M/s. Nandini Deluxe v. M/s. Karnataka Co-Operative Milk Producers Federation Ltd

Facts of the case

Karnataka Co-Operative Milk Producers Federation Ltd (hereinafter referred to as ‘the Respondents’) stated that they adopted the mark ‘NANDINI’ in 1985 and since then has been producing and selling milk and milk products. The Trademark registration of the mark ‘NANDINI’ belongs to it in Class 29 and Class 30. Nandhini Deluxe (hereinafter referred to as ‘the Appellants’) was running restaurants under the mark ‘NANDHINI’ since 1989. It applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants.

The Respondent’s grounds for opposing the registration of the ‘NANDHINI’ mark were that:

• It was deceptively similar to the mark of the Respondent and was likely to deceive the public or cause confusion.
• The Respondent argued that it has maintained a long and sustained use of the mark ‘NANDINI’, because of which it has acquired a distinctive character and was well-known to the public which associated ‘NANDINI’ with the Respondent.
• It further contended that it had 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 were in fact that of the Respondent.

After rejection by the Deputy Registrar, the Respondent filed an appeal with the Intellectual Property Appellate Board, Chennai (hereinafter referred to as ‘the IPAB’) praying that the registration given accorded to the Appellant should be cancelled.

Issue

Whether the mark ‘NANDHINI’ of the Appellant infringed the mark ‘NANDINI’ of the Respondent?

Judgement

The Hon’ble Supreme Court has observed that ‘NANDINI/NANDHINI was a generic word, as it represents the name of Goddess and a cow in Hindu Mythology, and not an invented or coined word of the Respondent. 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.

The Court also relied upon its own observations in the case of Vishnudas Trading as Vishnudas Kishendas v. The Vazir Sultan Tobacco Ltd. and Anr. AIR 1996 SC 2275 that “if a trader or manufacturer actually trades in or manufacturers only one or some of the articles coming under the broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification.”