TMI Blog2018 (7) TMI 2176X X X X Extracts X X X X X X X X Extracts X X X X ..... ncerned 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, subjec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d 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 (for short, 'IPAB'), Chennai 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 dated 4th October, 2011 and the writ petitions filed by the Appellant there against have been dismissed by the High Court vide impugned order dated 2nd December, 2014, thereby confirming the order of the IPAB and, in the process, accepting the plea of the Respondent therein. 3. Before we proceed further, it is pertinent to mention at this stage that the milk and milk products, which are sold by the Respondent under the trade mark of 'NANDINI', fall under Class 29 and Class 30 as per classification under Schedule IV to the Trade Marks Rules, 2002. On the other hand, various kinds of foodstuffs sold by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed as many as six branches (particulars whereof were given) all over Bangalore by using trade mark 'NANDHINI' since 1989. The Appellant had also obtained registration of copyright of 'NANDHINI' under Copyright Act, 1957. It was further argued that since the artistic work, design and getup adopted by the Appellant was totally different, there was no question of any deception or confusion arising in the mind of public. Moreover, the class of purchasers/customers of both the trade marks was entirely different. The Deputy Registrar noted that the issues involved in these proceedings were based on Sections 1 9, 11 and 18 of the Act. As per Section 9, the generic words cannot be registered as trade mark unless they have acquired distinctiveness and are associated with the persons/company using the said mark. The case set up by the Appellant was that its mark was distinctive one and was its trading style as well. It was also argued that trade mark 'NANDHINI' is not an invented word and, therefore, there was no question of copying trade mark of the Respondent. The word 'NANDHINI' represents the name of goddess and a cow in Hindu Mythology. The trade mark &# ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... icants have filed documents in support of application. In these circumstance, the applicants are having definite claim to the proprietorship of the mark applied for. Hence the Applicants are the proprietors of the mark as claimed for under the provisions of Section 18(1) of the Act. On carefully considered the arguments advanced by both the counsel and materials available on the record and the evidence adduced by the concerned parties, in the interest of justice and purity of the Register since the Applicants are not using milk and milk products in class-29 whereas the Opponents have proved that they are the famous Dairy products producers and the evidence produced by the Opponents also reveals that they are using the mark for Milk and Milk products only. Therefore, the applicants are directed to delete the goods Milk and Milk products from the specification of goods by way of filing a request on from TM-16 to delete the same and after deletion of the goods, the same should be notified in the Trade Marks Journal. It is significant to note that both Applicant and Opponent are carrying business in Bangalore. While the Applicant claims to be suing the trade mark NANDHINI since ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... res only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. 12. If registration has been given generally in respect of all the articles under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other Article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific Article or articles which really concerns the trader or manufacturer enjoying the registration made in his favour. 13. The IPAB noted that in the instant case, the Respondent is dealing with milk and milk products whereas the Appellant is dealing with the other products like meat and fish etc. from which dishes are prepared in its restaurants and served to the customers. It took ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cured copyright registration as early as in the year 1984 and 1985. 15. In the opinion of IPAB, the Appellant is running a restaurant which would come under Class 42 with which the Board was not concerned. Therefore, the fact that Respondent had not raised any objection to Appellant's mark for 18 years was of no relevance. It also noted that insofar as this trade mark 'NANDINI' used by the Respondent is concerned, it has acquired distinctiveness. It further held that since milk and milk products fall under Classes 29 and 30 and the goods registered in the name of the Appellant also fall in the same class, the average consumer would conclude that goods manufactured by the Appellant belonged to the Respondent and, therefore, there is likelihood of confusion. Further, the Respondent was using the trade mark prior to the Appellant in the same class of goods and, therefore, registration of the Appellant's mark could not be permitted. We would like to reproduce the following discussion as that captures the entire essence of the reasoning given by the IPAB in support of its conclusion: 14. So each case has to be decided on the basis of the facts on hand. With rega ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... public if allowed to be registered for the commodities falling in the same class; (c) argument of the Appellant herein 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. 