REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS. 2937-2942 OF 2018
M/S. NANDHINI DELUXE .....APPELLANT(S)
VERSUS
M/S. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.
.....RESPONDENT(S)
W I T H
CIVIL APPEAL NO. 2943-2944 OF 2018
J U D G M E N T
A.K.SIKRI, J.
The judgment dated 2nd December, 2014 given by the High
Court of Karnataka in writ petitions filed by the appellant herein is
the subject matter of detailed debate and arguments in the
present proceedings, because of the reason that the dispute in
question has evoked considerable controversy. The dispute
pertains to the use of mark ‘NANDHINI’. The respondent herein,
which is a Cooperative Federation of the Milk Producers of
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 1 of 47
Karnataka, adopted the aforesaid mark ‘NANDINI’ in the year
1985 and under this brand name it has been producing and
selling milk and milk products. It has got registration of this mark
as well under Class 29 and Class 30. The appellant herein, on
the other hand, is in the business of running restaurants and it
adopted the mark ‘NANDHINI’ for its restaurants in the year 1989
and applied for registration of the said mark in respect of various
foodstuff items sold by it in its restaurants. The respondent had
opposed the registration and the objections of the respondent
were dismissed by the Deputy Registrar of the Trade Mark who
passed orders dated August 13, 2007 allowing the registration of
the said mark in favour of the appellant.
2. We may note at this stage itself that the mark used by the
appellant is objected to by the respondent on the ground that it is
deceptively similar to the mark of the respondent and is likely to
deceive the public or cause confusion. According to the
respondent, the appellant could not use the said mark which now
belongs to the respondent inasmuch as because of its long and
sustained use by the respondent, the mark ‘NANDINI’ is held to
have acquired a distinctive character and is well-known to the
public which associates ‘NANDINI’ with the respondent
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 2 of 47
organization. Therefore, according to the respondent, it has
exclusive right to use the said mark and any imitation thereof by
the appellant would lead the public to believe that the foodstuffs
sold by the appellant are in fact that of the respondent. When
these objections were rejected by the Deputy Registrar and
registration granted to the appellant, the respondent approached
the Intellectual Property Appellate Board (for short, ‘IPAB’),
Chennai by filing appeal with the prayer that the registration given
by the Deputy Registrar, Trade Mark in favour of the appellant
be cancelled. These appeals of the respondent were allowed by
the IPAB vide common order dated 4th October, 2011 and the writ
petitions filed by the appellant there against have been dismissed
by the High Court vide impugned order dated 2nd December,
2014, thereby confirming the order of the IPAB and, in the
process, accepting the plea of the respondent therein.
3. Before we proceed further, it is pertinent to mention at this stage
that the milk and milk products, which are sold by the respondent
under the trade mark of ‘NANDINI’, fall under Class 29 and Class
30 as per classification under Schedule IV to the Trade Marks
Rules, 2002. On the other hand, various kinds of foodstuffs sold
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 3 of 47
by the appellant in its restaurants also fall under Class 29 and 30
as well as other Classes.
4. For the sake of clarity and comparison, we may also, at this stage
itself, give the representation of competing marks of the
appellant as well as respondent, which is as under :
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 4 of 47
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 5 of 47
5. Before we proceed to state the arguments of the learned counsel
for appellant and rebuttal thereof by the respondent, it would be
necessary to have a brief discussion in respect of the orders
passed by the Deputy Registrar of Trade Marks, IPAB and the
High Court.
ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:
6. This order discloses that the appellant herein had moved the
applications for registration of trade mark ‘NANDHINI DELUXE
WITH LOGO (Kannada)’’ in respect of meat, fish, poultry and
game, meat extracts, preserved, dried and cooked fruits and
vegetables, jellies, jams, eggs, milk and milk products, edible oils
and fats, salad dressings, preserves and all other goods being
included in Class 29. In the Opposition filed by the respondent
herein, it was, inter alia, stated that respondent was manufacturer
and dealer of milk and milk products, cattle feed and other allied
products which are the source of ‘NANDINI’ products. Trade mark
‘NANDINI’ with device of the cow is being used by the respondent
extensively not only in the State of Karnataka but in other parts of
country as well. This trade mark was registered in the name of
the respondent which was used right from the year 1985. The
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 6 of 47
trade mark sought to be adopted by the appellant was confusingly
and deceptively similar to the respondent’s trade mark. It was a
clever move on the part of the appellant who wanted to trade
upon and benefit from the reputation and goodwill acquired by the
respondent for the last so many years and, therefore, the
appellant could not claim any proprietary rights in the impugned
mark under Section 18(1) of the Trade Marks Act, 1999
(hereinafter referred to as the ‘Act’). Registration was objected to
under Sections 9,11,12 and 18 of the Act.
7. In the counter statement filed by the appellant to the aforesaid
objections, it was pleaded that the appellant had honestly
conceived and adopted the trade mark ‘NANDHINI’ in Kannada
with a particular artistic work, design and getup for running
vegetarian and non-vegetarian Andhra style restaurant. It had
opened as many as six branches (particulars whereof were given)
all over Bangalore by using trade mark ‘NANDHINI’ since 1989.
The appellant had also obtained registration of copyright of
‘NANDHINI’ under Copyright Act, 1957. It was further argued that
since the artistic work, design and getup adopted by the appellant
was totally different, there was no question of any deception or
confusion arising in the mind of public. Moreover, the class of
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 7 of 47
purchasers/customers of both the trade marks was entirely
different. The Deputy Registrar noted that the issues involved in
these proceedings were based on Sections1
9, 11 and 18 of the
Act. As per Section 9, the generic words cannot be registered as
trade mark unless they have acquired distinctiveness and are
1 S.9. Absolute grounds for refusal of registration.—(1) The trade marks—
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service;
(c) which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application
for registration it has acquired a distinctive character as a result of the use made of it or is a
well-known trade mark.
(2) A mark shall not be registered as a trade mark if—
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper
Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of—
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation.—For the purposes of this section, the nature of goods or services in
relation to which the trade mark is used or proposed to be used shall not be a ground for
refusal of registration.
S. 11 Relative grounds for refusal of registration.—(1) Save as provided in section 12, a
trade mark shall not be registered if, because of—
(a) its identity with an earlier trade mark and similarity of goods or services covered by the
trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark, there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 8 of 47
associated with the persons/company using the said mark. The
case set up by the appellant was that its mark was distinctive one
and was its trading style as well. It was also argued that trade
mark ‘NANDHINI’ is not an invented word and, therefore, there
was no question of copying trade mark of the respondent. The
(2) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to
the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark
without due cause would take unfair advantage of or be detrimental to the distinctive character or
repute of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor
of the earlier trade mark or other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12. Explanation.—For
the purposes of this section, earlier trade mark means—
(a) a registered trade mark or convention application referred to in section 154 which has a
date of application earlier than that of the trade mark in question, taking account, where appropriate,
of the priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for registration of the trade mark in
question, or where appropriate, of the priority claimed in respect of the application, was entitled to
protection as a well-known trade mark.
