REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NOS. 2937-2942 OF 2018

M/S. NANDHINI DELUXE .....APPELLANT(S)

VERSUS

M/S.  KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD.  

.....RESPONDENT(S)

W I T H   

CIVIL APPEAL NO. 2943-2944 OF 2018   

J U D G M E N T

A.K.SIKRI, J.

The judgment dated 2nd December, 2014 given by the High

Court of Karnataka in writ petitions filed by the appellant herein is

the  subject  matter  of  detailed  debate  and  arguments  in  the

present proceedings, because of the reason that the dispute in

question  has  evoked  considerable  controversy.   The  dispute

pertains to the use of mark ‘NANDHINI’.  The respondent herein,

which  is  a  Cooperative  Federation  of  the  Milk  Producers  of

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Karnataka, adopted the aforesaid mark ‘NANDINI’  in the year

1985  and  under  this  brand  name  it  has  been  producing  and

selling milk and milk products.  It has got registration of this mark

as well under Class 29 and Class 30.  The appellant herein, on

the other hand, is in the business of running restaurants and it

adopted the mark ‘NANDHINI’ for its restaurants in the year 1989

and applied for registration of the said mark in respect of  various

foodstuff items sold by it in its restaurants.  The respondent had

opposed the  registration  and  the  objections  of  the  respondent

were dismissed by the Deputy Registrar of the Trade Mark who

passed orders dated August 13, 2007 allowing the registration of

the said  mark in favour of the appellant.   

2. We  may  note  at  this  stage  itself  that  the  mark  used  by  the

appellant is objected to by the respondent on the ground that it is

deceptively similar to the mark of the respondent and is likely to

deceive  the  public  or  cause  confusion.   According  to  the

respondent, the appellant could not use the said mark which now

belongs to the respondent inasmuch as because of its long and

sustained use by the respondent, the mark ‘NANDINI’ is held to

have acquired a distinctive character  and is  well-known to the

public  which  associates  ‘NANDINI’  with  the  respondent

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organization.   Therefore,  according  to  the  respondent,  it  has

exclusive right to use the said mark and any imitation thereof by

the appellant would lead the public to believe that the foodstuffs

sold by the appellant are in fact that of the respondent.  When

these  objections  were  rejected  by  the  Deputy  Registrar  and

registration granted to the appellant, the respondent approached

the  Intellectual  Property  Appellate  Board  (for  short,  ‘IPAB’),

Chennai by filing appeal with the prayer that the registration given

by the Deputy Registrar, Trade  Mark  in favour of the appellant

be cancelled.  These appeals of the respondent were allowed by

the IPAB vide common order dated 4th October, 2011 and the writ

petitions filed by the appellant there against have been dismissed

by  the  High  Court  vide  impugned  order  dated  2nd December,

2014,  thereby  confirming  the  order  of  the  IPAB  and,  in  the

process, accepting the plea of the respondent therein.

3. Before we proceed further, it is pertinent to mention at this stage

that the milk and milk products, which are sold by the respondent

under the trade mark of ‘NANDINI’, fall under Class 29 and Class

30 as per classification under Schedule IV to the Trade Marks

Rules, 2002. On the other hand, various kinds of foodstuffs sold

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by the appellant in its restaurants also fall under Class 29 and 30

as well as other Classes.   

4. For the sake of clarity and comparison, we may also, at this stage

itself,  give  the  representation  of  competing  marks   of  the

appellant as well as respondent, which is as under :

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5. Before we proceed to state the arguments of the learned counsel

for appellant and rebuttal thereof by the respondent, it would be

necessary  to  have  a  brief  discussion  in  respect  of  the  orders

passed by the Deputy Registrar of Trade Marks, IPAB and the

High Court.

ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:

6. This  order  discloses  that  the  appellant  herein  had  moved  the

applications for  registration of  trade mark ‘NANDHINI DELUXE

WITH LOGO (Kannada)’’  in  respect  of  meat,  fish,  poultry  and

game,  meat  extracts,  preserved,  dried  and  cooked  fruits  and

vegetables, jellies, jams, eggs, milk and milk products, edible oils

and fats, salad dressings, preserves and all  other goods being

included in Class 29.  In the Opposition filed by the respondent

herein, it was, inter alia, stated that respondent was manufacturer

and dealer of milk and milk products, cattle feed and other allied

products which are the source of ‘NANDINI’ products. Trade mark

‘NANDINI’ with device of the cow is being used by the respondent

extensively not only in the State of Karnataka but in other parts of

country as well.  This trade mark was registered in the name of

the respondent which was used right from the year 1985.   The

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trade mark sought to be adopted by the appellant was confusingly

and deceptively similar to the respondent’s trade mark.  It was a

clever move on the part  of  the appellant  who wanted to trade

upon and benefit from the reputation and goodwill acquired by the

respondent  for  the  last  so  many  years  and,  therefore,  the

appellant could not claim any proprietary rights in the impugned

mark  under  Section  18(1)  of  the  Trade  Marks  Act,  1999

(hereinafter referred to as the ‘Act’).  Registration was objected to

under Sections 9,11,12 and 18 of the Act.

7. In the counter statement filed by the appellant to the aforesaid

objections,  it  was  pleaded  that  the  appellant  had  honestly

conceived and adopted the trade mark ‘NANDHINI’ in Kannada

with  a  particular  artistic  work,  design  and  getup  for  running

vegetarian and non-vegetarian Andhra style restaurant.   It  had

opened as many as six branches (particulars whereof were given)

all over Bangalore by using trade mark ‘NANDHINI’ since 1989.

The  appellant  had  also  obtained  registration  of  copyright  of

‘NANDHINI’ under Copyright Act, 1957.  It was further argued that

since the artistic work, design and getup adopted by the appellant

was totally different, there was no question of any deception or

confusion arising in the mind of public.  Moreover, the class of

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purchasers/customers  of  both  the  trade  marks  was  entirely

different.  The Deputy Registrar noted that the issues involved in

these proceedings were based on Sections1 9, 11 and 18 of the

Act. As per Section 9, the generic words cannot be registered as

trade  mark  unless  they  have  acquired  distinctiveness  and  are

1     S.9. Absolute grounds for refusal of registration.—(1) The trade marks— (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing  

the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate  the kind, quality, quantity, intended purpose, values, geographical origin or the time of  production of the goods or rendering of the service or other characteristics of the goods or  service;

(c) which consist exclusively of marks or indications which have become customary in the  current language or in the bona fide and established practices of the trade,

shall not be registered:  

Provided that a trade mark shall not be refused registration if before the date of application  for registration it has acquired a distinctive character as a result of the use made of it or is a  well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of

any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d)  its use is prohibited under the Emblems and Names (Prevention of Improper  

Use) Act, 1950 (12 of 1950).

