by the respondent before the IPAB waseven barred by the Principle of Issue Estoppel.

B19. Mr. S.S. Naganand, learned senior counsel appearing for therespondent submitted, per contra, that IPAB had properly consideredall the contentions expressly argued in the appeal as well as in the reviewpetition. It had recorded the factual position and upon such appreciationof facts, the IPAB concludes not only that “the word Nandhini hasacquired distinctiveness” but also that “there is no doubt that ifCgoods under Class 29 and 30 bearing the respondent’s (petitionerherein) trademark come out in the market, the average consumerwould conclude that it belongs to the Karnataka Cooperative MilkProducers Federation”. The IPAB was also pleased to hold that “thework Nandhini itself has become associated with the appellant’sD(present respondent’s) products and, therefore, though it might be aHindu name, or even deity’s name, it has come to be recognizedas distinctive mark of the appellant by the appellant’s use of thesame for nearly two decades. The conclusion of the Registrar thatit is not likely to confuse cannot be sustained.” These findings wereexpressly affirmed by the High Court in the impugned judgment.EMr. Naganand also submitted that all the essential characteristics of awell-known mark as understood under Section 11(2) read with Section11(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 Registrarhas found that trade mark is well-known in at least one relevant sectionFof the public in India, it shall be well-known trade mark for purposes ofthe Act. Based on the facts and evidence on record, IPAB has clearlyrecorded finding that the respondent’s trademark is associated withthe respondent organisation and that it has acquired distinctiveness inParas 9 and 14 of the IPAB order. These findings of fact cover the

essentials to be considered as ‘well-known’ trademark and householdGname. The High Court has affirmed the correct findings of the IPAB.He asserted that the respondent’s trademark “NANDHINI” is ahousehold 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 well-known mark. Itis important to note that the appellant is running Restaurants only in thecity of Bangalore in Karnataka and one town in Tamil Nadu. Outsidethe city of Bangalore, the public are not aware of the respondent’srestaurant and “NANDHINI” all over Karnataka is related exclusivelyto the respondent organisation.

20. Insofar as argument of the appellant that “NANDHINI” isthe name of God/Deity and, therefore, cannot be registered asTrademark, reply of the learned senior counsel was that this argument iscounterproductive and against the appellant’s own interest. He submittedthat the prevailing question in the present petition is whether or not theappellant can register trademark bearing the name “NANDHINI”. Ifit is the appellant’s averment that the name “NANDHINI” is the nameof Hindu deity and as result cannot be registered, then such anargument will not only render futile the very registration the appellanthas applied for, but will also render the present petition otiose.

Without prejudice to the above, he argued that merely becausethe word “NANDHINI” denotes Hindu Goddess or deity, does notmean that it cannot be registered. He submitted that the only provisioncontained in the Act on the subject matter of registration of trademarksthat affect religious sentiments is contained in Section 9(2)(b) which isset out below for ready reference:

“Section 9(2) : mark shall not be registered as trademark if:

(b) : it contains or comprises of any matter likely to hurt thereligious susceptibilities of any class or section of the citizens ofIndia.”

21. According to the learned senior counsel, the significance ofNandhini, as symbol of purity and the source of wholesome milk is thereason for the adoption of that word by the respondent. In view of thesame, the registration of the trademarks of the respondent in the presentcase, do not fall within the ambit of the provisions of Section 9(2)(b) ofthe Act. There is no prohibition in law to include the name of any God asa part of trademark. It is settled law that if mark has obtained asecondary distinctiveness in the minds of the consumer, then the sameshould be registered and protected. He emphasised that the respondenthas been able to prove that the appellant’s case was covered by Section

A11(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 besatisfied for the applicability of Section 11(2):

“(a) The mark has to be identical with or similar to an earlierBtrademark and is to be registered for goods or services which arenot 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, dueto the use of the word and between them.

C(b) The registered Trademark must have 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 toDthe distinctive character or repute of the registered trademark.”