A trade mark shall not be refused registration on the grounds specified in sub-sections (2)
and (3), unless objection on any one or more of those grounds is raised in opposition proceedings
by the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark,
take into account any fact which he considers relevant for determining a trade mark as a well-known
trade mark including—
(I) the knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark;
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 9 of 47
word ‘NANDHINI’ represents the name of goddess and a cow in
Hindu Mythology. The trade mark ‘NANDHINI’ is used by people
from all walks of life and it is also referred in puranas and Hindu
mythological stories. Large number of people worship NANDHINI
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the
trade mark applies;
(iv) the duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent they reflect the use or recognition of the
trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the
extent to which the trade mark has been recognised as a well-known trade mark by any court or
Registrar under that record.
(7) The Registrar shall, while determining as to whether a trade mark is known or
recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
(I) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
(8) Where a trade mark has been determined to be well-known in at least one relevant
section of the public in India by any court or Registrar, the Registrar shall consider that trade mark
as a well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a
well-known trade mark, any of the following, namely:—
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark—
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other
than India; or
(v) that the trade mark is well-known to the public at large in India.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 10 of 47
as a goddess and, therefore, the respondent cannot claim
monopoly over the word ‘NANDHINI’.
8. Taking note of the aforesaid submissions and virtually accepting
the same, the Deputy Registrar noted that since the appellant is
using the trade mark continuously from 1st April, 1989 which claim
of the appellant was supported by documentary proof, objection
raised by the respondent under Section 9 stood waived.
(10) While considering an application for registration of a trade mark and opposition filed in
respect thereof, the Registrar shall—
(i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been acquired through use in good
faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the
registration of that trade mark or right to use that trade mark on the ground that such trade mark is
identical with or similar to a well-known trade mark.
S. 18. Application for registration.— (1) Any person claiming to be the proprietor of a trade
mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to
the Registrar in the prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark for different classes of
goods and services and fee payable therefor shall be in respect of each such class of goods or
services.
(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks
Registry within whose territorial limits the principal place of business in India of the applicant or in
the case of joint applicants the principal place of business in India of the applicant whose name is
first mentioned in the application as having a place of business in India, is situate: Provided that
where the applicant or any of the joint applicants does not carry on business in India, the application
shall be filed in the office of the Trade Marks Registry within whose territorial limits the place
mentioned in the address for service in India as disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may
accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any,
as he may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall
record in writing the grounds for such refusal or conditional acceptance and the materials used by
him in arriving at his decision.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 11 of 47
9. Coming to Section 11 of the Act which prohibits registration of
mark and the goods in which it is sought for registration is likely to
deceive or confuse, he noted that whereas respondent’s mark is
‘NANDINI’ per se, the appellant’s mark is ‘NANDHINI DELUXE
WITH LOGO (In Kannada). Moreover, respondent is using trade
mark ‘NANDINI’ in respect of dairy products, i.e., milk and milk
products only. On the other hand, the goods for which the
registration was sought by the appellant were altogether different,
even though both fall in the same Class, i.e., Class 29.
Highlighting this factual difference of the nature of goods in which
the appellant and respondent are trading, the Deputy Registrar
was of the view that the respondent’s objection under Section 11
was not tenable. While coming to this conclusion, he also took
aid of some judgments of the IPAB as well as different High
Courts. In the process, he also rejected the contention of the
respondent that the trade mark used by the appellant was a
colourable imitation of the respondent’s trade mark which was
well-known mark under Section 11(2) of the Act.
10. Dealing with the objections on the touchstone of Section 18 of the
Act, the Deputy Registrar came to a conclusion that the appellant
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 12 of 47
is the proprietor of the mark as claimed under Section 18(1) of the
Act, but restricted his entitlement for registration by holding that
the appellant would not be entitled to registration in respect of
milk and milk products. Relevant discussion in this behalf is
reproduced below:
“The balance of convenience is in favour of the applicants.
The applicants are the extensive user of the mark since the
year 1989. the adoption of the mark by the Applicants is
honest and concurrent. To prove their claim, the applicants
have filed documents in support of application. In these
circumstance, the applicants are having definite claim to
the proprietorship of the mark applied for. Hence the
Applicants are the proprietors of the mark as claimed for
under the provisions of Section 18(1) of the Act.
On carefully considered the arguments advanced by both
the counsel and materials available on the record and the
evidence adduced by the concerned parties, in the interest
of justice and purity of the Register since the Applicants are
not using milk and milk products in class-29 whereas the
Opponents have proved that they are the famous Dairy
products producers and the evidence produced by the
Opponents also reveals that they are using the mark for
Milk and Milk products only. Therefore, the applicants are
directed to delete the goods “Milk and Milk products” from
the specification of goods by way of filing a request on from
TM-16 to delete the same and after deletion of the goods,
the same should be notified in the Trade Marks Journal.
It is significant to note that both Applicant and Opponent
are carrying business in Bangalore. While the Applicant
claims to be suing the trade mark NANDHINI since 1989,
the Opponents have been using the trade mark NANDINI
prior to Applicant, the artistic work, design and getup are
totally different. While the Applicant has been using the
traded mark NANDHINI with a lamp and written in a
particular style, the Opponents are using NANDINI with
device of cow. The Opponent has not produced any
evidence to show that use of trade mark NANDHINI by
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 13 of 47
Applicant is causing confusion or deception. In view of
continuous user of the trade mark NANDHINI by Applicant,
the Applicant has deemed to have become proprietor of the
trade mark NANDHINI.
Lastly coming to the exercise of discretion of the Registrar
vested with him, the onus to prove the claim of
proprietorship of the mark is always on the Applicants. The
Applicants have successfully discharged their onus that
they are the proprietors of the mark NANDHINI DELUXE
WITH LOGO (Kannada) applied for registration. In order to
safeguard the public interest and to protect the intellectual
and industrial property rights of the Applicants who are
honest adopters and bonafide users, the applicant’s trade
mark is to be protected by granting registration enabling
the applicants to use their mark legally without any
hindrance, this authority has no other alternative except to
allow application and to grant registration of the impugned
mark.
In view of the foregoing, it is ordered that the opposition
No. MAS-194405 is dismissed and application No. 982285
in Class-29 shall proceed to registration subject to deleting
the items “Milk and Milk products” from the specification of
goods by filing a request on form TM-16 and the amended
application should be notified in the Trade Marks Journal.”
