India: Nandini Or Nandhini – Similar Or Not?

Last Updated: 8 October 2018
Article by Vatsala Singh

FACTS

Karnataka Cooperative Society, Respondent, started using the trademark 'NANDINI' for milk and milk products from the year 1985. The Appellants, Nandhini Deluxe adopted the mark 'NANDHINI' in 1989 in respect of their goods. The goods of both the parties fall under same class 29 and 30 an even though the both the parties have been using their trademark for more than 12 years, the Respondent is the prior user. Irrespective of the goods belonging to the same classes in a broad sense, the Appellant's goods are different from those of the Respondent, the Appellant is dealing with fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc and the Respondent is dealing only with milk and milk products. The registration of Appellant's mark on milk and milk products are refused by the Trademark registry, and the Appellant has to explicitly give an affidavit, deleting the word "milk and milk products" from its description.

SUPREME COURT HELD

Marks Are Not Deceptively Similar

Firstly, the word NANDINI/ NANDHINI is a generic word as it represents the name of Cow in Hindu Mythology. It is not an invented or coined word.

Secondly, it has been held that even though both the words are phonetically similar, the trademark and logo adopted are completely different when seen in totality; further the name and style of business of both parties are different from each other since one deal in milk and milk products, the other deals in various foodstuffs except milk and milk products. The Appellant used the word DELUXE along with Nandhini, followed by the tagline 'the real spice of life', and a device of lamp, whereas the Respondent have used simply used the word 'NANDINI' below the picture of a cow encompassed in a circle. This pictorial depiction of two trademarks was sufficient to show that there is hardly any similarity between the two marks.

No Absolute Monopoly

Referring to the case of Vishnudas Trading as Vishnudas Kushandas, the Court held that 'the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trademark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods'. The Court also held that since the facts have not satisfied the conditions of Section 11(2) of the Trademark Act, therefore, the Respondent cannot claim protection of well-known mark. Also it was held to the case of 'concurrent user of trademark' since no document or evidence was provided by the Respondent to show that they have acquired distinctiveness within four years between Respondent's first adoption or Appellant's first adoption.

The Court concluded that both the marks are not capable of causing confusion in minds of public and are not deceptively similar. The registration of Appellant's mark was allowed subject to the condition of deleting 'milk and milk products' from their registration.

CONCLUSION

Before the Judgment, the use of deceptively similar trademarks in different classes were permissible and almost never disputed, but post- judgment, use of same or deceptively similar trademark in the same class has been permitted, if the marks are visually different from one another. Proprietor of the trademark cannot enjoy monopoly over the entire class of Goods – Supreme Court. This judgment has come as a huge relief to the traders who have been in business of long and have similar trademarks to those of the already existing trademarks, in similar class but different businesses. On the Contrary, the Judgment has also opened the doors of concern such as mere similarity of words is insufficient to reason infringement, registration of a mark in one class in no assurance that similar competing mark cannot be registered in the same class unless well-known, which in itself is hard to prove.

Footnotes

1 M/s Nandhini Deluxe vs. M/s Karnataka Co-operative Milk 2018 (9) SCALE 202

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