(3)  A mark shall not be registered as a trade mark if it consists exclusively of— (a) the shape of goods which results from the nature of the goods themselves; or (b)  the shape of goods which is necessary to obtain a technical result; or (c)  the shape which gives substantial value to the goods.

Explanation.—For the purposes of this section, the nature of goods or services in  relation to which the trade mark is used or proposed to be used shall not be a ground for  refusal of registration. S. 11 Relative grounds for refusal of registration.—(1) Save as provided in section 12, 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.

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word ‘NANDHINI’ represents the name of goddess and a cow in

Hindu Mythology. The trade mark ‘NANDHINI’ is used by people

from all walks of life and it is also referred in puranas and Hindu

mythological stories.  Large number of people worship NANDHINI

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including  advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the  trade mark applies;

(iv) the duration and geographical area of any registration of or any application for  registration of that trade mark under this Act to the extent they reflect the use or recognition of the  trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the  extent to which the trade mark has been recognised as a well-known trade mark by any court or  Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or  recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(I)  the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant  section of the public in India by any court or Registrar, the Registrar shall consider that trade mark  as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a  well-known trade mark, any of the following, namely:—

(i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) that the application for registration of the trade mark has been filed in India; (iv) that the trade mark— (a) is well known in; or (b) has been registered in; or (c) in respect of which an application for registration has been filed in, any jurisdiction other  

than India; or (v) that the trade mark is well-known to the public at large in India.

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as  a  goddess  and,  therefore,  the  respondent  cannot  claim

monopoly over the word ‘NANDHINI’.   

8. Taking note of the aforesaid submissions and virtually accepting

the same, the Deputy Registrar noted that since the appellant is

using the trade mark continuously from 1st April, 1989 which claim

of the appellant was supported by documentary proof, objection

raised by the respondent under Section 9 stood waived.

(10) While considering an application for registration of a trade mark and opposition filed in  respect thereof, the Registrar shall—

(i)  protect a well-known trade mark against the identical or similar trade marks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent  affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material  informations to the Registrar or where right to a trade mark has been acquired through use in good  faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the  registration of that trade mark or right to use that trade mark on the ground that such trade mark is  identical with or similar to a well-known trade mark.

S. 18. Application for registration.— (1) Any person claiming to be the proprietor of a trade  mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to  the Registrar in the prescribed manner for the registration of his trade mark.

(2) A single application may be made for registration of a trade mark for different classes of  goods and services and fee payable therefor shall be in respect of each such class of goods or  services.

(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks  Registry within whose territorial limits the principal place of business in India of the applicant or in  the case of joint applicants the principal place of business in India of the applicant whose name is  first mentioned in the application as having a place of business in India, is situate: Provided that  where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place  mentioned in the address for service in India as disclosed in the application, is situate.

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may  accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any,  as he may think fit.

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall  record in writing the grounds for such refusal or conditional acceptance and the materials used by  him in arriving at his decision.

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9. Coming to Section 11 of the Act which prohibits registration of

mark and the goods in which it is sought for registration is likely to

deceive or confuse,  he noted that whereas respondent’s mark is

‘NANDINI’  per se,  the appellant’s mark is ‘NANDHINI DELUXE

WITH LOGO (In Kannada).  Moreover, respondent is using trade

mark ‘NANDINI’ in respect of dairy products, i.e., milk and milk

products  only.   On  the  other  hand,  the  goods  for  which  the

registration was sought by the appellant were altogether different,

even  though  both  fall  in  the  same  Class,  i.e.,  Class  29.

Highlighting this factual difference of the nature of goods in which

the appellant and respondent are trading, the Deputy Registrar

was of the view that the respondent’s objection under Section 11

was not tenable.  While coming to this conclusion, he also took

aid  of  some judgments  of  the  IPAB as  well  as  different  High

Courts.   In the process,  he also rejected the contention of the

respondent  that  the  trade  mark  used  by  the  appellant  was  a

colourable  imitation of  the respondent’s  trade mark which was

well-known mark under Section 11(2) of the Act.

10. Dealing with the objections on the touchstone of Section 18 of the

Act, the Deputy Registrar came to a conclusion that the appellant

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is the proprietor of the mark as claimed under Section 18(1) of the

Act, but restricted his entitlement for registration by holding that

the appellant would not be entitled to registration in respect of

milk  and  milk  products.   Relevant  discussion  in  this  behalf  is

reproduced below:

“The balance of convenience is in favour of the applicants. The applicants are the extensive user of the mark since the year 1989.  the adoption of the mark by the Applicants is honest and concurrent.  To prove their claim, the applicants have filed documents in support of application.  In these circumstance,  the applicants are having definite claim to the  proprietorship  of  the  mark  applied  for.   Hence  the Applicants are the proprietors of the mark as claimed for under the provisions of Section 18(1) of the Act.

On carefully considered the arguments advanced by both the counsel and materials available on the record and the evidence adduced by the concerned parties, in the interest of justice and purity of the Register since the Applicants are not using milk and milk products in class-29 whereas the Opponents  have proved that  they  are  the  famous Dairy products  producers  and  the  evidence  produced  by  the Opponents also reveals that they are using the mark for Milk  and Milk products only.  Therefore, the applicants are directed to delete the goods “Milk and Milk products” from the specification of goods by way of filing a request on from TM-16 to delete the same and after deletion of the goods, the same should be notified in the Trade Marks Journal.

It is significant to note that both Applicant and Opponent are carrying business in Bangalore.   While the Applicant claims to be suing the trade mark NANDHINI since 1989, the Opponents have been using the trade mark NANDINI prior to Applicant, the artistic work, design and getup are totally different.   While the Applicant has been using the traded  mark  NANDHINI  with  a  lamp  and  written  in  a particular  style,  the  Opponents  are  using  NANDINI  with device  of  cow.   The  Opponent  has  not  produced  any evidence to  show that  use of  trade mark  NANDHINI  by

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Applicant  is  causing  confusion  or  deception.  In  view  of continuous user of the trade mark NANDHINI by Applicant, the Applicant has deemed to have become proprietor of the trade mark  NANDHINI.