ORDER DATED 20TH APRIL, 2010 OF THE IPAB :
11. The aforesaid order rejecting the opposition of the respondent to
the registration of trade mark ‘NANDHINI’ as sought by the
appellant and allowing appellant’s application for registration,
except for milk and milk products, was challenged by the
respondent by filing set of appeals. One such appeal being
OA/4/2008/TM/CH was decided by IPAB vide its order 20th April,
2010. The IPAB referred to the judgment of this Court in
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 14 of 47
Vishnudas Trading as Vishnudas Kushandas vs. The Vazir
Sultan Tobacco Ltd. and Anr.2 and quoted the following
passage therefrom:-
“In our view if a trader or manufacturer actually trades in or
manufactures only one or some of the articles coming
under a broad classification and such trader or
manufacturer has no bonafide intention to trade in or
manufacture other goods or articles which also fall under
the said broad classification, such trader or manufacturers
to get registration of separate and distinct goods which
may also be grouped under the broad classification.”
12. If registration has been given generally in respect of all the
articles under the broad classification and if it is established that
the trader or manufacturer who got such registration had not
intended to use any other article except the articles being used by
such trader or manufacturer, the registration of such trader is
liable to be rectified by limiting the ambit of registration and
confining such registration to the specific article or articles which
really concerns the trader or manufacturer enjoying the
registration made in his favour.
13. The IPAB noted that in the instant case, the respondent is dealing
with milk and milk products whereas the appellant is dealing with
the other products like meat and fish etc. from which dishes are
2 1996 SCALE (5) 267
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 15 of 47
prepared in its restaurants and served to the customers. It took
note of certain principles that when a person trades or
manufactures one good under the broad classification having no
bona fide intention to trade in all other goods falling under that
broad classification, he cannot be permitted to enjoy monopoly in
articles falling under such classification as held in Vishnudas
Trading as Vishnudas Kushandas2
. Therefore, in the instant
case, when the respondent has its limited business only in milk
and milk products with no intention to expand the business of
trading in other goods falling under Class 29 and the appellant
was given registration in other articles only, specifically excluding
milk and milk products, there was nothing wrong in according
registration of those products in favour of the appellant under the
trade mark ‘NANDHINI’. The IPAB also observed that the
respondent had failed to prove that by allowing such registration
in favour of the appellant, any confusion or deception would
ensue. On that reasoning, appeal of the respondent was
dismissed. At the same time, the appellant was asked to file a
request on Form 16 to delete the goods ‘milk and milk products’
The appellant filed the affidavit to this effect, as directed by
IPAB on 18th July, 2011.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 16 of 47
ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :
14. Notwithstanding, order dated 20th April, 2018 passed by the IPAB,
insofar as other appeals of the respondent are concerned, the
events took a different turn as vide orders dated 4th October, 2011
appeals of the respondent herein were allowed by the IPAB. It
accepted the case of the respondent that ‘NANDINI’ is a wellknown
trade mark and a household name in the State of
Karnataka and that it is the registered trade mark of the
respondent. The goods sold are milk and milk products such as
curd, butter, cheese, ghee, milk powder, flavoured milk, paneer,
khoya, ice cream and all milk based sweets. They are sold in
bottles, sachets, tetra packs, polythene containers etc. The
device used by the respondent is standing cow on a grass land
having rising sun in the background. The IPAB also took note of
the statistics given by the respondent in respect of sales turnover
as well as advertisement and sale promotion expenditure for the
last 10 years. It had obtained several registrations in respect of
trade mark NANDINI and label forms in Classes 29, 30, 31 and
32 and had also secured copyright registration as early as in the
year 1984 and 1985.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 17 of 47
15. In the opinion of IPAB, the appellant is running a restaurant which
would come under Class 42 with which the Board was not
concerned. Therefore, the fact that respondent had not raised
any objection to appellant’s mark for 18 years was of no
relevance.
It also noted that insofar as this trade mark ‘NANDINI’ used
by the respondent is concerned, it has acquired distinctiveness.
It 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. We would like to
reproduce the following discussion as that captures the entire
essence of the reasoning given by the IPAB in support of its
conclusion:
“14. So each case has to be decided on the basis of t he
facts on hand. With regard to the appellant’s mark we find
that one of the documents which is the Kannada Weekly
Sudha where it is stated that “I am using NANDINI. You?”
In Tharanga Kahhanda Weekly, ‘Nandini Ghee has a role
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 18 of 47
in every moment of life celebration” (translated from
Kannada). These are pieces of evidence to show that the
word Nandini itself has become associated with the
appellant’s products and therefore, though it might be a
Hindu name, or even a deity’s name, it has come to be
recognized as a distinctive mark of the appellant by the
appellant’s use of the same for nearly two decades. The
conclusion of the Registrar that it is not likely to confuse
cannot be sustained. The word is identical. The addition
of a letter H by the respondent cannot make a difference.
Whether it is Nandini or Nandhini, it is pronounced
identically. And in Kannada there is no difference in the
spelling of the trademark of the appellant and that of the
respondent.
15. We have referred to the advertisement which says ‘I
am using Nandini”. It is clear that the consumer and the
general public who are the source of the goods ‘when the
word Nandini is used. When that is so, we cannot permit
the respondent to use the identical mark in relation to
goods which are akin to the appellants.
16. The addition of the Word Deluxe cannot improve the
case of the respondent since the word NANDHINI is
identical and it definitely will confusion in the minds of the
consumers.
17. The priority in use is indisputably the appellants. It
has been so and consistently used that the marks have
become entrenched in the minds of the consumer. It will
definitely not being in the interest of the public to allow the
respondent to use the mark in connection with the goods in
question. The balance of convenience is not in favour of
the respondent.”
IMPUGNED JUDGMENT OF THE HIGH COURT:
16. The High Court upholding the order dated 4th October, 2011 of the
IPAB and dismissing the writ petitions of the appellant herein has
done nothing except accepting the the aforesaid reasoning of the
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 19 of 47
IPAB, namely, (a) mark NANDINI as held by the respondent has
acquired a distinctive character and has become well-known; (b)
the use of another mark is different only in one alphabet but with
no difference in spelling or pronunciation in the local language
and would very likely to cause confusion in the minds of public if
allowed to be registered for the commodities falling in the same
class; (c) argument of the appellant herein that it was running the
business of restaurant since 1989 and the respondent had started
using mark ‘NANDINI’ since the year 1985 only for milk and not
for other products was rejected on the ground that there is no
foundation in facts for the aforesaid argument and no material
was produced to substantiate the same.
