Manupatra

Fill in the following details to e-mail

Subject

<!DOCTYPE html PUBLIC "-//W3C//DTD XHTML 1.0 Transitional//EN" "http://www.w3.org/TR/xhtml1/DTD/xhtml1-transitional.dtd"> <html xmlns="http://www.w3.org/1999/xhtml"> <head> </head> <body> <div style="font-family:Verdana, Geneva, sans-serif; font-size:12px; text-align:justify"> <table width="800" border="0" style="border:1px solid #ccc;padding:5px;" align="center" cellpadding="6" cellspacing="0"> <tr> <td align="left" valign="top"> Supreme Court Proprietor of a trade mark cannot enjoy monopoly over entire class of goods MANU/SC/0779/2018 - (26 Jul 2018) </td> </tr> <tr> <td align="left" valign="top">Nandhini Deluxe vs. Karnataka Cooperative Milk Producer Federation Ltd.</td> </tr> <tr> <td align="left" valign="top" style="background-color:#FDEDCE">In present case, the dispute pertains to the use of mark 'NANDHINI'. 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 allowing the registration of the said mark in favour of the Appellant. 
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, 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 ('IPAB'), 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 and the writ petitions filed by the Appellant there against have been dismissed by the High Court vide impugned order thereby confirming the order of the IPAB. 
The moot question is as to whether the Appellant is entitled to seek registration of the mark 'NANDHINI' in respect of the goods in which it is dealt with. Therefore, the fulcrum of the dispute is as to whether such a registration in favour of the Appellant would infringe rights of the Respondent. The entire case of the Respondent revolves around the submissions that the adaptation of this trade mark by the Appellant, which is phonetically similar to that of the Respondent, is not a bona fide adaptation and this clever device is adopted to catch upon the goodwill which has been generated by the Respondent in respect of trade mark 'NANDINI'. 
In instant case, not only visual appearance of the two marks is different, they even relate to different products. The IPAB as well as the High Court lost sight of the facts 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, tapioca, 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. 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. 
Delhi High Court in case of Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. laid down conditions which needed to be satisfied for applicability of Section 11(2) of The Trademarks Act, 1999: (a) mark had to be identical with or similar to an earlier trade mark and is to be registered for goods or services which were not similar to those for which earlier trade marks was registered-both aforementioned conditions (forming Sub-section (a) and (b) of Section 11(2)) of Act, had to be satisfied and not just one, due to use of word and between them. (b) registered trade mark must have a reputation in India, and (c) use of mark in question must be without due cause, and (d) Such use must take unfair advantage of or be detrimental to distinctive character or repute of registered trade mark. All ingredients laid down in Section 11(2) of Act, as explained by Delhi High Court in Nestle India Ltd., had not been satisfied. It could not be said that, Appellant had adopted trade mark to take unfair advantage of trade mark of Respondent. 
Present Court is 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. 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. 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. 
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.</td> </tr> <tr> <td align="left" valign="top" ></td> </tr> <tr> <td align="left" valign="top" >Tags : Registration, Denial, Legality</td> </tr> <tr> <td align="left" valign="top">&nbsp;</td> </tr> <tr>  <td align="left" valign="top">Source : newsroom.manupatra.com</td> </tr> <tr> <td align="left" valign="top">&nbsp;</td> </tr> <tr> <td align="left" valign="top">Regards</td> </tr> <tr> <td align="left" valign="top">Team Manupatra</td> </tr> <tr> <td align="left" valign="top">&nbsp;</td> </tr> </table> </div> </body> </html>