RISHABH
PROPRIETOR OF A TRADEMARK CANNOT ENJOY MONOPLOLY OVER ENTIRE CLASS OF GOODS
RISHABH SACHDEVA 16 Jan 2020

PROPRIETOR OF A TRADEMARK CANNOT ENJOY MONOPLOLY OVER ENTIRE CLASS OF GOODS

M/S. Nandhini Deluxe vs M/S. Karnataka Cooperative Milk  9 SSC 183

ISSUE:- The dispute is about the use of a mark  ' NANDHINI '  under Section 1, 9 11 and 18 of the Trademark Act,1999.

It is important to note that in Bangalore both the Appellant and the respondent carry on business. In the year 1985, KARNATAKA CO-OPERATIVE MILK adopted the aforementioned Trademark' NANDINI' and produced and sold milk and milk products under this brand name. they had this trademark  registered under Class 29 and Class 30 as well. On the other hand, the appellant is in the business of running restaurants and in 1989 he adopted the' NANDHINI’ Tademark  for his restaurants and applied for the registration of the said mark in respect of various food items sold by him in his restaurants. The respondent had objected to the registration and the respondent's objections were rejected by the Trade Mark Deputy Registrar and gave decision in favour of appellant. This order discloses that the applicant's application for registration of the trade mark ' NANDHINI DELUXE WITH LOGO (Kannada) had been transferred herein.

The respondent objects to the appellant on the ground that it is deceptively close to the respondent's mark and is likely to deceive the public or cause confusion. The respondent approached the Intellectual Property Appellate Board when those complaints were dismissed by the Deputy Registrar and the registration issued to the appellant. The appeal have been accepted by the IPAB. Registration was objected to under Sections 9,11,12 and 18 of the Act.  The IPAB rejected the respondent's opposition to the registration of a trade mark ' NANDHINI ' as demanded by the appellant and enabling the appellant to apply for registration, except for milk and milk products. The IPAB noted that the respondent deals with milk and milk products in the instant case whereas the appellant deals with other items such as meat and fish etc. The High Court upholding the IPAB's and dismissing the appellant's written petitions herein did nothing but accept the IPAB's foregoing reasoning, namely that

(a) the NANDINI mark retained by the respondent acquired a distinctive character and became well-known;

(b) the use of another mark differed only in one alphabet but without any differences;

(c) the appellant's claim that the restaurant business had been in service since 1989 and that since 1985 the respondent had started to use the mark ' NANDINI ' only for milk and not for other items was dismissed on the grounds that there was no justification for the aforementioned statement and that no evidence was created to substantiate the same argument.

SUPREME COURT OBSERVATION

The Hon’ble  SC relied on National Sewing Thread Co. Ltd. vs. James Chadwick and Bros, accepted the following principle of this case which are applied to this case which states that “ The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark .

Applying the aforesaid principle  described above to the instant case, the SC considers that not only the visual appearance of the two marks different, they also apply to different products. However, it is difficult to imagine that an average man of ordinary intelligence will equate the appellant's goods with that of the respondent in the manner in which they are exchanged by the appellant and the respondent, respectively, illustrated above.  Another significant factor that both the IPAB and the High Court have lost sight of is that the appellant runs a restaurant under the ' NANDHINI ' trademark and applied the trademark for products such as coffee, tea, cocoa, sugar, rice, rapioca, sago etc.  Having reached the above conclusion, the High Court's argument that the products belonging to the appellant and the respondent (although the essence of the goods is different) belong to the same class and it would therefore be inadmissible for the appellant to have the registration of the trade mark in question in his favour, would have no significance.

As a result, IPAB and High Court orders are rescinded. These appeals are permitted and the order of the Deputy Registrar granting registration in favor of the appellant is hereby restored, subject to the amendment that the registration is not issued in respect of those milk and milk products for which the appellant has abandoned his argument.

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