# M/S. NANDHINI DELUXE v. M/S. KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD

- **Citation:** [2018] 11 S.C.R. 275
- **Court:** Supreme Court of India
- **Decided:** 2018-07-26
- **Case number:** Civil Appeal Nos. 2937-2942 of 2018
- **Bench:** A. K. Sikri, Ashok Bhushan
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/m-s-nandhini-deluxe-v-m-s-karnataka-co-operative-milk-producers-federation-ltd-32254
- **Pages:** 35

## Headnote

Trade Mark - Similar marks - Respondent, a cooperative
federation of the Milk producers of Karnataka adopted the mark
'NANDINI' in the year 1985 and under this brand name produced
and sold milk and milk products - On the other hand, appellant
was in the business of running restaurants and it adopted the mark
'NANDHINI' for its restaurants in the year 1989 - Appellant applied
for registration of the said mark in respect of various food products
including milk and milk products - Respondent opposed the
registration of the mark on the ground that it was deceptively similar
to its own mark and was likely to deceive the public or cause
confusion - Objections were rejected by the Deputy Registrar and
registration was granted to the appellant - Appeals of the respondent
were allowed by the IPAB - Writ petitions filed by the appellants
were dismissed - On appeal, held: 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 was 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 - Therefore, it was a
case of concurrent user of trade mark by the appellant -
Furthermore, Appellant had abandoned its claim for milk and milk
products - Therefore, the order of the Deputy Registrar granting
registration in favour of the appellant restored subject to
modification that registration would not be given in respect of those
milk and milk products for which appellant has abandoned its claim
- Trade Mark Rules, 2002 - Class 29 and Class 30 under
Schedule IV.
[2018] 11 S.C.R. 275
275
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SUPREME COURT REPORTS
[2018] 11 S.C.R.
Allowing the appeals, the Court
HELD: Whether the appellant is entitled to seek
registration of the mark 'NANDHINI' in respect of the goods in
which it is dealt with and whether such a registration in favour of
the appellant would infringe rights of the respondent.
1. In the instant case, not only visual appearance of the
two marks is different, they even relate to different products.
Further, the manner in which they are traded by the appellant
and respondent respectively, it is difficult to imagine that an
average man of ordinary intelligence would associate the goods
of the appellant as that of the respondent. [Para 28] [304-G-H]
2. 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 etc. which are used in the products/services of restaurant
business. The aforesaid items do not belong to Class 29 or 30 as
per classification under Schedule IV to the Trade Marks Rules,
2002. Likewise, stationery items used by the appellant in the aid
of its restaurant services are relatable to Class 16 of the Rules.
In these circumstances, there was hardly any question of confusion
or deception. [Para 29] [305-A-C]
3. 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 favour, would be meaningless. That apart, there is no such
principle of law. [Para 30] [305-C-D]
4. On the facts of this case, it is not convincing to suggest
that the appellant has adopted the trade mark to take unfair
advantage of the trade mark of the respondent. The use of mark
'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
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the ap

## Text

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M/S. NANDHINI DELUXE
v.
M/S. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.
(Civil Appeal Nos. 2937-2942 of 2018)
JULY 26, 2018
[A. K. SIKRI AND ASHOK BHUSHAN, JJ.]
Trade Mark - Similar marks - Respondent, a cooperative
federation of the Milk producers of Karnataka adopted the mark
'NANDINI' in the year 1985 and under this brand name produced
and sold milk and milk products - On the other hand, appellant
was in the business of running restaurants and it adopted the mark
'NANDHINI' for its restaurants in the year 1989 - Appellant applied
for registration of the said mark in respect of various food products
including milk and milk products - Respondent opposed the
registration of the mark on the ground that it was deceptively similar
to its own mark and was likely to deceive the public or cause
confusion - Objections were rejected by the Deputy Registrar and
registration was granted to the appellant - Appeals of the respondent
were allowed by the IPAB - Writ petitions filed by the appellants
were dismissed - On appeal, held: 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 was 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 - Therefore, it was a
case of concurrent user of trade mark by the appellant -
Furthermore, Appellant had abandoned its claim for milk and milk
products - Therefore, the order of the Deputy Registrar granting
registration in favour of the appellant restored subject to
modification that registration would not be given in respect of those
milk and milk products for which appellant has abandoned its claim
- Trade Mark Rules, 2002 - Class 29 and Class 30 under
Schedule IV.
