INTELLECTUAL PROPERTY LAW – VIIITH SEMESTER END TERM

Nandhini Deluxe v. Karnataka Co-

Operative Milk Producers Federation
Ltd.

Submitted by – Submitted to –
Poranjay Saxena Prof. Ghayur Alam
2017B.A.LL.B.18 Professor
 ACKNOWLEDGEMENT

I take this opportunity to express a deep sense of gratitude to The National Law
Institute University (NLIU) for providing me with this excellent opportunity to make this
project.
I extend my sincere thanks to everybody who helped with the completion of this
project. I am greatly obliged to our teacher , Prof. Ghayur Alam
for his exemplary guidance, monitoring and constant encouragement throughout the
course of this project. The blessing, help and guidance given by her from time to time shall
carry us a long way in the journey of life on which we are about to embark.
Further, I would like to thank my vice-chancellor Prof. (Dr.) V. Vijayakumar who
gave me the golden opportunity to do this wonderful case analysis.
Finally, I would like to thank my seniors and friends for their support.
 TABLE OF CONTENTS

Acknowledgement 2

Table of Contents 3

1.1. Background 5

Case Name 5

Case Citation 5

Background 5

Main Subject Matter 5

What Led To The Case 5

Why The Appeal 5

1.2. Bar and Bench 7

Size of Bench 7

Name of Judges 7

Judge Who Delivered Judgement 7

Name of Advocates 7

Intervenors/Amicus 7

1.3. Material Facts 8

1.4. Issues 9

1.5. Pleadings 10

Appellant 10

Respondents 11

1.6. The Law 12

Provisions 12

Theories 12

1.7. References and Precedents 14

Book, Article or Literature 14

Judicial Pronouncements 14

1.8. Judgement 17

Concrete Judgement (Judgement in Personam) 17

Ratio Decidendi (Judgement in Rem) 17

1.9. Conclusion 19

Bibliography 20
 1.1 BACKGROUND

CASE NAME : Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd.

CASE CITATION : AIR 2018 SC 3516

BACKGROUND

In the year 1970 one of the biggest dairy products programme had been held by National
Dairy Development Board by the name operation Flood. With a span of 20 years, by the time
1990s India went on to become largest producer of milk crossing over the United States.
The main object of the Operation flood (OF) was to make the Indian Dairy farmers self
reliant and self sufficient. But the same could not have been done by the farmers alone,
therefore the operation flood intended to set up cooperative dairy federations across the PAN
India in various parts, in such federations the production line of milk and mil products would
be under the control of Farmers thereby making them self reliant to an extent.

During the time of White Revolution certain federations spawned such as Amul, Mother
Dairy and Nandini. The latter one has its presence in the state of Karnataka and mainly
southern India. This federation got rolled up in the complex trademark infringement suit that
was recently decided by the Apex Court.

The same mark was at squabble and loggerheads with the other trademark under the same
class of 29 and 30 but dealing in different types of goods. The Supreme Court allowed the
mark to play in the market field as being a concurrent user yet at same time holding that the
other mark has not been used for a long period of time to become well-known mark.

WHAT LED TO THE CASE

Karnataka Cooperative Milk Producers Federation (KCMPF) since 1985 had been using a
Trademark named “ Nandini” for the milk and milk products. They were registered under
Class 29 and 30. Similarly, a restaurant named “Nadhini Dekuxe” established in 1989
operating in the Bangalore city of Karnataka State. The restaurant had been using its mark for
past 12-13 years, before it has applied under class 29 and 30 for the registration of
Trademark. After getting to know about it by the former (KCMPF), they objected to it and
filed objections to it but the same were dismissed and the Restaurant was granted its
Trademark in 2007. Aggrieved by which the KCMPF preferred an appeal, before the forum-
Intellectual Property Appellate Board (IPAB).

The same had been dismissed by the the Appellate Board in 2010 partly and granted partly
allowed in favour of restaurant by grant of trademark but with a rider that it shall exclude
milk and milk products from the catalogue. Assenting to the order, the KCMPF filed affidavit
as regards the deleting of milk and milk products.

