The establishment of "prior
user" of a mark is an important strategy in defending
infringement actions where the mark and the goods covered are
identical as well as in trademark prosecution stages. The
instant case Nandhini Deluxe versus Nandhini
2007 (35) PTC 813 (Reg.) deals with a trademark
opposition proceeding discussing "prior user" of the
The Applicant trading as M/s
Nandhini Deluxe filed an application for registration of
trademark "NANDHINI DELUXE" with logo with respect to
class 29 and after clearance of some preliminary objections the
mark was advertised before acceptance for registration. The
Opponent trading as M/s NANDHINI a/c (Andhra Style
Multi-cuisine Family Restaurant) filed a notice of opposition
objecting to the registration on the grounds summarized as
The long and extensive use of the mark since1999 by the
opponent has made him the absolute owner of the mark coupled
with the fact that his application for registration is
pending with respect to the same class as
The impugned mark is a mythological name, commonly used
hence averse to monopoly and neither distinctive nor capable
of distinguishing goods / services.
The Applicant filed a counter
statement emphasizing that they are using the trademark
NANDHINI DELUXE since 1989 for running Andhra Style Vegetarian
and Non-Vegetarian restaurant and in view of the long user of
the trademark "NANDHINI DELUXE" has become
distinctive with him.
The opposition proceeding
eventually reached the stage of hearing after the Opponent
filed evidence in support of opposition and both the parties
notified their intention to attend the hearing.
The issues involved were based
mainly under the Sections 9, 11 & 181 and after
careful consideration of the arguments advanced based on the
above statutory requirements as well as the evidence adduced,
the Deputy Registrar, Trade Marks adjudicating over the matter
held that –
" Both the
Applicant's and the Opponent's mark are same design,
get-up and way of writing are also same. The goods are
identical. Both are engaged in the same business such as
running Andhra Style Restaurant and selling cooked foods. Even
though, both the Applicant and the Opponent are doing the same
business, the user claimed by the Applicant is nearly 10 years
before the Opponent. It is significant to note that both the
Applicant and Opponent are carrying business in Bangalore.
While the Applicant claims to be using the trademark NANDHINI
with a device of lamp and written in a particular style since
1989, the Opponent is using "NANDHINI a/c ANDHRA STYLE
MULTICUISINE RESTAURANT (word per se). In view of prior user of
mark by applicant, the applicant is entitled for registration
of the trademark NANDHINI."
The concept of secondary
significance seems to be implicit in the decision. Use of a
mark extensively invests with the mark, a distinctiveness but
dependant on several factors contributing towards its being
known in the trade channels as well as among consumers.
1. Section 9 enumerates Absolute grounds for refusal of
registration; Section 11enumerates Relative grounds of
registration and Section 18 details Application for
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