[2018] 11 S.C.R. 275
275
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SUPREME COURT REPORTS
[2018] 11 S.C.R.
Allowing the appeals, the Court
HELD: Whether the appellant is entitled to seek
registration of the mark 'NANDHINI' in respect of the goods in
which it is dealt with and whether such a registration in favour of
the appellant would infringe rights of the respondent.
1. In the instant case, not only visual appearance of the
two marks is different, they even relate to different products.
Further, the manner in which they are traded by the appellant
and respondent respectively, it is difficult to imagine that an
average man of ordinary intelligence would associate the goods
of the appellant as that of the respondent. [Para 28] [304-G-H]
2. 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 etc. which are used in the products/services of restaurant
business. The aforesaid items do not belong to Class 29 or 30 as
per classification under Schedule IV to the Trade Marks Rules,
2002. Likewise, stationery items used by the appellant in the aid
of its restaurant services are relatable to Class 16 of the Rules.
In these circumstances, there was hardly any question of confusion
or deception. [Para 29] [305-A-C]
3. 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 favour, would be meaningless. That apart, there is no such
principle of law. [Para 30] [305-C-D]
4. On the facts of this case, it is not convincing to suggest
that the appellant has adopted the trade mark to take unfair
advantage of the trade mark of the respondent. The use of mark
'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
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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. [Para 32]
[308-C-E]
5. As a result, 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. [Para 34] [309-A-B]
Vishnudas Trading as Vishnudas Kushandas v. The Vazir
Sultan Tobacco Ltd. and Anr. 1996 (5) SCALE 267 :
[1996] 3 Suppl. SCR 329 ; Eco Lean Research and
Development A/S v. Intellectual Property Appellate
Board and The Asst. Registrar of Trade Marks, Trade
Mark Registry MANU/TN/3041/2011 ; London Rubber
Co. Ltd. v. Durex Products Incorporated & Anr. [1964]
2 SCR 211 ; Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd. (2001) 5 SCC 73 : [2001] 2 SCR
743 ; National Sewing Thread Co. Ltd. v. James
Chadwick and Bros. AIR 1953 SC 357 : [1953] SCR
1028 ; Bhanu Kumar Jain v. Archana Kumar and Anr.
(2005) 1 SCC 787 : [2004] 6 Suppl. SCR 1104 ;
Hope Plantations Ltd. v. Taluk Land Board, Peermade
and Another (1999) 5 SCC 590 : [1998] 2 Suppl. SCR
514 - referred to.
Polaroid Corporation v. Polarad Electronics
Corporation 182 F. Supp. 350 (1960) ; Shree Nath
Heritage Liquor Pvt. Ltd. & Ors. v. Allied Blender and
Distillers Pvt. Ltd. (2015) 221 DLT 359 ; Nestle India
Ltd. v. Mood Hospitality Pvt. Ltd. (2010) 42 PTC 514
(Del) (DB) ; British Sugar Plc v. James Robertson &
Sons Ltd. (1996) RPC 281 (CH) - referred to.
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.
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Case Law Reference
[1996] 3 Suppl. SCR 329 referred to
Para 11
[1964] 2 SCR 211
 referred to
Para 18
[2001] 2 SCR 743
 referred to
Para 18
[1953] SCR 1028
 referred to
Para 27
[2004] 6 Suppl. SCR 1104 referred to
Para 33
[1998] 2 Suppl. SCR 514 referred to
Para 33
CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 29372942 of 2018
From the Judgment and Order dated 02.12.2014 of the High Court
of Karnataka at Bengaluru in Writ Petition Nos. 37192-37193,
37194-37195 and 37203-37204 of 2013
WITH
Civil Appeal Nos. 2943-2944 of 2018.