Lastly coming to the exercise of discretion of the Registrar vested  with  him,  the  onus  to  prove  the  claim  of proprietorship of the mark is always on the Applicants.  The Applicants  have  successfully  discharged  their  onus  that they are the proprietors of the mark NANDHINI DELUXE WITH LOGO (Kannada) applied for registration.  In order to safeguard the public interest and to protect the intellectual and  industrial  property  rights  of  the  Applicants  who  are honest adopters and bonafide users, the applicant’s trade mark is to be protected by granting registration enabling the  applicants  to  use  their  mark  legally  without  any hindrance, this authority has no other alternative except to allow application and to grant registration of the impugned mark.

In view of the foregoing, it  is ordered that the opposition No. MAS-194405 is dismissed and application No. 982285 in Class-29 shall proceed to registration subject to deleting the items “Milk and Milk products” from the specification of goods by filing a request on form TM-16 and the amended application should be notified in the Trade Marks Journal.”

ORDER DATED 20TH APRIL, 2010 OF THE IPAB :

11. The aforesaid order rejecting the opposition of the respondent to

the  registration  of  trade  mark  ‘NANDHINI’  as  sought  by  the

appellant  and  allowing  appellant’s  application  for  registration,

except  for  milk  and  milk  products,  was  challenged  by  the

respondent  by  filing  set  of  appeals.   One  such  appeal  being

OA/4/2008/TM/CH was decided by IPAB vide its order 20 th April,

2010.   The  IPAB  referred  to  the  judgment  of  this  Court  in

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Vishnudas Trading as Vishnudas Kushandas vs. The Vazir

Sultan  Tobacco  Ltd.  and  Anr.2 and  quoted  the  following

passage therefrom:-

“In our view if a trader or manufacturer actually trades in or manufactures  only  one  or  some  of  the  articles  coming under  a  broad  classification  and  such  trader  or manufacturer  has  no  bonafide  intention  to  trade  in  or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturers to  get  registration  of  separate  and  distinct  goods  which may also be grouped under the broad classification.”

 12. If  registration  has  been  given  generally  in  respect  of  all  the

articles under the broad classification and if it is established that

the  trader  or  manufacturer  who  got  such  registration  had  not

intended to use any other article except the articles being used by

such  trader  or  manufacturer,  the  registration  of  such  trader  is

liable  to  be  rectified  by  limiting  the  ambit  of  registration  and

confining such registration to the specific article or articles which

really  concerns  the  trader  or  manufacturer  enjoying  the

registration made in his favour.

13. The IPAB noted that in the instant case, the respondent is dealing

with milk and milk products whereas the appellant is dealing with

the other products like meat and fish etc. from which dishes are

2 1996 SCALE (5) 267

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prepared in its restaurants and served to the customers.  It took

note  of  certain  principles  that  when  a  person  trades  or

manufactures one good under the broad classification having no

bona fide intention to trade in all other goods falling under that

broad classification, he cannot be permitted to enjoy monopoly in

articles  falling  under  such  classification  as  held  in  Vishnudas

Trading as Vishnudas Kushandas2  .  Therefore,  in the instant

case, when the respondent has its limited business only in milk

and milk products with no intention to expand the business of

trading in other goods falling under Class 29 and the appellant

was given registration in other articles only, specifically excluding

milk  and  milk  products,  there was nothing wrong in  according

registration of those products in favour of the appellant under the

trade  mark  ‘NANDHINI’.   The  IPAB  also  observed  that  the

respondent had failed to prove that by allowing such registration

in  favour  of  the  appellant,  any  confusion  or  deception  would

ensue.   On  that  reasoning,  appeal  of  the  respondent  was

dismissed.  At the same time, the appellant was asked to file a

request on Form 16 to delete the goods ‘milk and milk products’

The appellant filed the affidavit to this effect, as directed by

IPAB on 18th July, 2011.

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ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :   

14. Notwithstanding, order dated 20th April, 2018 passed by the IPAB,

insofar as other appeals of the respondent are concerned, the

events took a different turn as vide orders dated 4 th October, 2011

appeals of the respondent herein were allowed by the IPAB. It

accepted the case of  the respondent that  ‘NANDINI’ is  a well-

known  trade  mark  and  a  household  name  in  the  State  of

Karnataka  and  that  it  is  the  registered  trade  mark  of  the

respondent.  The goods sold are milk and milk products such as

curd, butter, cheese, ghee, milk powder, flavoured milk, paneer,

khoya, ice cream and all milk based sweets.  They are sold in

bottles,  sachets,  tetra  packs,  polythene  containers  etc.  The

device used by the respondent is standing cow on a grass land

having rising sun in the background.  The IPAB also took note of

the statistics given by the respondent in respect of sales turnover

as well as advertisement and sale promotion expenditure for the

last 10 years.  It had obtained several registrations in respect of

trade mark NANDINI and label forms in Classes 29, 30, 31 and

32 and had also secured copyright registration as early as in the

year 1984 and 1985.

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15. In the opinion of IPAB, the appellant is running a restaurant which

would  come  under  Class  42  with  which  the  Board  was  not

concerned.  Therefore, the fact that respondent had not raised

any  objection  to  appellant’s  mark  for  18  years  was  of  no

relevance.

It also noted that insofar as this trade mark ‘NANDINI’ used

by the respondent is concerned, it has acquired distinctiveness.

It 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 and, therefore, registration

of the appellant’s mark could not be permitted.  We would like to

reproduce  the  following  discussion  as  that  captures  the  entire

essence of  the  reasoning  given  by  the  IPAB in  support  of  its

conclusion:

“14.  So each case has to be decided on the basis of t he facts on hand.  With regard to the appellant’s mark we find that one of the documents which is the Kannada Weekly Sudha where it is stated that “I am using NANDINI.  You?” In Tharanga Kahhanda Weekly, ‘Nandini Ghee has a role

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 18 of 47

in  every  moment  of  life  celebration”  (translated  from Kannada).  These are pieces of evidence to show that the word  Nandini  itself  has  become  associated  with  the appellant’s  products  and therefore,  though it  might  be  a Hindu name, or even a deity’s name, it  has come to be recognized as a distinctive mark  of  the appellant  by  the appellant’s use of the same for nearly two decades.  The conclusion of the Registrar that it is not likely to confuse cannot be sustained.  The word is identical.  The addition of a letter H by the respondent cannot make a difference. Whether  it  is  Nandini  or  Nandhini,  it  is  pronounced identically.  And in Kannada there is no difference in the spelling of the trademark of the appellant and that of the respondent.  