22. In this hue, another submission of the learned senior counselfor the respondent was that the appellant’s contention regarding honestand concurrent user was untenable for the following reasons:

(a) The question of the Court/Registrar taking into considerationEthe provisions of Section 12 of the Act, which provides forregistration in the case of honest and concurrent user does notarise as the very basis for the application of this Section is the“honesty of the concurrent use.” The appellant was well-awareof the widespread use of the mark Nandhini by the respondentFand has admitted that they were purchasing Nandhini milk fortheir restaurant. Therefore, the appellant cannot claim to be anhonest or concurrent user, as such claims would be contrary tothe evidence placed on record and their own admissions.

(b) Section 12 of the Act relates to identical or similar goods orGservices. The appellant is not in the business of selling milk ormilk products and the claim made by it is with regard to the tradingstyle for their restaurants’ name “NANDHINI”. Therefore, thegoods 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 languageindicates that it is mandatory nature and would override theprovisions of Section 12.

(d) Section 12 has never been expressly pleaded by the appellant.In any case, this contention has not been expressly argued onbehalf of the appellant before the lower fora.

23. We have duly considered the aforesaid submissions of boththe counsel with reference to the record of the case. Though the detailedarguments are advanced touching upon various aspects, it is not necessaryto traverse through all these arguments. We proceed on the presumptionthat the trade mark ‘NANDHINI’, which is registered in the name ofthe appellant has acquired distinctiveness though the appellant disputesthe same. Otherwise also there is no challenge to the registration of thisname 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 notedabove. Therefore, the fulcrum of the dispute is as to whether such aregistration in favour of the appellant would infringe rights of therespondent. The entire case of the respondent revolves around thesubmissions that the adaptation of this trade mark by the appellant, whichis phonetically similar to that of the respondent, is not bona fideadaptation and this clever device is adopted to catch upon the goodwillwhich has been generated by the respondent in respect of trade mark‘NANDINI’. On that premise, the respondent alleges that the proposedtrade mark ‘NANDHINI’ for which the appellant applied for registrationis similar trade mark in respect of similar goods and, therefore, it is goingto cause deception and confusion in the minds of the users that thegoods in which the appellant is trading, in fact, are the goods whichbelong to the respondent. Precisely, it is this controversy which needs tobe addressed in the first instance.

24. Before we answer as to whether the approach of the IPABand the High Court in the impugned orders is correct, as contended bythe 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 berecapitulated. These are as follows:

A(A) Respondent started using trade mark in respect of its products,namely, milk and milk products in the year 1985. As against that, theappellant adopted trade mark ‘NANDHINI’ in respect of its goods inthe year 1989.

(B) Though, the respondent is prior user, the appellant also hadBbeen using this trade mark ‘NANDHINI’ for 12-13 years before it appliedfor registration of these trade marks in respect of its products.

(C) The goods of the appellant as well as respondent fall underthe same Classes 29 and 30. Notwithstanding the same, the goods ofthe appellant are different from that of the respondent. Whereas theCrespondent is producing and selling only milk and milk products the goodsof 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 andmilk products.

D(D) Insofar as application for registration of the milk and milkproducts is concerned, it was not granted by the trade mark registry. Infact, the same was specifically rejected. The appellant was directed tofile the affidavit and Form 16 in this behalf to delete the goods ‘milk andmilk products’ which affidavit was filed by the appellant. Furtherconcession is already recorded above.E(E) NANDINI/NANDHINI is generic, it represents the nameof Goddess and cow in Hindu Mythology. It is not an invented orcoined word of the respondent.(F) The nature and style of the business of the appellant and therespondent are altogether different. Whereas respondent is CooperativeFFederation of Milk Producers of Karnataka and is producing and sellingmilk and milk products under the mark ‘NANDINI’, the business of theappellant is that of running restaurants and the registration of mark‘NANDHINI’ as sought by the appellant is in respect of variousfoodstuffs sold by it in its restaurants.G

