Case: M/S. NANDHINI DELUXE Vs. M/S. KARNATAKA COOPERATIVE MILK PRODUCERS FEDERATION LTD. REP. BY ITS MANAGING DIRECTOR

The respondent herein, which is a Cooperative Federation of the Milk Producers of 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 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.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 trade mark sought to be adopted by the appellant was confusingly and deceptively similar to the respondents 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 purchasers/customers of both the trade marks was entirely different. The Deputy Registrar noted that the issues involved in these proceedings were based on Sections 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 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 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 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.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 respondents mark is NANDINI per se, the appellants 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 respondents 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 respondents 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 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 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 applicants 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 appellants 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 Vishnudas Trading as Vishnudas Kushandas vs. The Vazir Sultan Tobacco Ltd. and Anr., (1996) 5 Scale 267 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 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 Kushandas, (1996) 5 Scale 267.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 productsThe appellant filed the affidavit to this effect, as directed by IPAB on 18th July, 2011.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 1985.15. 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 appellants 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 appellants 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 appellants 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 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 appellants products and therefore, though it might be a Hindu name, or even a deitys name, it has come to be recognized as a distinctive mark of the appellant by the appellants 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 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.

Reasoning:
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 by the appellant in its restaurants also fall under Class 29 and 30 as well as other Classes.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.(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 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.(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 similarity of the appellants 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 Corporation, 11 287 F.2d 492 (1961) 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-Ponds, 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 owners chance 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 defendants good faith in adopting its own mark, the quality of defendants 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 plaintiffs 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 plaintiffs, and plaintiffs 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., (1953) AIR SC 357 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 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 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 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 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 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 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.