9 January 2020

Similar Trademark Issued For Different Items Does Not Amount To Breach Of Law

Khurana and Khurana


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The long pending question in the field of Intellectual Property Rights, with respect to the Tademarks, was finally answered by the Supreme Court
India Intellectual Property
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The long pending question in the field of Intellectual Property Rights, with respect to the Tademarks, was finally answered by the Supreme Court, when it ruled, in the case of Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd.1, that no law is violated or breached, if the two companies, with two different products, use the similar Trademark for their products.

The decision of the Supreme Court on the decade long dispute serves as the answer to one of the most disputed questions in the field of IPR – Whether similar Trademarks can be used by two different companies for un-identical and different products?

Usually a trademark is directly related to the goodwill that a particular Company/manufacture has acquired over a period of time. If anyone, apart from the manufacturer, is allowed to use that Trademark, it will violate the Right of the manufacturer and cause confusion in the minds of the Consumers, as the person, other than the manufacturer/company, using it will be benefitted from the goodwill of the Trademark, which took the authorized person so many years to build in the first place.

Facts of the Case:

The dispute in the present case pertains to the adoption of the mark "NANDHINI" by the Petitioners in the year 1989, which is in the business of running restaurants. The mark was already adopted by the Respondents as "NANDINI" in the year 1985 and has been in the business of producing and selling milk and milk products thereon. It also got the mark registered under Class 29 and Class 30. The dispute arose, when the Petitioner, for its business, adopted the mark "NANDHINI" for its restaurants, and applied for its registration with respect to various foodstuff items sold in the restaurant.

The Respondent raised the objection over the registration of the said mark on the grounds that the mark is deceptively similar to their mark and is likely to cause confusion. The Respondents argued that the mark has attained a distinctive character of its own and thus, the use of the mark would lead public to believe that the foodstuff items sold by the Petitioner are in fact of the Respondents, and thus, the Respondent has the exclusive right over the use of the mark. The objections were dismissed by the Deputy Registrar of the Trademark, allowing the registration of the said mark in favour of the Appellant. The Respondents approached the IPAB, Chennai with the prayer to cancel the registration given to the Appellants. These appeals were allowed by the IPAB and the writ petitions filed by the Petitioners against these were dismissed by the High Court, thereby confirming the order of IPAB.


Before moving to the analysis, it is pertinent to mention that the dispute arose further as the products offered by both the Petitioners and the Respondents, i.e. milk & milk products and the foodstuff items, fell in the same class of Trademark, Class 29 and Class 30. Thus, it became more complex to answer the question that whether the different products, falling in the same class, could be granted the similar mark or not.

It is a settled principle in law that in such cases, the burden is upon the applicant to prove that the Trademark, which the applicant is seeking to register, is not likely to cause confusion in the minds of people. It is upon him to satisfy the Registrar that the Trademark applied for does not fall within the prohibition and thus, can be registered.2 When the similarity of the name of the two products is taken into account, the evidence of actual confusion, when analyzed, should be impressive to an extent that the consumer is barely able to distinguish between the two or not at all.3 Also, in the present case, the Appellant applied for the trademark for products like tea, sugar, coffee, rice etc., as it is operating as a restaurant, while the Respondent has got its Trademark registered for the milk and milk related products. Though, both the things fall under the same class, yet these are different products. The Supreme Court previously held that if a trader or manufacturer, manufactures or trade in one product in a broad classification, it cannot be permitted monopoly over the mark on other products in the same class, if that trader has no bona fide intention of manufacturing or trading in other goods and articles falling in that broad classification.4


Thus, applying the above laid down principles, in the present case, the Supreme Court upheld the order of the Deputy Registrar granting the registration in favour of the Appellant. However, the Supreme Court also added that such a registration should not be granted with respect to the milk and milk products.

The Supreme Court rightly upheld the order of the Deputy Registrar as the two products, though falling in the same class, could be easily distinguished by the Consumers. Granting the registration to the Appellant with respect to the items sold in the restaurant will not prove detrimental to the Respondent as the products are totally different from that of the Respondent. Also, the Appellant applied for the mark in the year 1989, which is 4 years later, which was just 4 years later to the Respondents using the mark NANDINI. On condition which is required to be fulfilled for the objection to a mark is that the mark should have achieved a distinct character. In the present case, there is no evidence to show that the mark used by the Respondent had acquired distinctiveness in those 4 years. Thus, two different products, falling in the same class can be granted similar trademark subject to certain modifications.


1 Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd.; AIR 2018 SC 3516

2 National Sewing Thread Co. Ltd. v. James Chadwick and Bros., AIR 1953 SC 357

3 Polaroid Corporation v. Polarad Electronic Corporation, 287 F. 2d 492 (1961)

4 Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad & Anr., 1996 SCALE (5) 267

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.

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