M/S. NANDHINI DELUXE versus M/S. KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD.

Citation: [2018] 11 S.C.R. 275 · Decided: 26-07-2018 · Supreme Court of India · Bench: A.K. SIKRI · Disposal: Appeal(s) allowed

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Judgment (excerpt)

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M/S. NANDHINI DELUXE
v.
M/S. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.
(Civil Appeal Nos. 2937-2942 of 2018)
JULY 26, 2018
[A. K. SIKRI AND ASHOK BHUSHAN, JJ.]
Trade Mark – Similar marks – Respondent, a cooperative
federation of the Milk producers of Karnataka adopted the mark
‘NANDINI’ in the year 1985 and under this brand name produced
and sold milk and milk products – On the other hand, appellant
was in the business of running restaurants and it adopted the mark
‘NANDHINI’ for its restaurants in the year 1989 – Appellant applied
for registration of the said mark in respect of various food products
including milk and milk products – Respondent opposed the
registration of the mark on the ground that it was deceptively similar
to its own mark and was likely to deceive the public or cause
confusion – Objections were rejected by the Deputy Registrar and
registration was granted to the appellant – Appeals of the respondent
were allowed by the IPAB – Writ petitions filed by the appellants
were dismissed – On appeal, held: 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 was 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 – Therefore, it was a
case of concurrent user of trade mark by the appellant –
Furthermore, Appellant had abandoned its claim for milk and milk
products – Therefore, the order of the Deputy Registrar granting
registration in favour of the appellant restored subject to
modification that registration would not be given in respect of those
milk and milk products for which appellant has abandoned its claim
– Trade Mark Rules, 2002 – Class 29 and Class 30 under
Schedule IV.
[2018] 11 S.C.R. 275
275
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SUPREME COURT REPORTS
[2018] 11 S.C.R.
Allowing the appeals, the Court
HELD: Whether the appellant is entitled to seek
registration of the mark ‘NANDHINI’ in respect of the goods in
which it is dealt with and whether such a registration in favour of
the appellant would infringe rights of the respondent.
1.  In the instant case, 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, it is difficult to imagine that an
average man of ordinary intelligence would associate the goods
of the appellant as that of the respondent. [Para 28] [304-G-H]
2.  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 etc. which are used in the products/services of restaurant
business.  The aforesaid items do not belong to Class 29 or 30 as
per classification under Schedule IV to the Trade Marks Rules,
2002.  Likewise, stationery items used by the appellant in the aid
of its restaurant services are relatable to Class 16 of the Rules.
In these circumstances, there was hardly any question of confusion
or deception. [Para 29] [305-A-C]
3.  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.  [Para 30] [305-C-D]
4.  On the facts of this case, it is not convincing to suggest
that the appellant has adopted the trade mark to take unfair
advantage of the trade mark of the respondent.  The use of mark
‘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
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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
distin

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