17. As stated in the beginning, very detailed arguments are advanced
by counsel for both the parties. The precise nature of the
arguments of the parties is as follows:
18. Mr. Sushant Singh, learned counsel appearing for the appellant,
advanced the following propositions, while laying attack to the
orders of IPAB as well as the High Court:
(i) In the first instance, he submitted that both the High Court
of Karnataka as well as IPAB grossly erred in law in interpreting
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 20 of 47
the provisions of Section 11 of the Act to mean that once a
trademark has acquired a distinctive character, then the
registration of the trade mark is barred and is likely to cause
confusion if it is allowed to be registered in the commodities
within the same class. His response was that this finding of the
High Court of Karnataka as well as of IPAB, is in principle
erroneous inasmuch as there is no proposition of law which
supports this interpretation to Section 11 of the Act. Learned
counsel emphasised that no proper weightage and consideration
was given to the fact that goods and services of the appellant
were totally different from that of the respondent and, therefore,
there was no likelihood of confusion or deception among the
public. Instead, the courts below compared only the marks. This
is not in accord with Sections 9 and 11 of the Act. He also
referred to the following judgments in support of his plea:
(a) Eco Lean Research and Development A/S v. Intellectual
Property Appellate Board and The Asst. Registrar of Trade
Marks, Trade Mark Registry3
:
“11. As noticed above, the intimation given to the petitioner
at the first instance by the Trade Mark Registry on
6.12.2007 is by stating that the registration has been
refused under Sections 9 and 11 of the Act. However, in
the grounds of decision, the order proceeds only under
Section 11 and not under Sections 9 and 11 of the Act.”
3 MANU/TN/3041/2011
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 21 of 47
(b) British Sugar Plc v. James Robertson & Sons Ltd.4
:
“(d) Infringement pursuant to section 10(2)?
Because “Treat” is the very mark registered and is
clearly used by Robertson’s I think the case falls to be
considered under section 10(2)(a), the identical
mark/similar goods provision. I do not think it falls within
section 10(2)(b) because I reject the argument that the sign
used is to be regarded as “Robertson’s Toffee Treat”. That
is used too but the first two words are added matter and it
does not matter in what capacity “Treat” is used.
The questions arising under section 10(2)(a) are:
(1) Is the mark used in the course of trade?
(2) Are the goods for which it is used similar to those
covered by the registration?
(3) Is there a likelihood of confusion because of that
similarity?
The first of these questions causes no difficulty here.
The problems arise under the second and third questions.
British Sugar seek to elide the questions of confusion and
similarity. Their skeleton argument contends that there is
“use in relation to a product so similar to a dessert sauce
that there exists a likelihood of confusion because the
product may or will be used for identical purposes.” I do
not think it is legitimate to elide the question in this way.
The sub-section does not merely ask “will there be
confusion?”: it asks “is there similarity of goods?”, if so, “is
there a likelihood of confusion?” The point is important.
For if one elides the two questions than a “strong” mark
would get protection for a greater range of goods than a
“weak” mark. For instance “Kodak” for socks or bicycles
might well cause confusion, yet these goods are plainly
dissimilar from films or cameras. I think the question of
similarity of goods is wholly independent of the particular
mark the subject of registration or the defendant’s sign.”
4 (1996) RPC 281 (CH)
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 22 of 47
(c) London Rubber Co. Ltd. v. Durex Products Incorporated
& Anr.5
:
“8. The provisions of Sections 8 and 10 of the Act are
enabling provisions in the sense that it is not obligatory
upon a proprietor of a mark to apply for its registration so
as to be able to use it. But when a proprietor of a mark, in
order to obtain the benefit of the provisions of the Trade
Marks Act, such as a legally protected right to use it,
applies for registration of his mark he must satisfy the
Registrar that it does not offend against the provisions of
Section 8 of the Act. The burden is on him to do so.
Confining ourselves to clause (a) the question which the
Registrar has to decide is, whether having regard to the
reputation acquired by use of a mark or a name, the mark
at the date of the application for registration if used in a
normal and fair manner in connection with any of the goods
covered by the proposed registration, will not be
reasonably likely to cause deception and confusion
amongst a substantial number of persons (See 38
Halsbury's Laws of England pp. 542-43). What he decides
is a question of fact but having decided it in favour of the
applicant, he has a discretion to register it or not to do so
(Re Hack's Application [(1940) 58 RPC 91] ). But the
discretion is judicial and for exercising it against the
applicant there must be some positive objection to
registration, usually arising out of an illegality inherent in
the mark as applied for at the date of application for
registration (Re Arthur Fairest Ltd. Application [(1951) 68
RPC 197] ). Deception may result from the fact that there is
some misrepresentation therein or because of its
resemblance to a mark, whether registered or unregistered,
or to a trade name in which a person other than the
applicant had rights (Eno v. Dunn [(1890) 15 AC 252] ).
Where the deception or confusion arises because of
resemblance with a mark which is registered, objection to
registration may come under Section 10(1) as well (See
note ‘k’ at p. 543 of 38 Halsbury's Laws of England). The
provisions in the English Trade Marks Act, 1938 (1 & 2
Geo. 6 clause 22) which correspond to Sections 8 and
10(1) to 10(3) of our Act are Sections 11 and 12(1) to
12(3). Dealing with the prohibition of registration of identical
5 (1964) 2 SCR 211
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 23 of 47
and similar marks Halsbury has stated at pp. 543-44, Vol.
38, thus:
“Subject to the effect of honest concurrent use or
other special circumstances, no trade mark may be
registered in respect of any goods or description of
goods that (1) is identical with a trade mark belonging
to a different proprietor and already registered in
respect of the same goods or description of goods; or
(2) so nearly resembles such a registered trade mark
as to be likely to deceive or cause confusion.”
Since the Trade Marks Act, 1940 is based on the English
statute and the relevant provisions are of the same nature
in both the laws, though the language of Section 8(a) is
slightly different from that of Section 11 of the English Act
and that of Section 10(1) from that of Section 12(1) of the
English Act, we see no reason for holding that the
provisions of Section 8(a) would not apply where a mark
identical with or resembling that sought to be registered is
already on the register. The language of Section 8(a) is
wide and though upon giving full effect to that language the
provisions of Section 10(1) would, in some respects,
overlap those of Section 8(a), there can be no justification
for not giving full effect to the language used by the
legislature.”
(ii) He also argued that even if it is assumed that Section 9(2)(a)
is distinct from Section 11(1), insofar as enquiry “likelihood of
confusion and deception” is concerned, it was supposed to be
undertaken by applying well settled factors and variables which
are stipulated in a series of judgments. He referred to Polaroid
Corporation v. Polarad Electronics Corporation6
, Shree Nath
Heritage Liquor Pvt. Ltd. & Ors. v. Allied Blender and
6 182 F. Supp. 350 (1960)
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 24 of 47
Distillers Pvt. Ltd.7 and Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd.8
in this behalf.