Sushant Singh, Ms. Namita Choudhary, Manish Choudhary,
Harshul Choudhary, Ms. Kritika Khurana, Advs. for the Appellant.
Raghavendra S. Srivatsa, Saurabh Agarwal, Ms. Komal M.,
Pankaj Kumar Mishra, A. S. Bhasme, Advs. for the Respondent.
The Judgment of the Court was delivered by
A. K. SIKRI, J. 1. The judgment dated 2nd December, 2014
given by the High Court of Karnataka in writ petitions filed by the appellant
herein is the subject matter of detailed debate and arguments in the
present proceedings, because of the reason that the dispute in question
has evoked considerable controversy. The dispute pertains to the use of
mark 'NANDHINI'. The respondent herein, which is a Cooperative
Federation of the Milk Producers of Karnataka, adopted the aforesaid
mark 'NANDINI' in the year 1985 and under this brand name it has
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been producing and selling milk and milk products. It has got registration
of this mark as well under Class 29 and Class 30. The appellant herein,
on the other hand, 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. 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.
2. We may note at this stage itself that the mark used by the
appellant is objected to by the respondent on the ground that it is
deceptively similar to the mark of the respondent and is likely to deceive
the public or cause confusion. According to the respondent, the appellant
could not use the said mark which now belongs to the respondent
inasmuch as because of its long and sustained use by the respondent,
the mark 'NANDINI' is held to have acquired a distinctive character
and is well-known to the public which associates 'NANDINI' with the
respondent organization. Therefore, according to the respondent, it has
exclusive right to use the said 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 the appellant in its
restaurants also fall under Class 29 and 30 as well as other Classes.
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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5. Before we we proceed to state the arguments of the learned
counsel for appellant and rebuttal thereof by the respondent, it would be
necessary to have a brief discussion in respect of the orders passed by
the Deputy Registrar of Trade Marks, IPAB and the High Court.
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ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:
6. This order discloses that the appellant herein had moved the
applications for registration of trade mark 'NANDHINI DELUXE WITH
LOGO (Kannada)'' in respect of meat, fish, poultry and game, meat
extracts, preserved, dried and cooked fruits and vegetables, jellies, jams,
eggs, milk and milk products, edible oils and fats, salad dressings, preserves
and all other goods being included in Class 29. In the Opposition filed by
the respondent herein, it was, inter alia, stated that respondent was
manufacturer and dealer of milk and milk products, cattle feed and other
allied products which are the source of 'NANDINI' products. Trade
mark 'NANDINI' with device of the cow is being used by the respondent
extensively not only in the State of Karnataka but in other parts of country
as well. This trade mark was registered in the name of the respondent
which was used right from the year 1985. The trade mark sought to be
adopted by the appellant was confusingly and deceptively similar to the
respondent's trade mark. It was a clever move on the part of the appellant
who wanted to trade upon and benefit from the reputation and goodwill
acquired by the respondent for the last so many years and, therefore,
the appellant could not claim any proprietary rights in the impugned mark
under Section 18(1) of the Trade Marks Act, 1999 (hereinafter referred
to as the 'Act'). Registration was objected to under Sections 9,11,12
and 18 of the Act.
7. In the counter statement filed by the appellant to the aforesaid
objections, it was pleaded that the appellant had honestly conceived and
adopted the trade mark 'NANDHINI' in Kannada with a particular
artistic work, design and getup for running vegetarian and non-vegetarian
Andhra style restaurant. It had opened 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
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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were based on Sections1 9, 11 and 18 of the Act. As per Section 9, the
generic words cannot be registered as trade mark unless they have
1 S.9. Absolute grounds for refusal of registration.-(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in
trade to designate the kind, quality, quantity, intended purpose, values, geographical
origin or the time of production of the goods or rendering of the service or other
characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established practices of the
trade,
shall not be registered:
Provided 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.
S. 11 Relative grounds for refusal of registration.-(1) Save as provided in
section 12, a trade mark shall not be registered if, because of-
(a) its identity with an earlier trade mark and similarity of goods or services
covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the
goods or services covered by the trade mark, there exists a likelihood of confusion on
the part of the public, which includes the likelihood of association with the earlier trade
mark.