Surprisingly, there had been conflict of decision as the KCMPF had filed another bench of
Intellectual Property Appellate Board (IPAB), which passed an order on different terms than
the other coordinate bench, by rejecting the restaurant’s trademark registration on the reason
that KCMPF had been using mark over a long period of time and has established
distinctiveness in the market. IPAB has opined that since the milk and milk products are
under 29 and 30 class, whereas the Appellant’s goods are also registered in the same class,
that might create confusion amongst the consumers which cannot be ruled out.

On preferring an appeal by the restaurant before the High Court, the court by ruling in
KCMPF favour had uphold the 2011 order of IPAB. The court based its reasons, inter-alia, on
the ground that though the good of both are parties are different but they fall under the same
class of 29 and 30, therefore in order to prevent confusion in the minds of consumer, court
opined that it would be impermissible to grant trademark in favour of Restaurant. Feeling
aggrieved by the decision of High Court the Restaurant appealed before the Supreme court,
which reversed the High Court’s order as the well as the 2011 order of IPAB, put the thing to
status quo ante as was held by 2010 order of IPAB, wherein the IPAB ruled to grant of
trademark but subject to deletion of “milk and milk products” from the catalogue.
 1.2 BAR AND BENCH

SIZE OF BENCH
Division Bench
NAME OF JUDGES
Justice A Bhushan,
Justice A Sikri
JUDGE WHO DELIVERED JUDGEMENT
Justice A Sikri
NAME OF ADVOCATES
On behalf of the Appellant: Mr. S. K. Bagaria
On behalf of the Respondents: Mr. S.S. Sushant Singh
INTERVENORS/AMICUS
Not applicable.
 1.3 MATERIAL FACTS

1985  Karnataka, adopted the aforesaid mark ‘NANDINI’ in

the year 1985 and under this brand name it has been
producing and selling milk and milk products. It has got
registration of this mark as well under Class 29 and
Class 30.
1989  The appellant is in the business of running restaurants
and it adopted the mark ‘NANDHINI’ for its restaurants
in the year 1989 and applied for registration of the said
mark in respect of various foodstuff items sold by it in
its restaurants.
th
13 August 2007 The respondent had opposed the registration and the
objections of the respondent were dismissed by the
Deputy Registrar of the Trade Mark who passed orders
dated August 13, 2007 allowing the registration of the
said mark in favour of the appellant..
 1.4 ISSUES

The question that was raised before the Supreme Court were pure questions of law, namely-

Whether similar Trademarks can be used by two different companies for un-identical
and different products?

1.5 PLEADINGS

APPELLANT

It has been argued by the Appellant that since the goods and services rendered by both the
parties are different from each other though under same class, therefore the likelihood fo
confusion and deception is a far-fetched idea.
The Appellant has placed reliance on the case of Vishnudas Company vs. Vazir Sultan
Tobacco Company Limited (1997) 4 SCC 201, wherein the Apex court had opined that
monopoly which could be exercised by the use of trademark only extends to the goods which
under particular class and not all over the goods of the entire class. And the trademark under
same class could be registered by two persons if the goods and services renderer are different.
Grant of trademark to the proprietor would give him absolute monopoly and thus thereby
leading to trafficking in the Trademark which was not the semantics and the purpose behind
the enactment of the Trademarks Act, 1999 (“The Act”).

Appellant has urged that the finding that the trademark Nandini of the Respondent is well
known and distinctive is sans any supporting evidence thus could not be relied upon. The
Appellant contended that to adjudge the trademark as well known there are certain
parameters that are to be tested, but however the Karnataka High Court and IPAB have lost
sight of such parameters.
It had been contended on the behalf of the Appellant that the Respondent dealt only in respect
of few products under class 29 and 30 which are manufacturing and marketing of milk and
milk products., whereas the Appellant had not claimed trademark for any milk or milk
products items, therefore the registration of trademark “NANDHINI”, as per Respondent,
should be ruled in his favour.

RESPONDENTS

The Respondent while arguing had put reliance in the Judgment of Karnataka High Court and
order of the Intellectual Property Appellate Tribunal, which had held that the word “Nandini”
has acquired distinctiveness and there the iota of the doubt that if the products of the
Appellant which are also under class 29 and 30, if come to the market the doubt and
confusion in the minds of average consumer would definitely arise that if belonged to the
Respondent.

