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Karnataka Cooperative Society, Respondent, started using the
trademark 'NANDINI' for milk and milk products from the
year 1985. The Appellants, Nandhini Deluxe adopted the mark
'NANDHINI' in 1989 in respect of their goods. The goods of
both the parties fall under same class 29 and 30 an even though the
both the parties have been using their trademark for more than 12
years, the Respondent is the prior user. Irrespective of the goods
belonging to the same classes in a broad sense, the Appellant's
goods are different from those of the Respondent, the Appellant is
dealing with fish, meat, poultry and game, meat extracts,
preserved, dried and cooked fruits and vegetables, edible oils and
fats, salad dressings, preserves etc and the Respondent is dealing
only with milk and milk products. The registration of
Appellant's mark on milk and milk products are refused by the
Trademark registry, and the Appellant has to explicitly give an
affidavit, deleting the word "milk and milk products"
from its description.
SUPREME COURT HELD
Marks Are Not Deceptively Similar
Firstly, the word NANDINI/ NANDHINI is a generic word as it
represents the name of Cow in Hindu Mythology. It is not an
invented or coined word.
Secondly, it has been held that even though both the words are
phonetically similar, the trademark and logo adopted are completely
different when seen in totality; further the name and style of
business of both parties are different from each other since one
deal in milk and milk products, the other deals in various
foodstuffs except milk and milk products. The Appellant used the
word DELUXE along with Nandhini, followed by the tagline 'the
real spice of life', and a device of lamp, whereas the
Respondent have used simply used the word 'NANDINI' below
the picture of a cow encompassed in a circle. This pictorial
depiction of two trademarks was sufficient to show that there is
hardly any similarity between the two marks.
No Absolute Monopoly
Referring to the case of Vishnudas Trading as Vishnudas
Kushandas, the Court held 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 trademark 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'. The Court also held that since the
facts have not satisfied the conditions of Section 11(2) of the
Trademark Act, therefore, the Respondent cannot claim protection of
well-known mark. Also it was held to the case of 'concurrent
user of trademark' since no document or evidence was provided
by the Respondent to show that they have acquired distinctiveness
within four years between Respondent's first adoption or
Appellant's first adoption.
The Court concluded that both the marks are not capable
of causing confusion in minds of public and are not deceptively
similar. The registration of Appellant's mark was allowed
subject to the condition of deleting 'milk and milk
products' from their registration.
CONCLUSION
Before the Judgment, the use of deceptively similar trademarks
in different classes were permissible and almost never disputed,
but post- judgment, use of same or deceptively similar trademark in
the same class has been permitted, if the marks are visually
different from one another. Proprietor of the trademark cannot
enjoy monopoly over the entire class of Goods – Supreme
Court. This judgment has come as a huge relief to the traders
who have been in business of long and have similar trademarks to
those of the already existing trademarks, in similar class but
different businesses. On the Contrary, the Judgment has also opened
the doors of concern such as mere similarity of words is
insufficient to reason infringement, registration of a mark in one
class in no assurance that similar competing mark cannot be
registered in the same class unless well-known, which in itself is
hard to prove.
Footnotes
1 M/s Nandhini Deluxe vs. M/s Karnataka Co-operative Milk
2018 (9) SCALE 202
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