Supreme Court: The Bench comprising of A.K. Sikri and Ashok Bhushan, JJ., allowed a civil appeal filed against the judgment of Karnataka High Court, whereby the decision of Intellectual Property Appellate Board cancelling the registration of appellant’s trademark was upheld.
Respondent was a cooperative of milk producers who sold milk and milk products under the mark NANDINI. It has registration of the mark under Classes 29 and 30 of Schedule IV to the Trade Mark Rules, 2002. The appellant, on the other hand, adopted the mark ‘NANDHINI’ for its restaurants and applied for registration of the said mark in respect of various foodstuff sold by it. Registration of the mark was allowed in favour of the appellant by the Deputy Registrar of Trade Marks. Respondent objected that the mark was deceptively similar to that of the respondent’s, and was likely to deceive the public or cause confusion. According to the respondent, it had exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the foodstuff sold by the appellant were, in fact, that of the respondent. The respondent appealed to the IPAB against the decision of Deputy Registrar, which was allowed. Subsequently, the writ petition filed by the appellant thereagainst was dismissed by the High Court.
The Supreme Court proceeded in the matter on the presumption that NANDINI trademark of the respondent had acquired distinctiveness. The fulcrum of the dispute was whether the registration of mark ‘NANDHINI’ in favour of the appellant would infringe the rights of the respondent. The Court, after considering the facts, found it difficult to sustain the order, as it did not find the two marks deceptively similar. Applying the principles laid down in National Sewing Thread Co. v. James Chadwick and Bros., AIR 1953 SC 357, to the instant case, the Court found that the visual appearance of the two marks was different and they relate to different products. Further, looking at the manner in which they were traded, it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant to that of the respondent. The Court held that the use of the mark ‘NANDHINI’ by the appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trademark of the respondent. Therefore, the impugned order was held to be unsustainable in the law which was accordingly set aside. The appeal was, thus, allowed and order of the Deputy Registrar granting registration in favour of the appellant was restored. [Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., 2018 SCC OnLine SC 741, dated 26-07-2018]