15.  We have referred to the advertisement which says ‘I am using Nandini”.  It is clear that the consumer and the general public who are the source of the goods ‘when the word Nandini is used.  When that is so, we cannot permit the  respondent  to  use  the  identical  mark  in  relation  to goods which are akin to the appellants.

16. The addition of the Word Deluxe cannot improve the case  of  the  respondent  since  the  word  NANDHINI  is identical and it definitely will confusion in the minds of the consumers.

17.  The priority in use is indisputably the appellants.  It has been so and consistently  used that  the marks have become entrenched in the minds of the consumer.  It will definitely not being in the interest of the public to allow the respondent to use the mark in connection with the goods in question.  The balance of convenience is not in favour of the respondent.”    

IMPUGNED JUDGMENT OF THE HIGH COURT:

16. The High Court upholding the order dated 4 th October, 2011 of the

IPAB and dismissing the writ petitions of the appellant herein has

done nothing except accepting the the aforesaid reasoning of the

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 19 of 47

IPAB, namely, (a) mark NANDINI as held by the respondent has

acquired a distinctive character and has become well-known; (b)

the use of another mark 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 public if

allowed to be registered for the commodities falling in the same

class; (c)  argument of the appellant herein that it was running the

business of restaurant since 1989 and the respondent had started

using mark ‘NANDINI’ since the year 1985 only for milk and not

for other products was rejected on the ground that there is no

foundation in facts for  the aforesaid argument and no material

was produced to substantiate the same.  

17. As stated in the beginning, very detailed arguments are advanced

by  counsel  for  both  the  parties.   The  precise  nature  of  the

arguments of the parties is as follows:

18. Mr. Sushant Singh, learned counsel appearing for the appellant,

advanced the following propositions,  while  laying attack to  the

orders of IPAB as well as the High Court:

(i) In the first instance, he submitted that both the High Court

of Karnataka as well as IPAB grossly erred in law in interpreting

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 20 of 47

the  provisions  of  Section  11  of  the  Act  to  mean  that  once  a

trademark  has  acquired  a  distinctive  character,  then  the

registration  of  the  trade  mark  is  barred  and  is  likely  to  cause

confusion  if  it  is  allowed  to  be  registered  in  the  commodities

within the same class.  His response was that this finding of the

High  Court  of  Karnataka  as  well  as  of  IPAB,  is  in  principle

erroneous  inasmuch  as  there  is  no  proposition  of  law  which

supports  this  interpretation to  Section 11 of  the Act.   Learned

counsel emphasised that no proper weightage and consideration

was given to the fact that goods and services of the appellant

were totally different from that of the respondent and, therefore,

there  was  no  likelihood  of  confusion  or  deception  among  the

public.  Instead, the courts below compared only the marks.  This

is  not  in  accord  with  Sections  9  and  11  of  the  Act.   He  also

referred to the following judgments in support of his plea:

(a)  Eco Lean Research and Development A/S v. Intellectual Property Appellate Board and The Asst. Registrar of Trade Marks, Trade Mark Registry3:

“11.  As noticed above, the intimation given to the petitioner at  the  first  instance  by  the  Trade  Mark  Registry  on 6.12.2007  is  by  stating  that  the  registration  has  been refused under Sections 9 and 11 of the Act.  However, in the  grounds  of  decision,  the  order  proceeds  only  under Section 11 and not under Sections 9 and 11 of the Act.”

3 MANU/TN/3041/2011

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 21 of 47

(b) British Sugar Plc v. James Robertson & Sons Ltd.4:  “(d)  Infringement pursuant to section 10(2)?

Because “Treat” is the very mark registered and is clearly  used  by  Robertson’s  I  think  the  case falls  to  be considered  under  section  10(2)(a),  the  identical mark/similar goods provision.  I do not think it falls within section 10(2)(b) because I reject the argument that the sign used is to be regarded as “Robertson’s Toffee Treat”.  That is used too but the first two words are added matter and it does not matter in what capacity “Treat” is used.

The questions arising under section 10(2)(a) are:

(1) Is the mark used in the course of trade?

(2) Are the goods for which it  is used similar to those covered by the registration?

(3) Is  there  a  likelihood  of  confusion  because  of  that similarity?

The first of these questions causes no difficulty here. The problems arise under the second and third questions. British Sugar seek to elide the questions of confusion and similarity.  Their skeleton argument contends that there is “use in relation to a product so similar to a dessert sauce that  there  exists  a  likelihood  of  confusion  because  the product may or will be used for identical purposes.”  I do not think it is legitimate to elide the question in this way. The  sub-section  does  not  merely  ask  “will  there  be confusion?”: it asks “is there similarity of goods?”, if so, “is there a likelihood of  confusion?”  The point  is important. For if  one elides the two questions than a “strong” mark would get protection for a greater range of goods than a “weak” mark.  For instance “Kodak” for socks or bicycles might  well  cause confusion,  yet  these goods  are  plainly dissimilar from films or cameras.  I  think the question of similarity of goods is wholly independent of the particular mark the subject of registration or the defendant’s sign.”  

4 (1996) RPC 281 (CH)

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(c) London Rubber Co. Ltd. v. Durex Products Incorporated & Anr.5:  

“8.   The provisions of  Sections 8 and 10 of  the Act  are enabling provisions in  the sense that  it  is  not  obligatory upon a proprietor of a mark to apply for its registration so as to be able to use it. But when a proprietor of a mark, in order to obtain the benefit  of the provisions of the Trade Marks  Act,  such  as  a  legally  protected  right  to  use  it, applies  for  registration  of  his  mark  he  must  satisfy  the Registrar that it does not offend against the provisions of Section  8  of  the  Act.  The  burden  is  on  him  to  do  so. Confining ourselves to clause (a) the question which the Registrar has to decide is, whether having regard to the reputation acquired by use of a mark or a name, the mark at the date of the application for registration if used in a normal and fair manner in connection with any of the goods covered  by  the  proposed  registration,  will  not  be reasonably  likely  to  cause  deception  and  confusion amongst  a  substantial  number  of  persons  (See  38 Halsbury's Laws of England pp. 542-43). What he decides is a question of fact but having decided it in favour of the applicant, he has a discretion to register it or not to do so (Re  Hack's  Application  [(1940)  58  RPC  91]  ).  But  the discretion  is  judicial  and  for  exercising  it  against  the applicant  there  must  be  some  positive  objection  to registration, usually arising out of  an illegality inherent in the  mark  as  applied  for  at  the  date  of  application  for registration (Re Arthur Fairest Ltd. Application  [(1951) 68 RPC 197] ). Deception may result from the fact that there is some  misrepresentation  therein  or  because  of  its resemblance to a mark, whether registered or unregistered, or  to  a  trade  name  in  which  a  person  other  than  the applicant had rights (Eno  v.  Dunn  [(1890) 15 AC 252] ). Where  the  deception  or  confusion  arises  because  of resemblance with a mark which is registered, objection to registration may come under Section 10(1)  as well  (See note ‘k’ at p. 543 of 38  Halsbury's Laws of England). The provisions in  the English Trade Marks Act,  1938 (1  & 2 Geo.  6  clause  22)  which  correspond  to  Sections  8  and 10(1)  to  10(3)  of  our  Act  are  Sections  11  and  12(1)  to 12(3). Dealing with the prohibition of registration of identical