17. As stated in the beginning, very detailed arguments are advanced by counsel for both the parties. The precise nature of the arguments of the parties is as follows: 18. Mr. Sushant Singh, learned Counsel appearing for the Appellant, advanced the following propositions, while laying attack to the orders of IPAB as well as the High Court: (i) In the first instance, he submitted that both the High Court of Karnataka as well as IPAB grossly erred in law in interpreting the provisions of Section 11 of the Act to mean that once a trademark has acquired a distinctive character, then the registration of the trade mark is barred and is likely to cause confusion if it is allowed to be registered in the commodities within the same class. His res ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... I do not think it is legitimate to elide the question in this way. The Sub-section does not merely ask will there be confusion? : it asks is there similarity of goods? , if so, is there a likelihood of confusion? The point is important. For if one elides the two questions than a strong mark would get protection for a greater range of goods than a weak mark. For instance Kodak for socks or bicycles might well cause confusion, yet these goods are plainly dissimilar from films or cameras. I think the question of similarity of goods is wholly independent of the particular mark the subject of registration or the Defendant's sign. (c) London Rubber Co. Ltd. v. Durex Products Incorporated and Anr. MANU/SC/0134/1963 : (1964) 2 SCR 211: 8. The provisions of Sections 8 and 10 of the Act are enabling provisions in the sense that it is not obligatory upon a proprietor of a mark to apply for its registration so as to be able to use it. But when a proprietor of a mark, in order to obtain the benefit of the provisions of the Trade Marks Act, such as a legally protected right to use it, applies for registration of his mark he must satisfy the Registrar that it does not offend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s, though the language of Section 8(a) is slightly different from that of Section 11 of the English Act and that of Section 10(1) from that of Section 12(1) of the English Act, we see no reason for holding that the provisions of Section 8(a) would not apply where a mark identical with or resembling that sought to be registered is already on the register. The language of Section 8(a) is wide and though upon giving full effect to that language the provisions of Section 10(1) would, in some respects, overlap those of Section 8(a), there can be no justification for not giving full effect to the language used by the legislature. (ii) He also argued that even if it is assumed that Section 9(2)(a) is distinct from Section 11(1), insofar as enquiry likelihood of confusion and deception is concerned, it was supposed to be undertaken by applying well settled factors and variables which are stipulated in a series of judgments. He referred to Polaroid Corporation v. Polarad Electronics Corporation 182 F. Supp. 350 (1960), Shree Nath Heritage Liquor Pvt. Ltd. and Ors. v. Allied Blender and Distillers Pvt. Ltd. (2015) 221 DLT 359 and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... applicable. (vi) Advancing the aforesaid line of argument, his another submission was that Section 12 is an inbuilt scheme which allows the Registrar to register same or similar trademark in respect of same or similar goods. More so, when the name NANDHINI is a common name of the deity and common name of Hindu girl to which IPAB agrees. In this context, he also referred to the order passed by the Registrar wherein concurrent user of both the Appellant and the Respondent was accepted and submitted that there was no reason to upset the said finding. (vii) Mr. Sushant Singh further argued that since the Respondent was in the business of manufacture and marketing of milk and milk products only, and had admittedly not expanded its business to any other items in Class 29 or 30, the case of the Respondent at the highest could be qua milk and milk products only. He submitted that the Appellant was ready to give concession by not claiming any registration or trademarks which fell in the category of milk and milk products. In this behalf, he submitted the list of goods which the Appellant was ready to delete from its application for registration and the goods in respect of which the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent's trademark is associated with the Respondent organisation and that it has acquired distinctiveness in Paras 9 and 14 of the IPAB order. These findings of fact cover the essentials to be considered as a 'well-known' trademark and a household name. The High Court has affirmed the correct findings of the IPAB. He asserted that the Respondent's trademark NANDHINI is a household name in the entire South India, and more so in Karnataka. NANDHINI is to Karnataka what Amul is to Gujarat. Therefore, there can be no doubt as to NANDHINI being a well-known mark. It is important to note that the Appellant is running Restaurants only in the city of Bangalore in Karnataka and one town in Tamil Nadu. Outside the city of Bangalore, the public are not aware of the Respondent's restaurant and NANDHINI all over Karnataka is related exclusively to the Respondent organisation. 