M/S. Nandhini Deluxe vs M/S. Karnataka Cooperative Milk ...

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 4 th October, 2011 and the writ petitions filed by the appellant there against have been dismissed by the High Court vide impugned order dated 2 nd 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.

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 Sections 1 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—

(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

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.

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aware 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.

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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.

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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.

JULY 26, 2018.

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