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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
(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.
(3) A trade mark shall not be registered if, or to the extent that, its use in India
is liable to be prevented
(a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark
where the proprietor of the earlier trade mark or other earlier right consents to the
registration, and in such case the Registrar may register the mark under special
circumstances under section 12. Explanation.-For the purposes of this section, earlier
trade mark means-
(a) a registered trade mark or convention application referred to in section
154 which has a date of application earlier than that of the trade mark in question,
taking account, where appropriate, of the priorities claimed in respect of the trade
marks;
(b) a trade mark which, on the date of the application for registration of the
trade mark in question, or where appropriate, of the priority claimed in respect of the
application, was entitled to protection as a well-known trade mark.
A trade mark shall not be refused registration on the grounds specified in subsections (2) and (3), unless objection on any one or more of those grounds is raised in
opposition proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a wellknown 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;
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that trade mark 'NANDHINI' is not an invented word and, therefore,
there was no question of copying trade mark of the respondent. The
(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
known or recognised in a relevant section of the public for the purposes of sub-section
(6), take into account-
(I) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the
goods or services;
(iii) the business circles dealing with the goods or services, to which that
trade mark applies.
(8) Where a trade mark has been determined to be well-known in at least one
relevant section of the public in India by any court or Registrar, the Registrar shall
consider that trade mark as a well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a
trade mark is a well-known trade mark, any of the following, namely:-
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in
India;
(iv) that the trade mark-
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any
jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.
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word 'NANDHINI' represents the name of goddess and a cow in Hindu
Mythology. The trade mark 'NANDHINI' is used by people from all
walks of life and it is also referred in puranas and Hindu mythological
stories. Large number of people worship NANDHINI as a goddess
and, therefore, the respondent cannot claim monopoly over the word
'NANDHINI'.
(10) While considering an application for registration of a trade mark and
opposition filed in respect thereof, the Registrar shall-
(i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the
opponent affecting the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been acquired through
use in good faith before the commencement of this Act, then, nothing in this Act shall
prejudice the validity of the registration of that trade mark or right to use that trade
mark on the ground that such trade mark is identical with or similar to a well-known
trade mark.
S. 18. Application for registration.- (1) Any person claiming to be the proprietor
of a trade mark used or proposed to be used by him, who is desirous of registering it,
shall apply in writing to the Registrar in the prescribed manner for the registration of
his trade mark.
(2) A single application may be made for registration 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 such refusal or conditional acceptance
and the materials used by him in arriving at his decision.
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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8. Taking note of the aforesaid submissions and virtually accepting
the same, the Deputy Registrar noted that since the appellant is using
the trade mark continuously from 1st April, 1989 which claim of the
appellant was supported by documentary proof, objection raised by the
respondent under Section 9 stood waived.
9. Coming to Section 11 of the Act which prohibits registration of
mark and the goods in which it is sought for registration is likely to deceive
or confuse, he noted that whereas respondent's mark is 'NANDINI'
per se, the appellant's mark is 'NANDHINI DELUXE WITH LOGO
(In Kannada). Moreover, respondent is using trade mark 'NANDINI'
in respect of dairy products, i.e., milk and milk products only. On the
other hand, the goods for which the registration was sought by the
appellant were altogether different, even though both fall in the same
Class, i.e., Class 29. Highlighting this factual difference of the nature of
goods in which the appellant and respondent are trading, the Deputy
Registrar was of the view that the respondent's objection under Section
11 was not tenable. While coming to this conclusion, he also took aid of
some judgments of the IPAB as well as different High Courts. In the
process, he also rejected the contention of the respondent that the trade
mark used by the appellant was a colourable imitation of the respondent's
trade mark which was well-known mark under Section 11(2) of the Act.
10. Dealing with the objections on the touchstone of Section 18 of
the Act, the Deputy Registrar came to a conclusion that the appellant is
the proprietor of the mark as claimed under Section 18(1) of the Act, but
restricted his entitlement for registration by holding that the appellant
would not be entitled to registration in respect of milk and milk products.
