In M/s Nandhini Deluxe v M/s Karnataka Co-operative Milk Producers Federation Ltd (Civil Appeal Nos. 2937-2942 of 2018 with Civil Appeal No. 2943-2944 of 2018), the Supreme Court of India (Supreme Court) has re-affirmed that a proprietor of a trademark cannot enjoy monopoly over an entire class heading.
The issue before the Supreme Court was whether a proprietor of a trademark can enjoy monopoly over the entire specification of goods falling in a particular class, when the proprietor has not registered or used the said trademark for all the goods falling in that class.
Karnataka Co-Operative Milk Producers Federation Ltd (KMPFL) had been producing and selling milk and milk products since 1985 and had also obtained registration of its mark 'NANDINI' specifically in classes 29 and 30 relating to milk and milk products.
M/s Nandhini Deluxe (Nandhini Deluxe) had been in the business of running restaurants since 1989 under the mark 'NANDHINI' and had filed applications for its mark 'NANDHINI' in various classes including class 29. Its applications in class 29 covered several goods like meat, fish, poultry, milk and milk products.
KMPFL opposed the application of Nandhini Deluxe for registration of its trademark in class 29. The applications were adjudicated by the Deputy Registrar of Trademarks (Registrar) in favour of Nandhini Deluxe allowing Nandhini Deluxe to register its trademark subject to deletion of the items 'milk and milk products' from the specification of goods.
In one of the appeals filed against the Registrar's order by KMPFL before the Intellectual Property Appellate Board (IPAB), the IPAB upheld the Registrar's order by placing reliance on an earlier decision of the Supreme Court which dealt with a similar situation. However, in another appeal, a co-ordinate bench of the IPAB in its order dated 4 October 2011 (IPAB Order) took a completely different view. In the IPAB Order, bench held that given the well-known character and acquired distinctiveness of KMPFL's mark, there was a likelihood of confusion between the rival marks. Hence, the registration of the Nandhini Deluxe's mark could not be permitted.
Nandhini Deluxe filed an appeal against the IPAB Order before the High Court of Karnataka (High Court). The High Court upheld the IPAB order on the ground, that since KMPFL was a prior user, it's trademark NANDINI had acquired distinctiveness and become well-known. Also, there was no difference in the spelling or pronunciation of the rival marks in local language, which was likely to cause confusion in the minds of public, if Nandhini Deluxe's mark 'NANDHINI' was allowed registration under the same class. Nandhini Deluxe preferred an appeal against this order before the Supreme Court.
The Supreme Court observed that the critical point in the dispute was whether the use by Nandhini Deluxe of its mark 'NANDHINI' in respect of meat and other products would infringe the rights of KMPFL in its mark 'NANDINI' registered in respect of milk and milk products. The Supreme Court noted that while the rival word marks were phonetically alike, the rival label marks were altogether different viz:
|KMPFL'S TRADEMARK||NANDHINI DELUXE'S TRADEMARK|
It was also noted that the word 'Nandini'/'Nandhini' which represented a Goddess and a cow in Hindu mythology was of a generic nature and it was not invented/coined of KMPFL.
The Supreme Court relied on its earlier decision in Vishnudas Kushandas v the Vazir Sultan Tobacco Ltd. and Anr. (366 1996 SCALE (5)267), which laid down the principle that a proprietor of a trademark cannot be permitted to enjoy monopoly over the entire class of goods, particularly when he is not using the said trademark in respect of certain other goods falling under the same class.
The Supreme Court also noted that KMPFL's trademark was adopted and used since 1985 and Nandhini Deluxe's trademark was adopted and used since 1989. There was no material to show that KMPFL's trademark had acquired distinctiveness within four years of its adoption and thus the use of the mark 'NANDHINI' by Nandhini Deluxe appeared to be a case of concurrent user.
Thus, the Supreme Court set aside the decisions of the High Court and the IPAB order and allowed the registration of the mark 'NANDHINI' by Nandhini Deluxe except in relation to milk and milk products.
The Supreme Court has once again affirmed that a proprietor of a trade mark cannot enjoy monopoly over the entire class of goods, particularly when the proprietor has not used/registered the trademark in respect of all the goods falling in the same class. However, this principle is subject to various factors like duration of the gap in adoption of the rival trademarks, goodwill and reputation of the plaintiff's trademark as on the relevant date of adoption by the defendant and essentially the uniqueness/ distinctiveness of the plaintiff's trademark.
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