5 (1964) 2 SCR 211

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 23 of 47

and similar marks Halsbury has stated at pp. 543-44, Vol. 38, thus:

“Subject  to  the  effect  of  honest  concurrent  use  or other special circumstances, no trade mark may be registered in respect of any goods or description of goods that (1) is identical with a trade mark belonging to  a  different  proprietor  and  already  registered  in respect of the same goods or description of goods; or (2) so nearly resembles such a registered trade mark as to be likely to deceive or cause confusion.”

Since the Trade Marks Act, 1940 is based on the English statute and the relevant provisions are of the same nature in both the laws, though the language of Section 8(a) is slightly different from that of Section 11 of the English Act and that of Section 10(1) from that of Section 12(1) of the English  Act,  we  see  no  reason  for  holding  that  the provisions of Section 8(a) would not apply where a mark identical with or resembling that sought to be registered is already on the register.  The language of  Section 8(a)  is wide and though upon giving full effect to that language the provisions  of  Section  10(1)  would,  in  some  respects, overlap those of Section 8(a), there can be no justification for  not  giving  full  effect  to  the  language  used  by  the legislature.”

(ii)  He also argued that even if it is assumed that Section 9(2)(a)

is  distinct  from Section  11(1),  insofar  as  enquiry  “likelihood  of

confusion and deception”  is  concerned,  it  was supposed to be

undertaken by applying well  settled factors and variables which

are stipulated in a series of judgments.  He referred to Polaroid

Corporation  v.  Polarad Electronics Corporation6,  Shree Nath

Heritage  Liquor  Pvt.  Ltd.  &  Ors.  v.  Allied  Blender  and

6 182 F. Supp. 350 (1960)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 24 of 47

Distillers  Pvt.  Ltd.7 and Cadila  Health  Care  Ltd.  v.  Cadila

Pharmaceuticals Ltd.8 in this behalf.

(iii) Another  submission  of  Mr.  Sushant  Singh  was  that  the

finding  of  the  High  Court  that  the  mark  is  prohibited  from

registration in  respect  of  entire class or  classes of  goods runs

contrary to the principle of law laid down in Vishnudas Trading

Co.  v.  Vazir  Sultan  Tobacco  Co.  Ltd.9 where  the  Court  has

observed that the monopoly under Trademark only extends to the

goods which are falling in a particular  class and not the entire

class of goods and the trade mark which is identical or similar in

nature can be registered for the goods which are falling within the

same class inasmuch as giving the monopoly to the entire class

of goods and services to the registered proprietor would lead to

trafficking  in  the  trade  mark  which  is  not  the  object  and  the

purpose of the Trade Mark Act.

(iv) Learned counsel went to the extent of targeting the finding

that Trademark “NANDHINI” adopted by the respondent is a well-

known  inasmuch  as  such  finding  was  without  any  supporting

material.  In this behalf, he attempted to show that there was no

7 (2015) 221 DLT 359 8 (2001) 5 SCC 73 9 (1997) 4 SCC 201

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 25 of 47

finding by the IPAB that the mark “NANDHINI” of the respondent

is a well-known mark.  He argued that the concept of well-known

trademark enshrined under Section 11(2) of the Act which gives

wider net of protection to the trademarks in respect of different set

of goods is a completely different than that of the Section 11(1).  It

is  submitted  that  for  arriving  at  the  conclusion  of  well-known

trademark  there  are  certain  defined  parameters  on  which  the

trademark is required to be tested, as held by Delhi High Court in

Nestle India Ltd. v. Mood Hospitality Pvt. Ltd.10

(v) According to the learned counsel, the matter also needed to

be examined in the light of the fact that the nature of the mark

“NANDHINI” which is admittedly a common name and name of

the diety and coupled with its level of distinctiveness on account

of its user confined to milk and milk products would not warrant

invocation of  Section  11(2)  of  the Act  as  the said  provision  is

applicable in the present case. Stress was laid on the submission

that the use of the mark “NANDHINI” by the appellant is honest

and with due cause since the year 1989. Respondent has never

filed  any  suit  for  injunction  against  the  appellant  and  clearly

10 (2010) 42 PTC 514 (Del) (DB)

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 26 of 47

acquiesced to the user of the appellant.  Therefore, Section 11(2)

is not applicable.

(vi) Advancing  the  aforesaid  line  of  argument,  his  another

submission was that Section 12 is an inbuilt scheme which allows

the Registrar to register same or similar trademark in respect of

same or similar goods. More so, when the name “NANDHINI” is a

common name of the deity and common name of Hindu girl  to

which IPAB agrees.  In this context, he also referred to the order

passed  by  the  Registrar  wherein  concurrent  user  of  both  the

appellant and the respondent was accepted and submitted that

there was no reason to upset the said finding.

(vii)  Mr. Sushant Singh further argued that since the respondent

was in the business of manufacture and marketing of milk and

milk products only, and had admittedly not expanded its business

to any other items in Class 29 or 30, the case of the respondent at

the  highest  could  be  qua milk  and  milk  products  only.   He

submitted that the appellant was ready to give concession by not

claiming any registration or trademarks which fell in the category

of milk and milk products.  In this behalf, he submitted the list of

goods which the appellant was ready to delete from its application

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 27 of 47

for registration and the goods in respect of which the appellant

intended to claim registration.  This was submitted in the tabulated

form as under:

CLASS GOODS  APPLIED  IN  THE TRADE MARK APPLICATION

GOODS PROPOSED TO  BE DELETED

GOODS PROPOSED TO  BE RETAINED

Class 29 TRADE MARK APP. NO. 982285 Meat,  fish,  poultry  and  game; meat  extracts;  preserved,  dried and  cooked  fruits  and vegetables;  jellies,  jams,  fruit sauces;  eggs;  milk  and  milk products;  edible  oils  and  fats, salad  dressings,  preserves  and all other goods being included in Class 29.