Even though the name Nandini is a Hindu Goddess name but it has become associated with
the products of the Respondent for nearly 20 years. The mandate of the Section 11 clause 8 is
that “if any court or registrar has found that a trademark is well-known in at least one
relevant section of the public in India, it shall be a well-known trademark for purposes of the
Act.”

Therefore as per the Respondent- that the Karnataka High Court and the IPAB which have
opined that the mark “Nandini” is a well known mark. Putting counterproductive attack on
the contention of the Appellant that Nandini is a name of a deity therefore it cannot be used,
Respondent has alleged that such a allegation and contention would be counterproductive to
the Appellant’s own Trademark. If such a contention is to be taken at the face value then the
result would be that the registration of Appellant’s trademark would be rendered futile.

INTERVENERS AND AMICUS CURIAE

Not applicable.
 1.6 THE LAW

Section 11(2) in The Trade Marks Act, 1999

“(2) A trade mark which—

(a)  is identical with or similar to an earlier trade mark; and
(b)  is to be registered for goods or services which are not similar to
those for which the earlier trade mark is registered in the name of a
different proprietor, shall not be registered, if or to the extent, the
earlier trade mark is a well-known trade mark in India and the use of
the later mark without due cause would take unfair advantage of or
be detrimental to the distinctive character or repute of the earlier
trade mark.”

1.7 REFERENCES AND PRECEDENTS

 BOOK, ARTICLE OR LITERATURE referred to: Not applicable.

JUDICIAL PRONOUNCEMENT

Nestle India Limited v. Mood Hospitality Private Limited [(2010) 42 PTC 514 (Del)]

The facts of this case are the Respondent (Mood Hospitality ) had been using “Yo!” mark in
its products, which according to them have been mark of distinctiveness and the word “Yo!”
has acquired a meaning. Thus, owing to it the Respondent had asked for and claimed
exclusive rights to use the word. The main squabble for Respondent was that the Appellant
was using the “Yo!” word for manufacturing, marketing, noodles (chowmein) under the name
and product “cup a mania” by referring to its flavours as "Masala Yo!" and "Chilly Chow
Yo!".
It is the case of Appellant that the word “YO!” is a populous exclamation and slang in the
trade business, and is also a generic term.

Thus, thereby it could not pass the test of distinctiveness or well known which is the
condition precedent and mandate of the Section 29(4) of the Act. It has been alleged on the
behalf of the Appellant that the terming using of the word as infringement would be an
afterthought as the word has been used suffixed-ly to the masala names, and thus the fear of
creating confusion or deception is ruled out. Moreover, the Appellant’s products as well as
the packaging were in no way similar to that of the Respondent.

After hearing the respective contention of the parties, the Court opined that the expression
“Yo!” had been used by the Appellant against the flavours "Masala" and "Chilly Chow"
which describes the product of the Appellant ‘cap a mania’. The Appellant has nowhere used
the expression is a way that would deceive or tend to deceive the minds of the people.
Moreover the word has not been used in secluded manner. Such usage of the expression
could at the most be termed as flavour descriptor, and not trademark infringement.

1.8 JUDGEMENT
1. Approach of the court

The Apex Court started the proceedings for deciding the main issue, that it was called upon to
decide, is whether the Registration of the Plaintiff’s mark be allowed, as contention of
Respondent is that the Plaintiff by getting it registered wants to ride on the back of
Respondent’s goodwill.
The Court of law analysed three critical differences between the Appellants and Respondents,
in order to decide the issue- firstly, while the class under which goods of the parties fell was
same although the goods sold and services rendered were different.
In order to answer this question, the Court first pointed out 3 critical differences between the
Appellant and Respondent’s marks. First, while the classes into which the goods of the
parties fell were the same, the goods themselves were different. This difference is further
fortified by the fact that the Respondent is involved in the business of selling milk products
while on the other hand Appellant is into the business of running the restaurant.