Relevant discussion in this behalf is reproduced below:
"The balance of convenience is in favour of the applicants. The
applicants are the extensive user of the mark since the year 1989.
the adoption of the mark by the Applicants is honest and
concurrent. To prove their claim, the applicants 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.
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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 1989, the Opponents have
been using the trade mark NANDINI prior to Applicant, the
artistic work, design and getup are totally different. While the
Applicant has been using the traded mark NANDHINI with a
lamp and written in a particular style, the Opponents are using
NANDINI with device of cow. The Opponent has not produced
any evidence to show that use of trade mark NANDHINI by
Applicant is causing confusion or deception. In view of
continuous user of the trade mark NANDHINI by Applicant, the
Applicant has deemed to have become proprietor of the trade
mark NANDHINI.
Lastly coming to the exercise of discretion of the Registrar vested
with him, the onus to prove the claim of proprietorship of the
mark is always on the Applicants. The Applicants have
successfully discharged their onus that they are the proprietors of
the mark NANDHINI DELUXE WITH LOGO (Kannada)
applied for registration. In order to safeguard the public interest
and to protect the intellectual and industrial property rights of the
Applicants who are honest adopters and bonafide users, the
applicant's trade mark is to be protected by granting registration
enabling the applicants to use their mark legally without any
hindrance, this authority has no other alternative except to allow
application and to grant registration of the impugned mark.
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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In view of the foregoing, it is ordered that the opposition No.
MAS-194405 is dismissed and application No. 982285 in
Class-29 shall proceed to registration subject to deleting the items
"Milk and Milk products" from the specification of goods by filing
a request on form TM-16 and the amended application should be
notified in the Trade Marks Journal."
ORDER DATED 20TH APRIL, 2010 OF THE IPAB :
11. The aforesaid order rejecting the opposition of the respondent
to the registration of trade mark 'NANDHINI' as sought by the appellant
and allowing appellant's application for registration, except for milk and
milk products, was challenged by the respondent by filing set of appeals.
One such appeal being OA/4/2008/TM/CH was decided by IPAB vide
its order 20th April, 2010. The IPAB referred to the judgment of this
Court in Vishnudas Trading as Vishnudas Kushandas vs. The Vazir
Sultan Tobacco Ltd. and Anr.2 and quoted the following passage
therefrom:-
"In our view if a trader or manufacturer actually trades in or
manufactures 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 note of
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certain principles that when a person trades or manufactures one good
under the broad classification having no bona fide intention to trade in all
other goods falling under that broad classification, he cannot be permitted
to enjoy monopoly in articles falling under such classification as held in
Vishnudas Trading as Vishnudas Kushandas2 . Therefore, in the instant
case, when the respondent has its limited business only in milk and milk
products with no intention to expand the business of trading in other
goods falling under Class 29 and the appellant was given registration in
other articles only, specifically excluding milk and milk products, there
was nothing wrong in according registration of those products in favour
of the appellant under the trade mark 'NANDHINI'. The IPAB also
observed that the respondent had failed to prove that by allowing such
registration in favour of the appellant, any confusion or deception would
ensue. On that reasoning, appeal of the respondent was dismissed. At
the same time, the appellant was asked to file a request on Form 16 to
delete the goods 'milk and milk products'
 The appellant filed the affidavit to this effect, as directed by IPAB
on 18th July, 2011.
ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :
14. Notwithstanding, order dated 20th April, 2018 passed by the
IPAB, insofar as other appeals of the respondent are concerned, the
events took a different turn as vide orders dated 4th October, 2011 appeals
of the respondent herein were allowed by the IPAB. It accepted the
case of the respondent that 'NANDINI' is a well-known trade mark
and a household name in the State of Karnataka and that it is the registered
trade mark of the respondent. The goods sold are milk and milk products
such as curd, butter, cheese, ghee, milk powder, flavoured milk, paneer,
khoya, ice cream and all milk based sweets. They are sold in bottles,
sachets, tetra packs, polythene containers etc. The device used by the
respondent is standing cow on a grass land having rising sun in the
background. The IPAB also took note of the statistics given by the
respondent in respect of sales turnover as well as advertisement and
sale promotion expenditure for the last 10 years. It had obtained several
registrations in respect of trade mark NANDINI and label forms in
Classes 29, 30, 31 and 32 and had also secured copyright registration as
early as in the year 1984 and 1985.
