Proprietor Of A Trade Mark Cannot Enjoy Monopoly Over The Entire Class Of Goods: SC [Read Judgment]

The Supreme Court in M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd., has held that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods particularly when he is not using the said trade mark in respect of certain goods falling under the same class.Factual matrixKarnataka Co-Operative Milk Producers Federation Ltd., which has been producing and selling milk and milk products, since 1985, obtained registration for their mark ‘NANDINI’. M/S. Nandhini Deluxe, who is in the business of running restaurants since 1989 under the name ‘NANDHINI’, applied for registration of their Mark “NANDHINI”.In short, Deputy Registrar of Trade Marks accepted their application for registration, the Intellectual Property Appellate Board set aside Deputy Registrar’s order, and the High Court agreed with IPAB reasons.Following are the reasons for rejecting Nandhini Deluxe application NANDINI as held by the Federation has acquired a distinctive character and has become well-known The use of another mark is different only in one alphabet but with no difference in spelling or pronunciation in the local language and would very likely to cause confusion in the minds of public if allowed to be registered for the commodities falling in the same class; Argument of the Nandhini Deluxe that it was running the business of restaurant since 1989 and the respondent had started using mark ‘NANDINI’ since the year 1985 only for milk and not for other products was rejected on the ground that there is no foundation in facts for the aforesaid argument and no material was produced to substantiate the same.The contentionsBefore the Apex court bench, Advocate Sushant Singh, who appeared for Nandhini Deluxe, contended that hat goods and services of Nandhini Deluxe were totally different from that of the Federation and, therefore, there was no likelihood of confusion or deception among the public. Relying on Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd., it was also contended that the monopoly under Trademark only extends to the goods which are falling in a particular class and not the entire class of goods and the trade mark which is identical or similar in nature can be registered for the goods which are falling within the same class inasmuch as giving the monopoly to the entire class of goods and services to the registered proprietor would lead to trafficking in the trade mark which is not the object and the purpose of the Trade Mark Act.On the other hand S.S. Naganand, senior counsel who appeared for federation, stressed on the contention that it is a well known trademark and submitted that, outside the city of Bangalore, the public are not aware of the restaurant and “NANDHINI” all over Karnataka is related exclusively to the Federation.Not deceptively similarThe bench of Justice AK Sikri and Justice Ashok Bhushan compared the marks and observed that they are not are deceptively similar. It said: “Though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the appellant has written NANDHINI as its mark is totally different from the style adopted by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the appellant’s mtark with that of the respondent when these marks are seen in totality.”Cannot enjoy monopoly over the entire class of goodsThe court further observed: “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.”Referring to Vishnudas Trading as Vishnudas Kushandas, the bench observed: The proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark 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 bench then set aside the High Court and IPAB orders, restoring the Registrar’s order allowing registration in favour of Nandhini Deluxe, subject...

Proprietor Of A Trade Mark Cannot Enjoy Monopoly Over The Entire Class Of Goods: SC [Read Judgment]

Rashid M A

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