(G) Though there is phonetic similarity insofar as the wordsNANDHINI/NANDINI are concerned, the trade mark with logo adoptedby the two parties are altogether different. The manner in which theappellant 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 markis ‘NANDHINI DELUXE’. It is followed by the words ‘the real spiceof life’. There is device of lamp with the word ‘NANDHINI’. Incontrast, the respondent has used only one word, namely, NANDINIwhich is not prefixed or suffixed by any word. In its mark ‘Cow’ as alogo is used beneath which the word NANDINI is written, it is encircledby egg shape circle. bare perusal of the two marks would show thatthere is hardly any similarity of the appellant’s mark with that of therespondent when these marks are seen in totality.

25. When we examine the matter keeping in mind the aforesaidsalient features, it is difficult to sustain the conclusion of the IPAB in itsorder dated 4[th] October, 2011 as well in the impugned order of the HighCourt that the mark adopted by the appellant will cause any confusion inthe mind of consumers, what to talk of deception. We do not find thatthe the two marks are deceptively similar.

26. We are of further opinion that the earlier order dated20[th] April, 2010 of IPAB approached the subject matter in correctperspective. The test laid down in Polaroid Corporation vs. PolaradElectronics Corporation[11] is as follows:

“The problem of determining how far valid trademark shall beprotected with respect to goods other than those to which its ownerhas applied it, has long been vexing and does not become easierof solution with the years. Neither of our recent decisions soheavily 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, 279F.2d 607 by defendant, affords much assistance, since in the Ritchiecase there was confusion as to the identical product and thedefendant in the Avon case had adopted its mark “withoutknowledge of the plaintiffs’ prior use,” at page 611. Where theproducts are different, the prior owner’s chance of success is afunction of many variables: the strength of his mark, the degreeof similarity between the two marks, the proximity of theproducts, the likelihood that the prior owner will bridge the gap,actual confusion, and the reciprocal of defendant’s good faith in

Aadopting its own mark, the quality of defendant’s product, and thesophistication of the buyers. Even this extensive catalogue doesnot exhaust the possibilities — the court may have to take stillother variables into account. American Law Institute,Restatement of Torts, §§ 729, 730, 731. Here plaintiff’s mark is astrong one and the similarity between the two names is great, butBthe evidence of actual confusion, when analyzed, is notimpressive. The filter seems to be the only case where defendanthas sold, but not manufactured, product serving functionsimilar to any of plaintiff’s, and plaintiff’s sales of this item havebeen highly irregular, varying, e. g., from $2,300 in 1953 toC$303,000 in 1955, and $48,000 in 1956.”

27. This Court in National Sewing Thread Co. Ltd. vs. JamesChadwick and Bros.[12] accepted the following principles which are tobe applied in such cases:

“22. The principles of law applicable to such cases are well settled.DThe burden of proving that the trade mark which person seeksto register is not likely to deceive or to cause confusion is uponthe applicant. It is for him to satisfy the Registrar that his trademark does not fall within the prohibition of Section 8 andtherefore it should be registered. Moreover in deciding whetherEa particular trade mark is likely to deceive or cause confusion thatduty is not discharged by arriving at the result by merelycomparing it with the trade mark which is already registered andwhose proprietor is offering opposition to the registration of themark. The real question to decide in such cases is to see as tohow purchaser, who must be looked upon as an average man ofFordinary intelligence, would react to particular trade mark, whatassociation he would form by looking at the trade mark, and inwhat respect he would connect the trade mark with the goodswhich he would be purchasing.”

28. Applying the aforesaid principles to the instant case, when weGfind that not only visual appearance of the two marks is different, theyeven relate to different products. Further, the manner in which they aretraded by the appellant and respondent respectively, highlighted above, itis difficult to imagine that an average man of ordinary intelligence wouldassociate the goods of the appellant as that of the respondent.