20. Insofar as argument of the Appellant that NANDHINI is the name of a God/Deity and, therefore, cannot be registered as Trademark, reply of the learned senior Counsel was that this argument is counterproductive and against the Appellant's own interest. He submitted that the prevailing ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion in India, and (c) The use of the mark in question must be without due cause, and (d) Such use must take unfair advantage of or be detrimental to the distinctive character or repute of the registered trademark. 22. In this hue, another submission of the learned senior Counsel for the Respondent was that the Appellant's contention regarding honest and concurrent user was untenable for the following reasons: (a) The question of the Court/Registrar taking into consideration the provisions of Section 12 of the Act, which provides for registration in the case of honest and concurrent user does not arise as the very basis for the application of this Section is the honesty of the concurrent use. The Appellant was well-aware of the widespread use of the mark Nandhini by the Respondent and has admitted that they were purchasing Nandhini milk for their restaurant. Therefore, the Appellant cannot claim to be an honest or concurrent user, as such claims would be contrary to the evidence placed on record and their own admissions. (b) Section 12 of the Act relates to identical or similar goods or services. The Appellant is not in the business of selling milk or milk prod ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... espondent or it needs to be interdicted as submitted by the Appellant, some of the relevant facts about which there is no dispute, need to be recapitulated. These are as follows: (A) Respondent started using trade mark in respect of its products, namely, milk and milk products in the year 1985. As against that, the Appellant adopted trade mark 'NANDHINI' in respect of its goods in the year 1989. (B) Though, the Respondent is a prior user, the Appellant also had been using this trade mark 'NANDHINI' for 12-13 years before it applied for registration of these trade marks in respect of its products. (C) The goods of the Appellant as well as Respondent fall under the same Classes 29 and 30. Notwithstanding the same, the goods of the Appellant are different from that of the Respondent. Whereas the Respondent is producing and selling only milk and milk products the goods of the Appellant are fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc. and it has given up its claim qua milk and milk products. (D) Insofar as application for registration of the milk and milk ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... order dated 20th April, 2010 of IPAB approached the subject matter in correct perspective. The test laid down in Polaroid Corporation v. Polarad Electronics Corporation 287 F.2d 492 (1961) is as follows: The problem of determining how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it, has long been vexing and does not become easier of solution with the years. Neither of our recent decisions so heavily relied upon by the parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 2 Cir., 1960, 281 F.2d 755, by Plaintiff, and Avon Shoe Co., Inc. v. David Crystal, Inc., 2 Cir., MANU/FESC/0067/1960 : 1960, 279 F.2d 607 by Defendant, affords much assistance, since in the Ritchie case there was confusion as to the identical product and the Defendant in the Avon case had adopted its mark without knowledge of the Plaintiffs' prior use, at page 611. Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s that of the Respondent. 29. One other significant factor which is lost sight of by the IPAB as well as the High Court is 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. 30. Having arrived at the aforesaid conclusion, 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 fav ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration Under Section 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that Under Sub-section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. 32. The aforesaid discussion leads us to hold that all the ingredients laid down in Section 11(2) of the Act, as explained by the Delhi High Court in Nestle India Ltd., have not been satisfied. 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 ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. (2) A mark shall not be registered as a trade mark if-- (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or Section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950). (3) A mark shall not be registered as a trade mark if it consists exclusively of-- (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. Explanation.--For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration. Section 11 Relative grounds fo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including-- (I) the knowledge or recognition of that trade mark in the relevant Section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. (7) The Registrar shall, while determining as to whether a trade mark is k ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gistration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services. (3) Every application Under Sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate: Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate. (4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. (5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for ..... X X X X Extracts X X X X X X X X Extracts X X X X
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