Monopoly over entire class of goods

By August 7, 2018 December 20th, 2019 No Comments

Karnataka Co-Operative Milk
Producers Federation Ltd. (KMF), which has been producing and selling milk and
milk products, since 1985, obtained registration for their mark ‘NANDINI’.
Karnataka Co-Operative Milk Producers Federation Ltd. raised objections against
Nandhini Deluxe chain of restaurants operating since 1989 which obtained
registration for their mark. The Deputy Registrar of Trade Marks accepted the
application for registration of Trademark of ‘NANDHINI’, which was later set
aside by the Intellectual Property Appellate Board stating that:

as held by KMF has acquired a distinctive character and has become well known.
The use of
another 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 the public if allowed to be registered for the commodities falling
in the same class.

The High Court agreed with the
reasoning of the Intellectual Property Appellate Board.

In the Apex court, bench of
Justice AK Sikri and Justice Alok Bhushan closely compared the marks and
observed that they are not deceptively similar. It stated that “Though there is
a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the
trade mark with logo adopted by the two parties are 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 DELUX’. 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.”

The court further observed:
“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.”

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