Eggs; milk and milk  products and  all  other goods  being included  in Class 29.

Meat,  fish, poultry  and game;  meat extracts; preserved, dried  and cooked  fruits and vegetables; jellies,  jams, fruit  sauces; edible  oils and  fats, salad dressings, preserves

Class 30 TRADE MARK APP. NO. 817305 Coffee,  tea,  cocoa,  sugar,  rice, tapioca,  sago,  artificial  coffee, flour and preparations made from cereals,  bread,  pastry  and confectionery,  ices,  honey, treacle,  yeast,  baking-powder, salt,  mustard,  vinegar,  sauces (except salad dressings), spices, ice  and  all  other  goods  being included in Class 30

TRADE MARK APP. NO. 982284 Coffee,  tea,  cocoa,  sugar,  rice, sago,  substitute  flour  and preparations  made  from  cereal, bread, biscuits, cakes, pastry and confectionery, ices, honey, yeast, baking  powder,  salt,  mustard, pepper,  masala  paste,  vinegar

Tea,  coffee, cocoa,  artificial coffee,  coffee substitute, biscuits, cakes, pastry  and confectionery, ices, ice and all other  goods being  included in Class 30.

Sugar,  rice, tapioca, sago,  flour and preparations made  from cereals, bread, honey, treacle, yeast, baking- powder,  salt, mustard, pepper, masala paste, vinegar, sauces (except  salad dressings),

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 28 of 47

sauces, spices spices.

(viii)  The learned counsel submitted that neither the IPAB nor the

High Court had answered all the questions/issues which had been

raised  by  the  Registrar  on  the  basis  of  which  findings  of  the

Registrar had been premised including under Section 12 of the

Act.  Moreover, argued the counsel, IPAB did not even refer to or

take  into  consideration  the  earlier  order  dated  April  20,  2010

passed by IPAB itself wherein IPAB had dismissed the appeal of

the respondent on the same issue.  Therefore, the appeal filed by

the respondent before the IPAB was even barred by the Principle

of Issue Estoppel.   

19. Mr.  S.S.  Naganand,  learned  senior  counsel  appearing  for  the

respondent  submitted,  per  contra,  that  IPAB  had  properly

considered all the contentions expressly argued in the appeal as

well as in the review petition.  It had recorded the factual position

and upon such appreciation of facts, the IPAB concludes not only

that “the word Nandhini has acquired a distinctiveness” but also

that  “there  is  no  doubt  that  if  goods  under  Class  29  and  30

bearing the respondent’s (petitioner herein) trademark come out

in  the  market,  the  average  consumer  would  conclude  that  it

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 29 of 47

belongs  to  the  Karnataka  Cooperative  Milk  Producers

Federation”.  The IPAB was also pleased to hold that “the work

Nandhini  itself  has  become  associated  with  the  appellant’s

(present respondent’s)  products and, therefore, though it  might

be a Hindu name, or  even a deity’s name, it  has come to be

recognized  as  a  distinctive  mark  of  the  appellant  by  the

appellant’s  use  of  the  same  for  nearly  two  decades.   The

conclusion of the Registrar that it is not likely to confuse cannot

be sustained.”   These findings were expressly affirmed by the

High  Court  in  the  impugned  judgment.   Mr.  Naganand  also

submitted that  all  the essential  characteristics  of  a  well-known

mark as understood under Section 11(2) read with Section 11(8)

of the Act have been found by the IPAB in the respondent’s mark

“NANDHINI”.   Under Section 11(8) of the Act,   if  any Court or

Registrar has found that a trade mark is well-known in at least

one relevant section of the public in India, it shall be a well-known

trade  mark  for  purposes  of  the  Act.   Based  on  the  facts  and

evidence on record, IPAB has clearly recorded a finding that the

respondent’s  trademark  is  associated  with  the  respondent

organisation and that it has acquired distinctiveness in Paras 9

and  14  of  the  IPAB  order.   These  findings  of  fact  cover  the

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 30 of 47

essentials to be considered as a ‘well-known’ trademark and a

household  name.   The  High  Court  has  affirmed  the  correct

findings  of  the  IPAB.   He  asserted  that  the  respondent’s

trademark “NANDHINI” is a household name in the entire South

India, and more so in Karnataka.  “NANDHINI” is to Karnataka

what “Amul” is to  Gujarat.  Therefore, there can be no doubt as

to “NANDHINI” being a well-known mark.  It is important to note

that  the  appellant  is  running  Restaurants  only  in  the  city  of

Bangalore in Karnataka and one town in Tamil Nadu.  Outside the

city of Bangalore, the public are not aware of the respondent’s

restaurant  and  “NANDHINI”  all  over  Karnataka  is  related

exclusively to the respondent organisation.   

20. Insofar  as  argument  of  the  appellant  that  “NANDHINI”  is  the

name  of  a  God/Deity  and,  therefore,  cannot  be  registered  as

Trademark,  reply  of  the  learned  senior  counsel  was  that  this

argument is counterproductive and against  the appellant’s  own

interest.  He submitted that the prevailing question in the present

petition is whether or not the appellant can register a trademark

bearing the name “NANDHINI”.  If it is the appellant’s averment

that the name “NANDHINI” is the name of a Hindu deity and as a

result cannot be registered, then such an argument will not only

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 31 of 47

render futile the very registration the appellant has applied for, but

will also render the present petition otiose.   

Without  prejudice  to  the  above,  he  argued  that  merely

because  the  word  “NANDHINI”  denotes  a  Hindu  Goddess  or

deity, does not mean that it cannot be registered.  He submitted

that the only provision contained in the Act on the subject matter

of  registration of  trademarks  that  affect  religious  sentiments  is

contained  in  Section  9(2)(b)  which  is  set  out  below for  ready

reference:

“Section  9(2)  :  A  mark  shall  not  be  registered  as  a trademark if:

(b) : it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.”