29. One other significant factor which is lost sight of by the IPABas well as the High Court is that the appellant is operating restaurantunder the trademark ‘NANDHINI’ and it had applied the trademark inrespect of goods like coffee, tea, cocoa, sugar, rice, rapioca, sago, artificialcoffee, 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, fruitsauces, etc. which are used in the products/services of restaurantbusiness. The aforesaid items do not belong to Class 29 or 30. Likewise,stationery items used by the appellant in the aid of its restaurant servicesare relatable to Class 16. In these circumstances, there was hardly anyquestion of confusion or deception.

30. Having arrived at the aforesaid conclusion, the reasoning ofthe 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 theregistration of the concerned trade mark in its favour, would bemeaningless. That apart, there is no such principle of law. On the contrary,this Court in Vishnudas Trading as Vishnudas Kushandas[2] has decidedotherwise as can be seen from the reading of para 47 of the saidjudgment:-

“47. The respondent Company got registration of its brand name“Charminar” under the broad classification “manufacturedtobacco”. So long such registration remains operative, therespondent Company is entitled to claim exclusive use of the saidbrand name in respect of articles made of tobacco coming underthe said broad classification “manufactured tobacco”. Preciselyfor the said reason, when the appellant made application forregistration of quiwam and zarda under the same brand name“Charminar”, such prayer for registration was not allowed. Theappellant, therefore, made application for rectification of theregistration made in favour of the respondent Company so thatthe said registration is limited only in respect of the articles beingmanufactured and marketed by the respondent Company, namely,cigarettes. In our view, if trader or manufacturer actually tradesin or manufactures only one or some of the articles coming undera broad classification and such trader or manufacturer has no

bona fide intention to trade in or manufacture other goods orarticles which also fall under the said broad classification, suchtrader or manufacturer should not be permitted to enjoy monopolyin respect of all the articles which may come under such broadclassification and by that process preclude the other traders ormanufacturers from getting registration of separate and distinctgoods which may also be grouped under the broad classification.If registration has been given generally in respect of all thearticles coming under the broad classification and if it isestablished that the trader or manufacturer who got suchregistration had not intended to use any other article except thearticles being used by such trader or manufacturer, theregistration of such trader is liable to be rectified by limiting theambit of registration and confining such registration to thespecific article or articles which really concern the trader or manu-facturer enjoying the registration made in his favour. In our view,if rectification in such circumstances is not allowed, the trader ormanufacturer by virtue of earlier registration will be permitted toenjoy the mischief of trafficking in trade mark. Looking to thescheme of the registration of trade mark as envisaged in the TradeMarks Act and the Rules framed thereunder, it appears to us thatregistration of trade mark cannot be held to be absolute,perpetual and invariable under all circumstances. Section 12 ofthe Trade Marks Act prohibits registration of identical ordeceptively similar trade marks in respect of goods anddescription of goods which is identical or deceptivelysimilar to the trade mark already registered. Forprohibiting registration under Section 12(1), goods inrespect of which subsequent registration is sought for, mustbe (i) in respect of goods or description of goods beingsame or similar and covered by earlier registration and (ii)trade mark claimed for such goods must be same ordeceptively similar to the trade mark already registered.It may be noted here that under sub-section (3) of Section12 of the Trade Marks Act, in an appropriate case ofhonest concurrent use and/or of other specialcircumstances, same and deceptively similar trade marks

