The case of Nandhini Deluxe v Karnataka Co-Operative Milk Producer Federation Pvt. Ltd.(KCMPF)-(Civil Appeal 2943 of 2018) is a landmark judgment that dealt with the issue of registration of deceptively similar Trademarks. In the present case, Nandhini Deluxe, herein the appellant, was a company indulged in the business of running a restaurant which was established in the year 1989, in the name and style of ‘Nandhini’. The respondent company was a which had registered Trademark ‘Nandini’ under Class 29 and 30. The business of the respondent company was to provide milk and milk products in and around Karnataka. Established in 1985, the business had gained great popularity and goodwill in the state of Karnataka.
Facts of the Case:
Nandhini Deluxe applied for Trademark registration of its wordmark ‘Nandhini’ under class 29 for products such as meat, fish, poultry, preserves, eggs, edible oils, etc around thirteen years after being in the business. The respondent company (KCMPF) objected to the same, stating that the mark is deceptively similar to their mark ‘Nandini’ and hence, is likely to cause confusion in the public at large, further adding that they have gained immense name and status amongst the public for its products and thus, any other food items sold under the same mark, would lead the public to believe that they are being sold by the respondent company. The Deputy Registrar not taking such objections into consideration allowed the trademark registration in favor of Nandhini Deluxe.
The respondent company then filed an appeal with the Intellectual Property Appellate Board (IPAB) in 2011, who, after hearing the parties, rejected the appellant’s Trademark application on the ground that the KCMPF had gained a good name and distinctiveness in the public eye for their milk and milk products. The Appellate Board further noted that the appellant company was applying under the same Classes of the Trademark as the respondent company, which are classes 29 and 30, and hence, is likely to cause confusion in the mind of the public as the only difference in the marks was the letter ‘h’. The same was upheld by the High Court of Karnataka in a writ petition filed by the appellant company against the order of the IPAB. Aggrieved by the decision of the High Court, the appellant company finally approached the Supreme Court.
The main issue identified by the Apex Court, in this case, was “whether two companies having distinct and different products and services from one another could use comparable or similar Trademarks?”
Both sides arguments at the Supreme Court:
At the Supreme Court, the appellant asserted that the previous decisions did not take into consideration the fact that the products sold by both the parties are entirely different and in no way are they similar. It was further argued that the respondent company has no intention to expand the business out of the business of milk and milk products, hence they ought to be registered.
The Respondents herein contended that the previous authorities were correct in their decision of rejecting the application and that the appellant company has no right to use their Trademark.
The Supreme Court bench comprising of Justice A.K Sikri and Justice Ashok Bhushan held that the marks of both the companies cannot be claimed to be deceptively similar and do not amount to confusion among the general public, as there are only phonetic similarities as far as the words are concerned but the Trademark with logo adopted by the two parties are completely different. The Apex Court further held that a bare perusal of the two Trademarks along with their logos would show that there is hardly any similarity in both of the marks at all. The Court observed in its judgment that the word, “Nandhini/Nandini” is a generic name, representing a goddess and a cow in Hindu mythology and is not invented by either of the parties. The Supreme Court, lastly held that no person or company has the exclusive right to monopolize an entire class of goods, especially when the said trademark is not being used with respect to all the goods under that class. This judgment turned out to be a huge relief and bonus for trademark owners in similar situations having similar trademarks for completely different goods, under the same class.