Secondly, the term used for the mark “NANDINI” was not something that could be attributed
as Respondent’s ingenuity rather it is generic name of Hindu Goddess.
Finally, and very crucially, there were many differences between the marks of the rival
parties namely: (a) difference in manner of writing the name; (b) addition of the word
‘Deluxe’ and the tagline ‘the Real Spice of Life’ to the Appellant’s mark; and (c) the fact that
a lamp is depicted in the Appellant’s logo whereas the Respondent’s logo consists of a
picture of a cow, below which the word ‘NANDINI’ is written and the whole logo is
encapsulated in an egg-shaped circle.
The Court then proceeded to apply the principle that has been laid down in the case of
National Sewing Co, 1953 judgment  in which it has been held that such kinds of dispute mist
be resolved by standards and the marks from the perspective of the person of ordinary
prudence and intelligence. Holding that the three differences, mentioned above make the
marks significantly different, the Court opined that there is no basis to conclude that there
exists a possibility of confusion.
To buttress and corroborate its conclusion, that the goods sold by the parties are of a
significantly of different character, the Court observed that the several products sold by the
Appellant fall into classes other than 29 and 30. Further, it relied on its own judgment in the
case of Vishnudas Trading, 1996, which is an authority for the proposition that registration of
a mark qua goods belonging to a particular class does not give the proprietor of the mark
monopoly over all goods falling within that class, especially when the mark has not been used
or has not been registered with respect to the other goods and services under the same class.

2. Observations of the court

● Not deceptively similar

The Division bench of Justice AK Sikri and Justice Ashok Bhushan analysed the trademarks
of both the parties and had held that they are not phonetically similar neither are deceptive.
The Bench held that “though there is a phonetic similarity insofar as the words
NANDHINI/NANDINI are concerned, the trademark with logo adopted by the two parties is
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 mark with that of
the respondent when these marks are seen in totality.”

● Cannot enjoy monopoly over the entire class of goods

The court further observed 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.”

The bench again observed that the proprietor of the Trademark cannot exercise monopoly
over the entire, especially when he is dealing on certain products and with respect to the other
products under the same class; he does not use the mark nor it is registered for it. It would be
pertinent here in mention Section 11 of the Act which impedes and prohibits the registration
of the trademark for similar goods.
 1.9 CONCLUSION

The Apex Court has yet again reiterated that there cannot be enjoyment of monopoly by a
proprietor over entire class of the goods, especially when he has not made use of such
Trademark or has not registered it in respect of all the goods within the entire class. However,
such principle comes with a subjection rider that includes duration of time period in adoption
of rival trademark, the good will and the reputation of the Plaintiff’s mark on the relevant
date of adoption by the adverse party, and distinctiveness and uniqueness of Plaintiff’s
trademark.
.
The Judgement’s Impact on Businesses

This judgment could either be a positive sign or might have negative impact for some
business, depending upon how the trademark has been poised. If any trademark for a business
faces objection from the registered trademark, but for the other types of goods then this
judgment could be resorted to provided the fulfilment of some condition precedents namely,
distinctiveness and uniqueness, trade circles etc. Any registered trademark cannot cast
opposition to the other trademark seeking registration, on the sole reason that both play in
same field or class of business.

The similarity of words of the Trademark could no longer be a ground for proving the
infringement. If a mark is registered for one class for some goods then that cannot be
impediment for others to get registration just because they fall under same class but for
different goods/services.

In the case of Cipla Limited vs Cipla Industries Pvt Ltd, the Full Bench of Bombay High
Court has opined that “mere use of a well-known mark as a part of a corporate name in
respect of a business relating to goods/ services for which the mark is not registered would
not constitute infringement.” [3]
In the case of Nandhini Deluxe, it has been held that nobody could claim monopoly and
exclusive rights over entire class of goods, more particularly when the mark is not used for
different set of goods under the same class. The decision clearly reads that two visually
distinct and different marks cannot be called deceptively similar, when they are being used
for different goods.

Reasons why the Judgement may set a precedent for future legal matters

Generally, it has been observed, that more often than not the registry does not accept the
phonetically similar trademarks of the same class. This Judgment comes as a silver lining to
all those traders and businessman who are engaged in similar business or different services
under the same class with the similar Trademark or phonetically similar as that of the rival,
who cannot claim or raise objection over the entire class when the mark is not registered with
respect to other goods.
 BIBLIOGRAPHY

[1] Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd.; AIR 2018

SC 3516

[2] National Sewing Thread Co. Ltd. v. James Chadwick and Bros., AIR 1953 SC 357

[3] Polaroid Corporation v. Polarad Electronic Corporation, 287 F. 2d 492 (1961)

[4] Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad

& Anr., 1996 SCALE (5) 267