SC’s trademark verdict in Nandhini Deluxe – Boon or Bane?
Mayur Shetty (Associate Partner, Rajani Associates)
Dikshat Mehra (Senior Associate)
In the case of Nandhini Deluxe (\"Appellant\") vs. Karnataka Co- Operative Milk Producers FederationLtd (\"Respondent\")[1], the Supreme Court of India (\"SC\") whilst setting aside the order of Karnataka High Court (\"HC\") and Intellectual Property Appellate Board (\"IPAB\"), held that the proprietor of a trademark cannot enjoy monopoly over the entire class of goods particularly, when the proprietor is not using the said trademark in respect of certain goods falling under the same class.
The Respondent had been using the trademark \"Nandini\" for milk and milk products, since the year 1985 and had obtained trademark registrations under classes 29 and 30. The Respondent’s registered trademark \"Nandini, was accompanied with a picture of a cow encompassed in a circle. On the other hand, the trademark \"Nandhini Deluxe\" was being usedby the Appellant since 1989,for various foodstuffs sold in their chain of restaurants like fish, meat, vegetables, jellies etc. The Appellant had applied for registration under classes 29 and 30. The trademark \"Nandhini Deluxe\" contained the tagline, \"The real spice of life\".
The Respondent mainly opposed registration of Appellant’s trademark, \"Nandhini Deluxe\" before the Registrar of Trademarks on the grounds, amongst others, that - (i) Appellant’s mark \"Nandhini Deluxe\" was confusing and deceptively similar to the Respondent’s mark “Nandini” which was used since 1985; (ii) the Respondent’s mark had acquired distinctiveness and was a well-known mark to the public, due to long and sustained use of their mark. The objections of the Respondent were dismissed by Registrar of Trademarks, thereby allowing \"Nandhini Deluxe\" to proceed for registration.
After rejection by the Registrar of Trademarks, the Respondent preferred an appeal with the IPAB challenging the registration accorded to the Appellant. The appeal filed by the Respondent was allowed by IPAB. The Appellant preferred a Writ petition before the HC, to challenge the order of IPAB, which came to be dismissed by HC. The Appellant then challenged the order of the HC before the SC.
Broadly the issues before the Apex Court were, whether the Appellant is entitled to seek registration of the mark, \"Nandhini Deluxe\" with respect of the goods under classes 29 and 30 and was there any infringement by \"Nandhini Deluxe\" qua the mark, \"Nandini\"?
The SC referring to its earlier judgment in case of Vishnudas Trading vs Vishnudas Kushandas[2], held that the proprietor of a trademark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trademark in respect of certain goods falling under the same class, unless it’s a well-known mark.
The Apex Court also observed that the Appellant had adopted their trade mark in the year 1989, which was soon after the Respondent had started using the trademark \"Nandini\" and there was no record to show that by the year 1989, the Respondent has acquired distinctiveness in respect of its trade mark within four years of its adoption. Therefore, it appears to be a case of concurrent user of trademark by the Appellant.
The SC further noted that not only the visual appearance of two marks is different, they even relate to different products. Moreover, the manner in which the Appellant and the Respondent’s trade their respective products, it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.
The Apex Court finally concluded that both the marks “Nandini\" and \"Nandhini Deluxe\" are not capable of causing confusion in minds of public and are not deceptively similar. The registration of \"Nandhini Deluxe\" mark was allowed, subject to the condition that the trademark will not be used for milk and milk products for which the Respondent was using its trademark \"Nandini\".
The Judgement’s Impact on Businesses
This judgment can either be a boon or curse for a particular business, depending on how their trademark is currently poised. If the business’ trademark is facing opposition from a registered trademark in the same class, but for a different set of goods, then this judgment may come to their rescue provided they meet the other criteria for e.g. distinctiveness, different trade circles, etc. Similarly, a registered Trademark cannot oppose the registration of other phonetically similar trademark, merely because it is in the same class as its Trademark.
Mere similarity of words would now be inadequate for proving infringement; registration of a mark in one class would give no assurance that similar marks cannot be registered in the same class for different goods/services.
Notably, earlier this year, the full bench of the Bombay High Court in Cipla Limited vs Cipla Industries Pvt Ltd[3] has held that mere use of a well-known mark as a part of a corporate name in respect of a business relating to goods/ services for which the mark is not registered would not constitute infringement.
The judgement in Nandhini Deluxe also makes it clear that no person can have exclusive rights or monopoly over the entire class of goods, especially when the trademark is not being used with respect to all the goods falling under the said class. The decision clearly reads that two visually distinct and different marks cannot be called deceptively similar, when they are being used for different goods.
Reasons why the Judgement may set a precedent for future legal matters
Generally, it has been observed, the use of phonetically similar trademarks in the same class has not been readily accepted by the Registry.
This judgment will come as a relief to the traders, businessmen who have been in business for long and have similar trademarks to those of the already existing registered trademarks albeit in the same class, but for different goods.