21. According  to  the  learned  senior  counsel,  the  significance  of

Nandhini, as a symbol of purity and the source of wholesome milk

is the reason for the adoption of that word by the respondent.  In

view  of  the  same,  the  registration  of  the  trademarks  of  the

respondent in the present case, do not fall within the ambit of the

provisions of Section 9(2)(b) of the Act.  There is no prohibition in

law to include the name of any God as a part of a trademark.  It is

settled  law  that  if  a  mark  has  obtained  a  secondary

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 32 of 47

distinctiveness  in  the  minds  of  the  consumer,  then  the  same

should  be  registered  and  protected.   He  emphasised  that  the

respondent has been able to prove that the appellant’s case was

covered by Section 11(2) of the Act and, therefore, it could not be

registered.  For this purpose, he referred to the judgment of Delhi

High  Court  in  Nestle  India  Ltd. wherein  the  Court  laid  down

following conditions which need to be satisfied for the applicability

of Section 11(2):

“(a)  The mark has to be identical with or similar to an earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier  trademarks  is  registered  –  both  the aforementioned  conditions  (forming  sub-section  (a) and (b) of Section 11(2)) have to be satisfied and not just one, due to the use of the word and between them.

(b)  The registered Trademark must have a reputation in India, and

(c)  The use of the mark in question must be without due cause, and

(d)   Such  use  must  take  unfair  advantage of  or  be detrimental to the distinctive character or repute of the registered trademark.”

22. In this hue, another submission of the learned senior counsel for

the  respondent  was  that  the  appellant’s  contention  regarding

honest  and  concurrent  user  was  untenable  for  the  following

reasons:

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 33 of 47

(a)  The question of the Court/Registrar taking into consideration

the  provisions  of  Section  12  of  the  Act,  which  provides  for

registration in the case of honest and concurrent user does not

arise as the very basis for the application of this Section is the

“honesty  of  the  concurrent  use.”  The  appellant  was  well-

aware  of  the  widespread  use  of  the  mark  Nandhini  by  the

respondent and has admitted that they were purchasing Nandhini

milk for their restaurant.  Therefore, the appellant cannot claim to

be  an  honest  or  concurrent  user,  as  such  claims  would  be

contrary  to  the  evidence  placed  on  record  and  their  own

admissions.  

(b)  Section 12 of the Act relates to identical or similar goods or

services.  The appellant is not in the business of selling milk or

milk  products  and  the  claim  made  by  it  is  with  regard  to  the

trading style for their restaurants’ name “NANDHINI”.  Therefore,

the goods or services of the appellant are neither identical, nor

similar, to those of the the respondent.

(c)   At  any  rate,  Section  11(2)  being  couched  in  negative

language indicates that it is mandatory nature and would override

the provisions of Section 12.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 34 of 47

(d)    Section  12  has  never  been  expressly  pleaded  by  the

appellant.  In any case, this contention has not been expressly

argued on behalf of the appellant before the lower fora.

23. We have duly considered the aforesaid submissions of both the

counsel with reference to the record of  the case.  Though the

detailed arguments are advanced touching upon various aspects,

it is not necessary to traverse through all these arguments.  We

proceed  on  the  presumption  that  the  trade  mark  ‘NANDHINI’,

which is  registered in  the name of  the appellant  has acquired

distinctiveness  though  the  appellant  disputes  the  same.

Otherwise also there is no challenge to the registration of  this

name in favour of the respondent.  The moot question, according

to us, is as to whether the appellant is entitled to seek registration

of the mark ‘NANDHINI’ in respect of the goods in which it is dealt

with, as noted above.  Therefore, the fulcrum of the dispute is as

to whether such a registration in favour of the appellant would

infringe  rights  of  the  respondent.   The  entire  case  of  the

respondent revolves around the submissions that the adaptation

of this trade mark by the appellant, which is phonetically similar to

that  of  the respondent,  is  not  a  bona fide  adaptation and this

clever device is adopted to catch upon the goodwill  which has

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been  generated  by  the  respondent  in  respect  of  trade  mark

‘NANDINI’.   On  that  premise,  the  respondent  alleges  that  the

proposed trade mark ‘NANDHINI’ for which the appellant applied

for registration is similar trade mark in respect of similar goods

and, therefore, it is going to cause deception and confusion in the

minds  of  the  users  that  the  goods  in  which  the  appellant  is

trading, in fact, are the goods which belong to the respondent.

Precisely, it is this controversy which needs to be addressed in

the first instance.

24. Before we answer as to whether the approach of the IPAB and

the High Court in the impugned orders is correct, as contended

by the respondent or it needs to be interdicted as submitted by

the appellant, some of the relevant facts about which there is no

dispute, need to be recapitulated. These are as follows:

(A) Respondent  started  using  trade  mark  in  respect  of  its

products, namely, milk and milk products in the year 1985.  As

against  that,  the  appellant  adopted  trade  mark  ‘NANDHINI’  in

respect of its goods in the year 1989.

(B) Though, the respondent is a prior user, the appellant also

had  been  using  this  trade  mark  ‘NANDHINI’  for  12-13  years

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before it applied for registration of these trade marks in respect of

its products.

(C) The goods of the appellant as well as respondent fall under

the same Classes 29 and 30.   Notwithstanding the same, the

goods of the appellant are different from that of the respondent.

Whereas the respondent is producing and selling only milk and

milk products the goods of the appellant are fish, meat,  poultry

and game, meat extracts, preserved, dried and cooked fruits and

vegetables, edible oils and fats, salad dressings, preserves etc.

and it has given up its claim qua milk and milk products.   

(D) Insofar as application for registration of the milk and milk

products  is  concerned,  it  was  not  granted  by  the  trade  mark

registry.   In  fact,  the  same  was  specifically  rejected.   The

appellant  was directed to file the affidavit  and Form 16 in  this

behalf to delete the goods ‘milk and milk products’ which affidavit

was  filed  by  the  appellant.   Further  concession  is  already

recorded above.   

(E)  NANDINI/NANDHINI is a generic, it represents the name of

Goddess and a cow in Hindu Mythology.  It is not an invented or

coined word of the respondent.

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(F) The nature and style of the business of the appellant and

the respondent are altogether different. Whereas respondent is a

Cooperative Federation of  Milk  Producers  of  Karnataka and is

producing  and  selling  milk  and  milk  products  under  the  mark

‘NANDINI’,  the  business  of  the  appellant  is  that  of  running

restaurants and the registration of mark ‘NANDHINI’ as sought by

the appellant is in respect of various foodstuffs sold by it  in its

restaurants.    

(G) 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 DELUXE’.  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

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similarity of the appellant’s mark with that of the respondent when

these marks are seen in totality.

25. When  we  examine  the  matter  keeping  in  mind  the  aforesaid

salient features, it is difficult to sustain the conclusion of the IPAB

in its order dated 4th October, 2011 as well in the impugned order

of  the High Court  that  the mark adopted by the appellant  will

cause any confusion in the mind of consumers, what to talk of

deception. We do not find that the the two marks are deceptively

similar.

