‘A Critical Analysis of the landmark judgement delivered by the Hon’ble Supreme Court of India in Nandhini Deluxe vs. Karnataka Co-operative Milk Producers Federation Ltd.’
This case pertains to the similar trademark names phonetically as well as spelling wise of two distinct entities namely, ‘Nandhini’ and ‘Nandini’. The crux of the judgement is that ‘similar trademarks for different items not breach of law’; which with due regards to the Hon’ble Supreme Court, I respectfully disagree.
The primary basis of my disagreement is that, although the names are different of two separate entities having different business but, it creates a confusion and deception in the market at large. The Supreme Court although has ruled that these are not deceptively similar trademarks, but this should also taken into cognizance that the Hon’ble High Court of Karnataka had restrained the restaurant chain from using the word ‘Nandhini’ as its trademark.
In support of my stance, the following sections of the Trademarks Act, 1999 explicitly states the following,
Sec. 9 (2) (a) – A mark shall not be registered as a trademark if is of such nature as to deceive the public or cause confusion.
Sec.11 (1) 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.
(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 advantage of or be detrimental to the distinctive character or repute of the earlier trademark, 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.
The word ‘Nandini’ was already in prior use. The Intellectual Property Appellate Board (IPAB) held that the Karnataka Co-Operative Milk Producers Federation was in “regular and consistent use of the trademark “NANDINI” and it had become entrenched in the minds of the consumers and it would not be in the interest of the public to allow the restaurant chain to use the trademark “NANDHINI”. The IPAB 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.
Thereafter, based on this, the High Court concurred with the above mentioned reasons as given by the IPAB and affirmed both marks to be deceptively similar, thereby disallowing the registration of the trademark “NANDHINI”. Additionally, the HC noted that Karnataka Co-Operative Milk Producers Federation was using the trademark “NANDINI” for goods like milk and milk products since 1985, whereas Nandhini Deluxe adopted the trademark “NANDHINI” for their restaurants since 1989 which proved the fact that Karnataka Co-Operative Milk Producers Federation was a prior user and adopter of the trademark “NANDINI”.
It takes years of sweat, blood and tears to establish reputation and goodwill in the minds of general public or the consumer. If any entity names itself similar to that of an already establish brand name in the market is taking undue advantage. This could result in decrease of profit share or in case loss to the establish entity and unfair profit could be incurred due to having a similar brand name.
This sets a totally different precedent as the already registered marks at a risk of being infringed and in a greater loss. Their reputation, goodwill and businesses are at stake. The Judgment has also opened the doors of concern such as mere similarity of words is insufficient to reason infringement, registration of a mark in one class in no assurance that similar competing mark cannot be registered in the same class unless well-known, which in itself is hard to prove. Mere adoption of similar names has huge ramifications, since post- judgment, use of same or deceptively similar trademark in the same class has been permitted.
- Ritwick Mahashabde
Agnihotri & Jha Associates