may be permitted to another by the Registrar, subject tosuch conditions as may deem just and proper to theRegistrar. It is also to be noted that the expression “goods” and“description of goods” appearing in Section 12(1) of the TradeMarks Act indicate that registration may be made in respect ofone or more goods or of all goods conforming generaldescription. The Trade Marks Act has noted distinctionbetween description of goods forming genus andseparate and distinctly identifiable goods under the genusin various other sections e.g. goods of same description inSection 46, Sections 12 and 34 and class of goods inSection 18, Rules 12 and 26 read with Fourth Schedule tothe Rules framed under the Act.48. The “class” mentioned in the Fourth Schedule may subsumeor comprise number of goods or articles which are separatelyidentifiable and vendible and which are not goods of the samedescription as commonly understood in trade or in commonparlance. Manufactured tobacco is class mentioned in Class 34of Fourth Schedule of the Rules but within the said class, thereare number of distinctly identifiable goods which are marketedseparately and also used differently. In our view, it is not onlypermissible but it will be only just and proper to register one ormore articles under class or genus if in reality registration onlyin respect of such articles is intended, by specifically mentioningthe names of such articles and by indicating the class under whichsuch article or articles are to be comprised. It is, therefore,permissible to register only cigarette or some other specificproducts made of “manufactured tobacco” as mentioned in Class34 of Fourth Schedule of the Rules. In our view, the contention ofMr Vaidyanathan that in view of change in the language ofSection 8 of the Trade Marks Act as compared to Section 5 of theTrade Marks Act, 1940, registration of trade mark is to be madeonly in respect of class or genus and not in respect of articles ofdifferent species under the genus is based on incorrectappreciation of Section 8 of the Trade Marks Act and FourthSchedule of the Rules.”

A31. We may mention that the aforesaid principle of law whileinterpreting the provisions of Trade and Merchandise Act, 1958 is equallyapplicable as it is unaffected by the Trade Marks Act, 1999 inasmuch asthe main object underlying the said principle is that the proprietor of atrade mark cannot enjoy monopoly over the entire class of goods and,particularly, when he is not using the said trade mark in respect of certainBgoods falling under the same class. In this behalf, we may usefully referto Section 11 of the Act which prohibits the registration of the mark inrespect of the similar goods or different goods but the provisions of thisSection do not cover the same class of goods.

32. The aforesaid discussion leads us to hold that all the ingredientsClaid down in Section 11(2) of the Act, as explained by the Delhi HighCourt in Nestle India Ltd., have not been satisfied. We are not persuadedto hold, on the facts of this case, that the appellant has adopted the trademark to take unfair advantage of the trade mark of the respondent. Wealso hold that use of ‘NANDHINI’ by appellant in respect of its different

Dgoods would not be detrimental to the purported distinctive character orrepute of the trade mark of the respondent. It is to be kept in mind thatthe appellant had adopted the trade mark in respect of items sold in itsrestaurants way back in the year 1989 which was soon after therespondent had started using the trade mark ‘NANDINI’. There is nodocument or material produced by the respondent to show that by theEyear 1989 the respondent had acquired distinctiveness in respect of thistrade mark, i.e., within four years of the adoption thereof. It, therefore,appears to be case of concurrent user of trade mark by the appellant.

33. There is some force in the argument of learned counsel forthe appellant that IPAB while passing orders dated 4[th] October, 2011Fignored its earlier order, of Coordinate Bench, passed on 20[th] April,2010. Appeal in which order dated 20[th] April, 2010 was passed wasbetween the same parties on identical issue. The IPAB had dismissedthe said appeal of the respondent and that order had attained finality.Prima facie, this would act as an issue of estoppel between the parties

G(see the Bhanu Kumar Jain vs. Archana Kumar and Anr. [(2005) 1SCC 787]; Hope Plantations Ltd. vs. Taluk Land Board, Peermadeand Another, [(1999) 5 SCC 590)]. However, as we are holding thatthe impugned orders of the IPAB and High Court are not sustainable inlaw and have decided these appeals on merits it is not necessary tomake any further comments on the aforesaid aspect.H

34. As result, the orders of the IPAB and High Court are setaside. These appeals are allowed and the order of the Deputy Registrargranting registration in favour of the appellant is hereby restored, subjectto the modification that registration will not be given in respect of thosemilk 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 fromawarding any costs.

Ankit Gyan

Appeals allowed.