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 mark.
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 follows –
- 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 applicant's.
- 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.
Footnotes
1. Section 9 enumerates Absolute grounds for refusal of registration; Section 11enumerates Relative grounds of registration and Section 18 details Application for registration
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