Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 11Section 12Section 18Section 9

Provisions considered: Sections 9, 11, 12 and 18 of the Trade Marks Act, 1999, on grounds for refusal and honest concurrent use.

Brief facts

The respondent, a cooperative federation, had used the registered mark NANDINI for milk and milk products since 1985. The appellant, running restaurants under the mark NANDHINI with a distinct logo since 1989, applied to register NANDHINI for various food items in the same class, which the respondent opposed. The Deputy Registrar allowed registration except for milk and milk products, but the Appellate Board reversed this, holding NANDINI a well-known mark likely to be confused with NANDHINI, and the Karnataka High Court affirmed. The appellant appealed to the Supreme Court.

Issues before the Court

1. Does registration of a mark for one product confer a monopoly over an entire class of goods?
2. Can honest, long concurrent use of a similar mark for different goods within the same class defeat a claim of confusion?
3. Is a common name entitled to the same exclusivity as a coined mark?

Court's findings

The Court held that trade mark protection under Section 11 must be assessed by comparing the actual nature of the goods and services, not merely the class under which they are registered, since one class may cover a wide and heterogeneous range of products.

The Court observed that the respondent's mark was used exclusively for milk and milk products, whereas the appellant's mark, used with a distinctive logo since 1989, covered a different range of restaurant food items, making confusion between the sources unlikely despite both marks falling within the same class.

The Court found the appellant's adoption and use since 1989 honest and concurrent, supported by documentary proof, and noted the respondent's long delay before objecting. It also observed that the word in question, being a common name in wide use across India, could not be monopolised so as to bar the appellant's honest and distinct use.

Decision

Appeals allowed; the High Court and Appellate Board orders were set aside and the Deputy Registrar's registration restored, excluding milk and milk products.

Keywords

Classification Deceptive Similarity Dissimilar Goods Honest Concurrent Use Well-known Trade Mark