 NANDHINI DELUXE v. KARNATAKA CO-OPERATIVE MILK
PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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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 t he facts on
hand. With regard to the appellant's mark we find that one of the
documents which is the Kannada Weekly Sudha where it is stated
that "I am using NANDINI. You?" In Tharanga Kahhanda
Weekly, 'Nandini Ghee has a role in every moment of life
celebration" (translated from Kannada). These are pieces of
evidence to show that the word Nandini itself has become
associated with the appellant's products and therefore, though it
might be a Hindu name, or even a deity's name, it has come to be
recognized as a distinctive mark of the appellant by the appellant's
use of the same for nearly two decades. The conclusion of the
Registrar that it is not likely to confuse cannot be sustained. The
word is identical. The addition of a letter H by the respondent
cannot make a difference. Whether it is Nandini or Nandhini, it is
pronounced identically. And in Kannada there is no difference in
the spelling of the trademark of the appellant and that of the
respondent.
15. We have referred to the advertisement which says 'I am
using Nandini". It is clear that the consumer and the general
public who are the source of the goods 'when the word Nandini is
used. When that is so, we cannot permit the respondent to use
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the identical mark in relation to goods which are akin to the
appellants.
16. The addition of the Word Deluxe cannot improve the case of
the respondent since the word NANDHINI is identical and it
definitely will confusion in the minds of the consumers.
17. The priority in use is indisputably the appellants. It has been
so and consistently used that the marks have become entrenched
in the minds of the consumer. It will definitely not being in the
interest of the public to allow the respondent to use the mark in
connection with the goods in question. The balance of
convenience is not in favour of the respondent."
IMPUGNED JUDGMENT OF THE HIGH COURT:
16. The High Court upholding the order dated 4th October, 2011
of the IPAB and dismissing the writ petitions of the appellant herein has
done nothing except accepting the the aforesaid reasoning of the IPAB,
namely, (a) mark NANDINI as held by the respondent has acquired a
distinctive character and has become well-known; (b) the use of another
mark is different only in one alphabet but with no difference in spelling
or pronunciation in the local language and would very likely to cause
confusion in the minds of 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
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PRODUCERS FEDERATION LTD.[A.K. SIKRI, J.]
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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 response was that this finding of the High Court of Karnataka
as well as of IPAB, is in principle erroneous inasmuch as there is
no proposition of law which supports this interpretation to Section
11 of the Act. Learned counsel emphasised that no proper
weightage and consideration was given to the fact that goods and
services of the appellant were totally different from that of the
respondent and, therefore, there was no likelihood of confusion or
deception among the public. Instead, the courts below compared
only the marks. This is not in accord with Sections 9 and 11 of the
Act. He also referred to the following judgments in support of his
plea:
(a) Eco Lean Research and Development A/S v. Intellectual
Property Appellate Board and The Asst. Registrar of Trade Marks,
Trade Mark Registry3:
"11. As noticed above, the intimation given to the petitioner at the
first instance by the Trade Mark Registry on 6.12.2007 is by
stating that the registration has been refused under Sections 9
and 11 of the Act. However, in the grounds of decision, the order
proceeds only under Section 11 and not under Sections 9 and 11
of the Act."
(b) British Sugar Plc v. James Robertson & Sons Ltd.4:
"(d) Infringement pursuant to section 10(2)?
 Because "Treat" is the very mark registered and is clearly
used by Robertson's I think the case falls to be considered under
section 10(2)(a), the identical mark/similar goods provision. I do
not think it falls within section 10(2)(b) because I reject the
argument that the sign used is to be regarded as "Robertson's
Toffee Treat".