(iii) Another submission of Mr. Sushant Singh was that the
finding of the High Court that the mark is prohibited from
registration in respect of entire class or classes of goods runs
contrary to the principle of law laid down in Vishnudas Trading
Co. v. Vazir Sultan Tobacco Co. Ltd.9
where the Court has
observed that the monopoly under Trademark only extends to the
goods which are falling in a particular class and not the entire
class of goods and the trade mark which is identical or similar in
nature can be registered for the goods which are falling within the
same class inasmuch as giving the monopoly to the entire class
of goods and services to the registered proprietor would lead to
trafficking in the trade mark which is not the object and the
purpose of the Trade Mark Act.
(iv) Learned counsel went to the extent of targeting the finding
that Trademark “NANDHINI” adopted by the respondent is a wellknown
inasmuch as such finding was without any supporting
material. In this behalf, he attempted to show that there was no
7 (2015) 221 DLT 359
8 (2001) 5 SCC 73
9 (1997) 4 SCC 201
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 25 of 47
finding by the IPAB that the mark “NANDHINI” of the respondent
is a well-known mark. He argued that the concept of well-known
trademark enshrined under Section 11(2) of the Act which gives
wider net of protection to the trademarks in respect of different set
of goods is a completely different than that of the Section 11(1). It
is submitted that for arriving at the conclusion of well-known
trademark there are certain defined parameters on which the
trademark is required to be tested, as held by Delhi High Court in
Nestle India Ltd. v. Mood Hospitality Pvt. Ltd.10
(v) According to the learned counsel, the matter also needed to
be examined in the light of the fact that the nature of the mark
“NANDHINI” which is admittedly a common name and name of
the diety and coupled with its level of distinctiveness on account
of its user confined to milk and milk products would not warrant
invocation of Section 11(2) of the Act as the said provision is
applicable in the present case. Stress was laid on the submission
that the use of the mark “NANDHINI” by the appellant is honest
and with due cause since the year 1989. Respondent has never
filed any suit for injunction against the appellant and clearly
10 (2010) 42 PTC 514 (Del) (DB)
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 26 of 47
acquiesced to the user of the appellant. Therefore, Section 11(2)
is not applicable.
(vi) Advancing the aforesaid line of argument, his another
submission was that Section 12 is an inbuilt scheme which allows
the Registrar to register same or similar trademark in respect of
same or similar goods. More so, when the name “NANDHINI” is a
common name of the deity and common name of Hindu girl to
which IPAB agrees. In this context, he also referred to the order
passed by the Registrar wherein concurrent user of both the
appellant and the respondent was accepted and submitted that
there was no reason to upset the said finding.
(vii) Mr. Sushant Singh further argued that since the respondent
was in the business of manufacture and marketing of milk and
milk products only, and had admittedly not expanded its business
to any other items in Class 29 or 30, the case of the respondent at
the highest could be qua milk and milk products only. He
submitted that the appellant was ready to give concession by not
claiming any registration or trademarks which fell in the category
of milk and milk products. In this behalf, he submitted the list of
goods which the appellant was ready to delete from its application
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 27 of 47
for registration and the goods in respect of which the appellant
intended to claim registration. This was submitted in the tabulated
form as under:
CLASS GOODS APPLIED IN THE
TRADE MARK APPLICATION
GOODS
PROPOSED
TO BE
DELETED
GOODS
PROPOSED
TO BE
RETAINED
Class 29 TRADE MARK APP. NO. 982285
Meat, fish, poultry and game;
meat extracts; preserved, dried
and cooked fruits and
vegetables; jellies, jams, fruit
sauces; eggs; milk and milk
products; edible oils and fats,
salad dressings, preserves and
all other goods being included in
Class 29.
Eggs; milk and
milk products
and all other
goods being
included in
Class 29.
Meat, fish,
poultry and
game; meat
extracts;
preserved,
dried and
cooked fruits
and
vegetables;
jellies, jams,
fruit sauces;
edible oils
and fats,
salad
dressings,
preserves
Class 30 TRADE MARK APP. NO. 817305
Coffee, tea, cocoa, sugar, rice,
tapioca, sago, artificial coffee,
flour and preparations made from
cereals, bread, pastry and
confectionery, ices, honey,
treacle, yeast, baking-powder,
salt, mustard, vinegar, sauces
(except salad dressings), spices,
ice and all other goods being
included in Class 30
TRADE MARK APP. NO. 982284
Coffee, tea, cocoa, sugar, rice,
sago, substitute flour and
preparations made from cereal,
bread, biscuits, cakes, pastry and
confectionery, ices, honey, yeast,
baking powder, salt, mustard,
pepper, masala paste, vinegar
Tea, coffee,
cocoa, artificial
coffee, coffee
substitute,
biscuits, cakes,
pastry and
confectionery,
ices, ice and all
other goods
being included
in Class 30.
Sugar, rice,
tapioca,
sago, flour
and
preparations
made from
cereals,
bread, honey,
treacle,
yeast,
bakingpowder,
salt,
mustard,
pepper,
masala
paste,
vinegar,
sauces
(except salad
dressings),
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 28 of 47
sauces, spices spices.
(viii) The learned counsel submitted that neither the IPAB nor the
High Court had answered all the questions/issues which had been
raised by the Registrar on the basis of which findings of the
Registrar had been premised including under Section 12 of the
Act. Moreover, argued the counsel, IPAB did not even refer to or
take into consideration the earlier order dated April 20, 2010
passed by IPAB itself wherein IPAB had dismissed the appeal of
the respondent on the same issue. Therefore, the appeal filed by
the respondent before the IPAB was even barred by the Principle
of Issue Estoppel.
19. Mr. S.S. Naganand, learned senior counsel appearing for the
respondent submitted, per contra, that IPAB had properly
considered all the contentions expressly argued in the appeal as
well as in the review petition. It had recorded the factual position
and upon such appreciation of facts, the IPAB concludes not only
that “the word Nandhini has acquired a distinctiveness” but also
that “there is no doubt that if goods under Class 29 and 30
bearing the respondent’s (petitioner herein) trademark come out
in the market, the average consumer would conclude that it
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 29 of 47
belongs to the Karnataka Cooperative Milk Producers
Federation”. The IPAB was also pleased to hold that “the work
Nandhini itself has become associated with the appellant’s
(present respondent’s) products and, therefore, though it might
be a Hindu name, or even a deity’s name, it has come to be
recognized as a distinctive mark of the appellant by the
appellant’s use of the same for nearly two decades. The
conclusion of the Registrar that it is not likely to confuse cannot
be sustained.” These findings were expressly affirmed by the
High Court in the impugned judgment. Mr. Naganand also
submitted that all the essential characteristics of a well-known
mark as understood under Section 11(2) read with Section 11(8)
of the Act have been found by the IPAB in the respondent’s mark
“NANDHINI”. Under Section 11(8) of the Act, if any Court or
Registrar has found that a trade mark is well-known in at least
one relevant section of the public in India, it shall be a well-known
trade mark for purposes of the Act. Based on the facts and
evidence on record, IPAB has clearly recorded a finding that the
respondent’s trademark is associated with the respondent
organisation and that it has acquired distinctiveness in Paras 9
and 14 of the IPAB order. These findings of fact cover the
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 30 of 47
essentials to be considered as a ‘well-known’ trademark and a
household name. The High Court has affirmed the correct
findings of the IPAB. He asserted that the respondent’s
trademark “NANDHINI” is a household name in the entire South
India, and more so in Karnataka. “NANDHINI” is to Karnataka
what “Amul” is to Gujarat. Therefore, there can be no doubt as
to “NANDHINI” being a well-known mark. It is important to note
that the appellant is running Restaurants only in the city of
Bangalore in Karnataka and one town in Tamil Nadu. Outside the
city of Bangalore, the public are not aware of the respondent’s
restaurant and “NANDHINI” all over Karnataka is related
exclusively to the respondent organisation.
20. Insofar as argument of the appellant that “NANDHINI” is the
name of a God/Deity and, therefore, cannot be registered as
Trademark, reply of the learned senior counsel was that this
argument is counterproductive and against the appellant’s own
interest. He submitted that the prevailing question in the present
petition is whether or not the appellant can register a trademark
bearing the name “NANDHINI”. If it is the appellant’s averment
that the name “NANDHINI” is the name of a Hindu deity and as a
result cannot be registered, then such an argument will not only
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 31 of 47
render futile the very registration the appellant has applied for, but
will also render the present petition otiose.
Without prejudice to the above, he argued that merely
because the word “NANDHINI” denotes a Hindu Goddess or
deity, does not mean that it cannot be registered. He submitted
that the only provision contained in the Act on the subject matter
of registration of trademarks that affect religious sentiments is
contained in Section 9(2)(b) which is set out below for ready
reference:
“Section 9(2) : A mark shall not be registered as a
trademark if:
(b) : it contains or comprises of any matter likely to hurt
the religious susceptibilities of any class or section of
the citizens of India.”
21. According to the learned senior counsel, the significance of
Nandhini, as a symbol of purity and the source of wholesome milk
is the reason for the adoption of that word by the respondent. In
view of the same, the registration of the trademarks of the
respondent in the present case, do not fall within the ambit of the
provisions of Section 9(2)(b) of the Act. There is no prohibition in
law to include the name of any God as a part of a trademark. It is
settled law that if a mark has obtained a secondary
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 32 of 47
distinctiveness in the minds of the consumer, then the same
should be registered and protected. He emphasised that the
respondent has been able to prove that the appellant’s case was
covered by Section 11(2) of the Act and, therefore, it could not be
registered. For this purpose, he referred to the judgment of Delhi
High Court in Nestle India Ltd. wherein the Court laid down
following conditions which need to be satisfied for the applicability
of Section 11(2):
“(a) The mark has to be identical with or similar to an
earlier trademark and is to be registered for goods or
services which are not similar to those for which the
earlier trademarks is registered – both the
aforementioned conditions (forming sub-section (a)
and (b) of Section 11(2)) have to be satisfied and not
just one, due to the use of the word and between them.
(b) The registered Trademark must have a reputation
in India, and
(c) The use of the mark in question must be without
due cause, and
(d) Such use must take unfair advantage of or be
detrimental to the distinctive character or repute of the
registered trademark.”
22. In this hue, another submission of the learned senior counsel for
the respondent was that the appellant’s contention regarding
honest and concurrent user was untenable for the following
reasons:
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 33 of 47
(a) The question of the Court/Registrar taking into consideration
the provisions of Section 12 of the Act, which provides for
registration in the case of honest and concurrent user does not
arise as the very basis for the application of this Section is the
“honesty of the concurrent use.” The appellant was wellaware
of the widespread use of the mark Nandhini by the
respondent and has admitted that they were purchasing Nandhini
milk for their restaurant. Therefore, the appellant cannot claim to
be an honest or concurrent user, as such claims would be
contrary to the evidence placed on record and their own
admissions.
(b) Section 12 of the Act relates to identical or similar goods or
services. The appellant is not in the business of selling milk or
milk products and the claim made by it is with regard to the
trading style for their restaurants’ name “NANDHINI”. Therefore,
the goods or services of the appellant are neither identical, nor
similar, to those of the the respondent.
(c) At any rate, Section 11(2) being couched in negative
language indicates that it is mandatory nature and would override
the provisions of Section 12.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 34 of 47
(d) Section 12 has never been expressly pleaded by the
appellant. In any case, this contention has not been expressly
argued on behalf of the appellant before the lower fora.
23. We have duly considered the aforesaid submissions of both the
counsel with reference to the record of the case. Though the
detailed arguments are advanced touching upon various aspects,
it is not necessary to traverse through all these arguments. We
proceed on the presumption that the trade mark ‘NANDHINI’,
which is registered in the name of the appellant has acquired
distinctiveness though the appellant disputes the same.
Otherwise also there is no challenge to the registration of this
name in favour of the respondent. The moot question, according
to us, is as to whether the appellant is entitled to seek registration
of the mark ‘NANDHINI’ in respect of the goods in which it is dealt
with, as noted above. Therefore, the fulcrum of the dispute is as
to whether such a registration in favour of the appellant would
infringe rights of the respondent. The entire case of the
respondent revolves around the submissions that the adaptation
of this trade mark by the appellant, which is phonetically similar to
that of the respondent, is not a bona fide adaptation and this
clever device is adopted to catch upon the goodwill which has
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 35 of 47
been generated by the respondent in respect of trade mark
‘NANDINI’. On that premise, the respondent alleges that the
proposed trade mark ‘NANDHINI’ for which the appellant applied
for registration is similar trade mark in respect of similar goods
and, therefore, it is going to cause deception and confusion in the
minds of the users that the goods in which the appellant is
trading, in fact, are the goods which belong to the respondent.
Precisely, it is this controversy which needs to be addressed in
the first instance.
24. Before we answer as to whether the approach of the IPAB and
the High Court in the impugned orders is correct, as contended
by the respondent or it needs to be interdicted as submitted by
the appellant, some of the relevant facts about which there is no
dispute, need to be recapitulated. These are as follows:
(A) Respondent started using trade mark in respect of its
products, namely, milk and milk products in the year 1985. As
against that, the appellant adopted trade mark ‘NANDHINI’ in
respect of its goods in the year 1989.
(B) Though, the respondent is a prior user, the appellant also
had been using this trade mark ‘NANDHINI’ for 12-13 years
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 36 of 47
before it applied for registration of these trade marks in respect of
its products.
(C) The goods of the appellant as well as respondent fall under
the same Classes 29 and 30. Notwithstanding the same, the
goods of the appellant are different from that of the respondent.
Whereas the respondent is producing and selling only milk and
milk products the goods of the appellant are fish, meat, poultry
and game, meat extracts, preserved, dried and cooked fruits and
vegetables, edible oils and fats, salad dressings, preserves etc.
and it has given up its claim qua milk and milk products.
(D) Insofar as application for registration of the milk and milk
products is concerned, it was not granted by the trade mark
registry. In fact, the same was specifically rejected. The
appellant was directed to file the affidavit and Form 16 in this
behalf to delete the goods ‘milk and milk products’ which affidavit
was filed by the appellant. Further concession is already
recorded above.
(E) NANDINI/NANDHINI is a generic, it represents the name of
Goddess and a cow in Hindu Mythology. It is not an invented or
coined word of the respondent.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 37 of 47
(F) The nature and style of the business of the appellant and
the respondent are altogether different. Whereas respondent is a
Cooperative Federation of Milk Producers of Karnataka and is
producing and selling milk and milk products under the mark
‘NANDINI’, the business of the appellant is that of running
restaurants and the registration of mark ‘NANDHINI’ as sought by
the appellant is in respect of various foodstuffs sold by it in its
restaurants.
(G) Though there is a phonetic similarity insofar as the words
NANDHINI/NANDINI are concerned, the trade mark with logo
adopted by the two parties are altogether different. The manner
in which the appellant has written NANDHINI as its mark is totally
different from the style adopted by the respondent for its mark
‘NANDINI’. Further, the appellant has used and added the word
‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed
by the words ‘the real spice of life’. There is device of lamp with
the word ‘NANDHINI’. In contrast, the respondent has used only
one word, namely, NANDINI which is not prefixed or suffixed by
any word. In its mark ‘Cow’ as a logo is used beneath which the
word NANDINI is written, it is encircled by egg shape circle. A
bare perusal of the two marks would show that there is hardly any
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 38 of 47
similarity of the appellant’s mark with that of the respondent when
these marks are seen in totality.
25. When we examine the matter keeping in mind the aforesaid
salient features, it is difficult to sustain the conclusion of the IPAB
in its order dated 4th October, 2011 as well in the impugned order
of the High Court that the mark adopted by the appellant will
cause any confusion in the mind of consumers, what to talk of
deception. We do not find that the the two marks are deceptively
similar.
26. We are of further opinion that the earlier order dated 20th April,
2010 of IPAB approached the subject matter in correct
perspective. The test laid down in Polaroid Corporation vs.
Polarad Electronics Corporation11 is as follows:
“The problem of determining how far a valid trademark
shall be protected with respect to goods other than those to
which its owner has applied it, has long been vexing and
does not become easier of solution with the years. Neither
of our recent decisions so heavily relied upon by the
parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc.,
2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co.,
Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by
defendant, affords much assistance, since in the Ritchie
case there was confusion as to the identical product and
the defendant in the Avon case had adopted its mark
"without knowledge of the plaintiffs' prior use," at page 611.
Where the products are different, the prior owner's chance
11 287 F.2d 492 (1961)
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 39 of 47
of success is a function of many variables: the strength of
his mark, the degree of similarity between the two marks,
the proximity of the products, the likelihood that the prior
owner will bridge the gap, actual confusion, and the
reciprocal of defendant's good faith in adopting its own
mark, the quality of defendant's product, and the
sophistication of the buyers. Even this extensive catalogue
does not exhaust the possibilities — the court may have to
take still other variables into account. American Law
Institute, Restatement of Torts, §§ 729, 730, 731. Here
plaintiff's mark is a strong one and the similarity between
the two names is great, but the evidence of actual
confusion, when analyzed, is not impressive. The filter
seems to be the only case where defendant has sold, but
not manufactured, a product serving a function similar to
any of plaintiff's, and plaintiff's sales of this item have been
highly irregular, varying, e. g., from $2,300 in 1953 to
$303,000 in 1955, and $48,000 in 1956.”
27. This Court in National Sewing Thread Co. Ltd. vs. James
Chadwick and Bros.12 accepted the following principles which
are to be applied in such cases:
“22. The principles of law applicable to such cases are well
settled. The burden of proving that the trade mark which a
person seeks to register is not likely to deceive or to cause
confusion is upon the applicant. It is for him to satisfy the
Registrar that his trade mark does not fall within the
prohibition of Section 8 and therefore it should be
registered. Moreover in deciding whether a particular trade
mark is likely to deceive or cause confusion that duty is not
discharged by arriving at the result by merely comparing it
with the trade mark which is already registered and whose
proprietor is offering opposition to the registration of the
mark. The real question to decide in such cases is to see
as to how a purchaser, who must be looked upon as an
average man of ordinary intelligence, would react to a
particular trade mark, what association he would form by
looking at the trade mark, and in what respect he would
12 AIR 1953 SC 357
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 40 of 47
connect the trade mark with the goods which he would be
purchasing.”
28. Applying the aforesaid principles to the instant case, when we
find 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.
29. One other significant factor which is lost sight of by the IPAB as
well as the High Court is that the appellant is operating a
restaurant under the trademark ‘NANDHINI’ and it had applied
the trademark in respect of goods like coffee, tea, cocoa, sugar,
rice, rapioca, sago, artificial coffee, flour and preparations made
from cereals, bread, pastry, spices, bill books, visiting cards,
meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces, etc.
which are used in the products/services of restaurant business.
The aforesaid items do not belong to Class 29 or 30. Likewise,
stationery items used by the appellant in the aid of its restaurant
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 41 of 47
services are relatable to Class 16. In these circumstances, there
was hardly any question of confusion or deception.
