Trademark Dispute Over ‘NANDHINI’ Settled by Supreme Court

The Supreme Court of India recently ruled on a significant trademark dispute between M/s Nandhini Deluxe and Karnataka Co-operative Milk Producers Federation Ltd.. The judgment clarified the scope of trademark rights and addressed concerns about deceptive similarity in business names.

Background of the Case

The dispute began when M/s Nandhini Deluxe, a restaurant chain, sought to register the trademark ‘NANDHINI’ for various food items. The Karnataka Co-operative Milk Producers Federation Ltd. (respondent) objected, claiming that it had been using ‘NANDINI’ as a brand for dairy products since 1985.

The respondent argued that the name ‘NANDINI’ had acquired a distinctive character and that the restaurant’s use of ‘NANDHINI’ would cause confusion among consumers. The Deputy Registrar of Trademarks initially allowed the restaurant to register its mark, except for dairy products. However, the Intellectual Property Appellate Board (IPAB) later overturned this decision, stating that ‘NANDHINI’ was deceptively similar to ‘NANDINI’ and could mislead customers.

Petitioner’s Arguments

M/s Nandhini Deluxe contended:

• Their business of running restaurants was entirely different from the respondent’s dairy business.
• The two trademarks, though phonetically similar, were visually distinct with different logos.
• The word ‘NANDHINI’ was not an invented term but a commonly used name, referring to a goddess and a cow in Hindu mythology.
• Their restaurant had been using the name ‘NANDHINI’ since 1989, four years after the respondent began using ‘NANDINI’ for dairy products.
• Since their goods and services did not overlap, there was no likelihood of confusion among consumers.

Respondent’s Arguments

The Karnataka Co-operative Milk Producers Federation Ltd. argued:

• ‘NANDINI’ had acquired distinctiveness due to its extensive use in the dairy industry.
• The marks were nearly identical in spelling and pronunciation, leading to consumer confusion.
• Allowing another entity to use a similar name, even for different products, would dilute their brand’s reputation.
• The IPAB had rightly recognized ‘NANDINI’ as a well-known trademark and refused registration for ‘NANDHINI’.

Supreme Court’s Observations

The Supreme Court examined the case under Sections 9, 11, and 12 of the Trademarks Act, 1999, focusing on the likelihood of confusion and the distinctiveness of the marks.

The Court held:

• While the marks were phonetically similar, their trade dress, logos, and business nature were entirely different.
• The respondent’s mark was associated with dairy products, whereas the petitioner’s business involved running restaurants.
• The restaurant had been using ‘NANDHINI’ for many years without any prior objections from the dairy company.
• There was no evidence that consumers had been misled into believing that the restaurant was associated with the dairy brand.
• Trademark law does not grant monopoly over an entire class of goods if the mark has only been used for specific products within that class.

In its judgment, the Court stated:

“A mere phonetic similarity is not enough to deny a legitimate business its trademark. The trade channels, nature of goods, and intended consumers must be considered to determine the likelihood of confusion.”

Final Judgment

The Supreme Court overturned the IPAB’s decision and reinstated the Deputy Registrar’s ruling. The Court ruled that:

• M/s Nandhini Deluxe could register its trademark for its restaurant and non-dairy food items.
• The restaurant would not be allowed to use the trademark for milk and milk products.
• The IPAB and High Court had erred in their assessment of likelihood of confusion.

Implications of the Ruling

This judgment has significant implications for trademark law in India:

• It clarifies that phonetic similarity alone is not sufficient to deny trademark registration.
• It reinforces the principle that trademarks must be considered in their entirety, including trade dress and the nature of goods.
• It sets a precedent that different businesses operating in distinct industries can use similar-sounding names without necessarily causing confusion.
• It prevents unjust monopolization of commonly used names and allows fair competition in the marketplace.

Conclusion

The Supreme Court’s decision in this case reaffirms the fundamental principles of trademark law, ensuring a balance between brand protection and fair competition. By allowing M/s Nandhini Deluxe to retain its trademark while restricting its use in the dairy sector, the Court upheld both the distinctiveness of established brands and the right of new businesses to operate under their chosen names.

Petitioner Name: M/s Nandhini Deluxe.
Respondent Name: Karnataka Co-operative Milk Producers Federation Ltd..
Judgment By: Justice A.K. Sikri, Justice Ashok Bhushan.
Place Of Incident: Karnataka, India.
Judgment Date: 26-07-2018.

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Download Judgment: Ms Nandhini Deluxe vs Karnataka Co-operati Supreme Court of India Judgment Dated 26-07-2018.pdf

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