India: Nandini Vs Nandhini: A Milky Concoction

Last Updated: 20 September 2018
Article by Sumathi Chandrashekaran

In 1970, the National Dairy Development Board of India launched Operation Flood (OF), which would become the one of biggest dairy development programmes in the world. By the late 1990s, India overtook the United States to become the world's largest milk producer. Operation Flood intended to make Indian dairy farmers self-sufficient. It did this through facilitating the setting up of cooperative federations in different parts of the country, where the ownership of the production line of milk and milk products lay with the farmers themselves. Along the way, the "white revolution", as the movement was also known, spawned iconic brands associated with cooperative federations from different parts of the country, such as Amul, Mother Dairy and Nandini. One of these brands – Nandini – with its primary market presence in the state of Karnataka, and in the south generally, was the subject of a complex trademark infringement suit recently decided by the Supreme Court (see).

The allegedly infringing mark, which was first used four years after the cooperative federation's first use, had the same name, but a different device, and was registered in the same classes (29 and 30), but for different goods. In a nutshell, the Supreme Court allowed the second mark to stay on the register on grounds of being a concurrent user, while also holding that the older mark had not acquired the status of a well-known mark.

Brief facts

"Nandini" has been used as a trade mark by the Karnataka Cooperative Milk Producers Federation (KCMPF) for milk and milk products since 1985, and received registrations for this under Class 29 and 30. On the other hand, a restaurant by the name of "Nandhini Deluxe" came up in 1989, operating in Bangalore (the capital city of Karnataka state). The restaurant used its mark for 12-13 years, before it applied for registration under Classes 29 and 30. KCMPF opposed the registration, but its objections were dismissed, and the restaurant's trademark was registered in 2007. KCMPF appealed the grant through multiple applications before the Intellectual Property Appellate Board (IPAB).

In a 2010 order, the IPAB dismissed one such appeal filed, and allowed the restaurant's trademark application to proceed, subject to deleting the items "Milk and Milk products" from the specification of goods. An affidavit deleting the items was duly filed by the restaurant.

Strangely, a separate (but coordinate) bench of the IPAB passed a polar opposite order in 2011 on another appeal filed by the KCMPF, rejecting the restaurant's trademark registration, on grounds that KCMPF mark was well-known and had acquired distinctiveness. The IPAB 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."

On the appeal filed by the restaurant, the High Court decided in KCMPF's favour, by upholding the 2011 order of the IPAB. Among other things, the High Court reasoned that the goods belonging to the two parties (though the nature of the goods being different) belong to same class and, therefore, it would be impermissible for the restaurant to have the registration of the trade mark in its favour. The restaurant further appealed to the Supreme Court, which reversed the High Court's decision as well as the 2011 IPAB order, and restored the state of affairs to the earlier 2010 IPAB order, where trademark registration was allowed, subject to deleting "milk and milk products" from the registration.

The outcome

Two key factors appear to have gone against the KCMPF in this case. Firstly, the fact that the word "Nandini" itself was not an invented or coined word, but a name from a character/goddess in Hindu mythology. The second was the fact that the even though the words Nandini/Nandhini (with only an "h" distinguishing the two in English) were phonetically identical, the trademark with logo adopted by the two parties were completely different. The restaurant used and added the word 'Deluxe' (making its mark "Nandhini Deluxe"), followed by the words 'the real spice of life', and the device of a lamp. KCMPF used only the word "Nandini" with a 'cow' as a logo encircled by an oval. The tagline and the device were sufficient to convince the Supreme Court that they was hardly any similarity between the marks.

Additionally, the Supreme Court was of the view that the goods of two parties were clearly different, besides the fact that the application for registration of the milk and milk products was not granted to the restaurant. The Court found 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."

The Supreme Court took particular issue with the conclusions arrived at by the IPAB and the High Court regarding the goods associated with the trademarks. It noted that the restaurant had applied the trademark in respect of goods like coffee, tea, sugar, cereal, spices, and so on, which are used in the restaurant business, which did not belong to Class 29 or 30. In the circumstances, "there was hardly any question of confusion or deception".

Most critically, the Supreme Court concluded that the facts of the case did not satisfy the conditions of Section 11(2) of the Trademarks Act, and therefore, KCMPF's mark could not claim to seek protection as a well-known mark. In this regard, it drew attention to the ingredients laid down by the Delhi High Court in Nestle India Limited vs Mood Hospitality Private Limited on 10 February, 2010 (FAO (OS) 255/2009). For example, the Supreme Court was not convinced that the restaurant had adopted the trade mark to take unfair advantage of KCMPF's trade mark; or that the former's use would be detrimental to the purported distinctive character or repute of the trade mark of the respondent. In the four years between KCMPF's first use and the restaurant's first use of their respective marks, the Supreme Court observed that there was no document or material to show that KCMPF had acquired distinctiveness. On the contrary, the Court held that this appeared to be a case of "concurrent user of trade mark".

This decision has thrown up many issues for the consideration of business owners. Registering a mark in a particular class is no assurance that a competing mark will not be allowed in the same class. The mere similarity of the word is not sufficient to deem a mark infringing. And finally, establishing a mark as a well-known mark is clearly a difficult task, and requires a complex test to be satisfied. The issue of well-known marks has come up time and again in Indian trademark jurisprudence, particularly recently, and is worthy of a separate discussion altogether.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions