The Supreme Court in M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd. [CIVIL APPEAL NO. 2943-2944 OF 2018], decided on 26.07.2018 has held that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods particularly when he is not using the said trade mark in respect of certain goods falling under the same class.
The factual matrix which led to the decision is as follows – Karnataka Co-Operative Milk Producers Federation Ltd., which has been producing and selling milk and milk products, since 1985, obtained registration for their mark ‘NANDINI’. M/s. Nandhini Deluxe, who is in the business of running restaurants since1989 under the name ‘NANDHINI’, applied for registration of their Mark “NANDHINI”.
Deputy Registrar of Trade Marks accepted their application for registration, the Intellectual Property Appellate Board set aside Deputy Registrar’s order, and the High Court agreed with IPAB reasons.
Following are the reasons for rejecting Nandhini Deluxe application:
The Apex Court compared the marks and observed that they are not deceptively similar. It was held though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark. 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. There is device of lamp with the word ‘NANDHINI’ whereas, the mark of the respondent has a Cow as a logo which is used beneath 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 similarity of the appellant’s mark with that of the respondent.
The court further observed: “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.”
The bench then set aside the High Court and IPAB orders, restoring the Registrar’s order allowing registration in favour of Nandhini Deluxe.