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2018 (7) TMI 2176 - SC - Indian LawsRegistration of the mark NANDHINI in respect of the goods in which it is dealt with(milk and milk products) - infringement of rights of the Respondent or not? - similar trade mark in respect of different goods and different time periods involved - deception and confusion in the minds of the users that the goods in which the Appellant is trading in fact are the goods which belong to the Respondent - 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 . HELD THAT - 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. We are 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. We also hold that 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. It is to be kept in mind that 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 subject to the modification that registration will not be given in respect of those milk and milk products for which the Appellant has abandoned its claim.
Issues Involved:
1. Deceptive similarity and likelihood of confusion between the trademarks 'NANDINI' and 'NANDHINI'. 2. Distinctiveness and well-known status of the trademark 'NANDINI'. 3. Honest concurrent use and the right to register the trademark 'NANDHINI'. 4. Applicability of Sections 9, 11, and 18 of the Trade Marks Act, 1999. 5. The scope of registration under the same class of goods. Issue-wise Analysis: 1. Deceptive Similarity and Likelihood of Confusion: The primary issue was whether the trademark 'NANDHINI' used by the Appellant was deceptively similar to 'NANDINI' used by the Respondent, likely to deceive the public or cause confusion. The Respondent, a Cooperative Federation of Milk Producers, had been using 'NANDINI' since 1985 for milk and milk products. The Appellant, running a restaurant business, adopted 'NANDHINI' in 1989. The Deputy Registrar initially allowed the registration of 'NANDHINI' except for milk and milk products, noting that the goods were different despite falling under the same classes (29 and 30). The Intellectual Property Appellate Board (IPAB) later reversed this, citing the likelihood of confusion due to phonetic similarity, which the High Court upheld. However, the Supreme Court found that the visual appearance and nature of the goods were sufficiently different to avoid confusion, emphasizing that an average consumer would not associate the Appellant's goods with the Respondent's. 2. Distinctiveness and Well-Known Status of 'NANDINI': The Respondent claimed that 'NANDINI' had acquired a distinctive character and was well-known, particularly in Karnataka. The IPAB and High Court accepted this, noting extensive use and advertising of 'NANDINI' for milk products. The Supreme Court, however, questioned the evidence supporting the well-known status, especially by 1989 when the Appellant began using 'NANDHINI'. The Court highlighted that 'NANDINI' is a generic term, representing a goddess and a cow in Hindu mythology, not an invented word by the Respondent. 3. Honest Concurrent Use and Registration Rights: The Appellant argued for honest concurrent use, having used 'NANDHINI' since 1989 without objection from the Respondent. The Deputy Registrar had recognized this concurrent use, but the IPAB and High Court did not. The Supreme Court supported the Appellant's claim, noting the lack of evidence that the Respondent's mark had acquired distinctiveness by 1989 and the different nature of the businesses. 4. Applicability of Sections 9, 11, and 18 of the Trade Marks Act, 1999: The Deputy Registrar and IPAB initially dealt with objections under Sections 9, 11, and 18. Section 9 addresses the distinctiveness of a trademark, Section 11 concerns the likelihood of confusion, and Section 18 pertains to the right to registration. The Supreme Court found that the Appellant's mark did not violate these sections, emphasizing the different nature of the goods and the honest concurrent use by the Appellant. 5. Scope of Registration Under the Same Class: The Supreme Court addressed the broader issue of whether a trademark owner could monopolize an entire class of goods. The Court referred to the principle that registration should not extend to goods not intended to be traded by the trademark owner, as established in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. The Court concluded that the Respondent could not prevent the Appellant from registering 'NANDHINI' for goods other than milk and milk products, even if they fall under the same class. Conclusion: The Supreme Court set aside the orders of the IPAB and High Court, restoring the Deputy Registrar's decision to grant registration to the Appellant for 'NANDHINI', except for milk and milk products. The Court emphasized the different nature of the goods, the lack of deceptive similarity, and the honest concurrent use by the Appellant. This decision underscores the importance of evaluating the specific goods and services associated with a trademark and prevents monopolization of an entire class by a single trademark owner.
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