30. Having arrived at the aforesaid conclusion, the reasoning of the
High Court that the goods belonging to the appellant and the
respondent (though the nature of goods is different) belong to
same class and, therefore, it would be impermissible for the
appellant to have the registration of the concerned trade mark in
its favour, would be meaningless. That apart, there is no such
principle of law. On the contrary, this Court in Vishnudas
Trading as Vishnudas Kushandas2 has decided otherwise as
can be seen from the reading of para 47 of the said judgment:-
“47. The respondent Company got registration of its
brand name “Charminar” under the broad classification
“manufactured tobacco”. So long such registration
remains operative, the respondent Company is entitled
to claim exclusive use of the said brand name in respect
of articles made of tobacco coming under the said broad
classification “manufactured tobacco”. Precisely for the
said reason, when the appellant made application for
registration of quiwam and zarda under the same brand
name “Charminar”, such prayer for registration was not
allowed. The appellant, therefore, made application for
rectification of the registration made in favour of the
respondent Company so that the said registration is
limited only in respect of the articles being
manufactured and marketed by the respondent
Company, namely, cigarettes. In our view, if a trader or
manufacturer actually trades in or manufactures only
one or some of the articles coming under a broad
classification and such trader or manufacturer has no
bona fide intention to trade in or manufacture other
goods or articles which also fall under the said broad
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 42 of 47
classification, such trader or manufacturer should not be
permitted to enjoy monopoly in respect of all the
articles which may come under such broad classification
and by that process preclude the other traders or
manufacturers from getting registration of separate and
distinct goods which may also be grouped under the
broad classification. If registration has been given
generally in respect of all the articles coming under the
broad classification and if it is established that the
trader or manufacturer who got such registration had
not intended to use any other article except the articles
being used by such trader or manufacturer, the
registration of such trader is liable to be rectified by
limiting the ambit of registration and confining such
registration to the specific article or articles which really
concern the trader or manufacturer enjoying the
registration made in his favour. In our view, if
rectification in such circumstances is not allowed, the
trader or manufacturer by virtue of earlier registration
will be permitted to enjoy the mischief of trafficking in
trade mark. Looking to the scheme of the registration of
trade mark as envisaged in the Trade Marks Act and the
Rules framed thereunder, it appears to us that
registration of a trade mark cannot be held to be
absolute, perpetual and invariable under all
circumstances. Section 12 of the Trade Marks Act
prohibits registration of identical or deceptively
similar trade marks in respect of goods and
description of goods which is identical or
deceptively similar to the trade mark already
registered. For prohibiting registration under
Section 12(1), goods in respect of which
subsequent registration is sought for, must be (i)
in respect of goods or description of goods being
same or similar and covered by earlier
registration and (ii) trade mark claimed for such
goods must be same or deceptively similar to the
trade mark already registered. It may be noted
here that under sub-section (3) of Section 12 of
the Trade Marks Act, in an appropriate case of
honest concurrent use and/or of other special
circumstances, same and deceptively similar
trade marks may be permitted to another by the
Registrar, subject to such conditions as may deem
just and proper to the Registrar. It is also to be
noted that the expression “goods” and “description of
goods” appearing in Section 12(1) of the Trade Marks
Act indicate that registration may be made in respect of
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 43 of 47
one or more goods or of all goods conforming a general
description. The Trade Marks Act has noted
distinction between description of goods forming
a genus and separate and distinctly identifiable
goods under the genus in various other sections
e.g. goods of same description in Section 46,
Sections 12 and 34 and class of goods in Section
18, Rules 12 and 26 read with Fourth Schedule to
the Rules framed under the Act.
48. The “class” mentioned in the Fourth Schedule may
subsume or comprise a number of goods or articles
which are separately identifiable and vendible and
which are not goods of the same description as
commonly understood in trade or in common parlance.
Manufactured tobacco is a class mentioned in Class 34
of Fourth Schedule of the Rules but within the said class,
there are a number of distinctly identifiable goods which
are marketed separately and also used differently. In our
view, it is not only permissible but it will be only just and
proper to register one or more articles under a class or
genus if in reality registration only in respect of such
articles is intended, by specifically mentioning the
names of such articles and by indicating the class under
which such article or articles are to be comprised. It is,
therefore, permissible to register only cigarette or some
other specific products made of “manufactured
tobacco” as mentioned in Class 34 of Fourth Schedule of
the Rules. In our view, the contention of Mr
Vaidyanathan that in view of change in the language of
Section 8 of the Trade Marks Act as compared to Section
5 of the Trade Marks Act, 1940, registration of trade
mark is to be made only in respect of class or genus and
not in respect of articles of different species under the
genus is based on incorrect appreciation of Section 8 of
the Trade Marks Act and Fourth Schedule of the Rules.”
31. We may mention that the aforesaid principle of law while
interpreting the provisions of Trade and Merchandise Act, 1958 is
equally applicable as it is unaffected by the Trade Marks Act,
1999 inasmuch as the main object underlying the said principle is
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 44 of 47
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 trade mark 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.
32. The aforesaid discussion leads us to hold that all the ingredients
laid down in Section 11(2) of the Act, as explained by the Delhi
High Court in Nestle India Ltd., have not been satisfied. We are
not persuaded to hold, on the facts of this case, that the appellant
has adopted the trade mark to take unfair advantage of the trade
mark of the respondent. We also hold that use of ‘NANDHINI’ by
appellant in respect of its different goods would not be
detrimental to the purported distinctive character or repute of the
trade mark of the respondent. It is to be kept in mind that the
appellant had adopted the trade mark in respect of items sold in
its restaurants way back in the year 1989 which was soon after
the respondent had started using the trade mark ‘NANDINI’.
There is no document or material produced by the respondent to
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 45 of 47
show that by the year 1989 the respondent had acquired
distinctiveness in respect of this trade mark, i.e., within four years
of the adoption thereof. It, therefore, appears to be a case of
concurrent user of trade mark by the appellant.
33. There is some force in the argument of learned counsel for the
appellant that IPAB while passing orders dated 4th October, 2011
ignored its earlier order, of a Coordinate Bench, passed on 20th
April, 2010. Appeal in which order dated 20th April, 2010 was
passed was between the same parties on identical issue. The
IPAB had dismissed the said appeal of the respondent and that
order had attained finality. Prima facie, this would act as an issue
of estoppel between the parties (see the Bhanu Kumar Jain vs.
Archana Kumar and Anr. [(2005) 1 SCC 787]; Hope
Plantations Ltd. vs. Taluk Land Board, Peermade and
Another, [(1999) 5 SCC 590)]. However, as we are holding that
the impugned orders of the IPAB and High Court are not
sustainable in law and have decided these appeals on merits it is
not necessary to make any further comments on the aforesaid
aspect.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 46 of 47
34. As a result, the orders of the IPAB and High Court are set aside.
These appeals are allowed and the order of the Deputy Registrar
granting registration in favour of the appellant is hereby restored,
subject to the modification that registration will not be given in
respect of those milk and milk products for which the appellant
has abandoned its claim, as noted in para 18(vii) above.
35. In the peculiar facts of this case, we refrain ourselves from
awarding any costs.
.............................................J.
(A.K. SIKRI)
.............................................J.
(ASHOK BHUSHAN)
NEW DELHI;
JULY 26, 2018.
Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 47 of 47