26. We are of further opinion that the earlier order dated 20 th April,

2010  of  IPAB  approached  the  subject  matter  in  correct

perspective.   The test  laid down in  Polaroid  Corporation vs.

Polarad Electronics Corporation11 is as follows:     

“The  problem of  determining  how  far  a  valid  trademark shall be protected with respect to goods other than those to which its owner has applied it, has long been vexing and does not become easier of solution with the years. Neither of  our  recent  decisions  so  heavily  relied  upon  by  the parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co., Inc. v. David Crystal,  Inc.,  2 Cir.,  1960, 279 F.2d 607 by defendant,  affords much assistance,  since in  the Ritchie case there was confusion as to the identical product and the  defendant  in  the  Avon  case  had  adopted  its  mark "without knowledge of the plaintiffs' prior use," at page 611. Where the products are different, the prior owner's chance

11 287 F.2d 492 (1961)

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of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner  will  bridge  the  gap,  actual  confusion,  and  the reciprocal  of  defendant's  good  faith  in  adopting  its  own mark,  the  quality  of  defendant's  product,  and  the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities — the court may have to take  still  other  variables  into  account.  American  Law Institute,  Restatement  of  Torts,  §§  729,  730,  731.  Here plaintiff's mark is a strong one and the similarity between the  two  names  is  great,  but  the  evidence  of  actual confusion,  when  analyzed,  is  not  impressive.  The  filter seems to be the only case where defendant has sold, but not manufactured, a product serving a function similar to any of plaintiff's, and plaintiff's sales of this item have been highly  irregular,  varying,  e.  g.,  from  $2,300  in  1953  to $303,000 in 1955, and $48,000 in 1956.”

27.  This  Court  in  National  Sewing Thread Co.  Ltd.  vs.  James

Chadwick and Bros.12 accepted the following principles which

are to be applied in such cases:

“22.  The principles of law applicable to such cases are well settled.  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.  The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average  man  of  ordinary  intelligence,  would  react  to  a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would

12 AIR 1953 SC 357

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connect the trade mark with the goods which he would be purchasing.”

28. Applying the aforesaid principles to the instant  case, when we

find that not only visual appearance of the two marks is different,

they even relate to different  products.   Further,  the manner  in

which  they  are  traded  by  the  appellant  and  respondent

respectively,  highlighted above, it  is  difficult  to imagine that  an

average man of ordinary intelligence would associate the goods

of the appellant as that of the respondent.

29. One other significant factor which is lost sight of by the IPAB as

well  as  the  High  Court  is  that  the  appellant  is  operating  a

restaurant under the trademark ‘NANDHINI’ and it  had applied

the trademark in respect of goods like coffee, tea, cocoa, sugar,

rice, rapioca, sago, artificial coffee, flour and preparations made

from  cereals,  bread,  pastry,  spices,  bill  books,  visiting  cards,

meat, fish, poultry and game; meat extracts; preserved, dried and

cooked  fruits  and  vegetables;  jellies,  jams,  fruit  sauces,  etc.

which are used in the products/services of restaurant business.

The aforesaid items do not belong to Class 29 or 30.  Likewise,

stationery items used by the appellant in the aid of its restaurant

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services are relatable to Class 16.  In these circumstances, there

was hardly any question of confusion or deception.

30. Having arrived at the aforesaid conclusion, 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.   On  the  contrary,  this  Court  in  Vishnudas

Trading as Vishnudas Kushandas2 has decided otherwise as

can be seen from the reading of para 47 of the said judgment:-

“47. The  respondent  Company  got  registration  of  its brand name “Charminar” under the broad classification “manufactured  tobacco”.  So  long  such  registration remains operative, the respondent Company is entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification “manufactured tobacco”. Precisely for the said reason,  when the appellant  made application  for registration of quiwam and zarda under the same brand name “Charminar”, such prayer for registration was not allowed. The appellant, therefore, made application for rectification  of  the registration  made in  favour  of  the respondent  Company  so  that  the  said  registration  is limited  only  in  respect  of  the  articles  being manufactured  and  marketed  by  the  respondent Company, namely, cigarettes. In our view, if a trader or manufacturer  actually  trades  in  or  manufactures  only one  or  some  of  the  articles  coming  under  a  broad classification and such trader or manufacturer  has no bona  fide  intention  to  trade  in  or  manufacture  other goods or articles which also fall  under the said broad

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 42 of 47

classification, such trader or manufacturer should not be permitted  to  enjoy  monopoly  in  respect  of  all  the articles which may come under such broad classification and  by  that  process  preclude  the  other  traders  or manufacturers from getting registration of separate and distinct  goods  which  may also  be  grouped under  the broad  classification.  If  registration  has  been  given generally in respect of all the articles coming under the broad  classification  and  if  it  is  established  that  the trader or manufacturer who got such registration had not intended to use any other article except the articles being  used  by  such  trader  or  manufacturer,  the registration  of  such trader  is  liable  to  be  rectified by limiting  the  ambit  of  registration  and  confining  such registration to the specific article or articles which really concern  the  trader  or  manufacturer  enjoying  the registration  made  in  his  favour.  In  our  view,  if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules  framed  thereunder,  it  appears  to  us  that registration  of  a  trade  mark  cannot  be  held  to  be absolute,  perpetual  and  invariable  under  all circumstances.  Section 12 of the Trade Marks Act prohibits registration of  identical  or  deceptively similar  trade  marks  in  respect  of  goods  and description  of  goods  which  is  identical  or deceptively  similar  to  the  trade  mark  already registered.  For  prohibiting  registration  under Section  12(1),  goods  in  respect  of  which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same  or  similar  and  covered  by  earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It  may be noted here that under sub-section (3) of Section 12 of the Trade Marks Act,  in  an appropriate  case of honest  concurrent  use  and/or  of  other  special circumstances,  same  and  deceptively  similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just  and proper  to  the Registrar. It  is  also  to  be noted that the expression “goods” and “description of goods” appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 43 of 47

one or more goods or of all goods conforming a general description.  The  Trade  Marks  Act  has  noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other sections e.g.  goods  of  same  description  in  Section  46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act.

48. The “class” mentioned in the Fourth Schedule may subsume  or  comprise  a  number  of  goods  or  articles which  are  separately  identifiable  and  vendible  and which  are  not  goods  of  the  same  description  as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of Fourth Schedule of the Rules but within the said class, there are a number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if  in reality registration only in respect of  such articles  is  intended,  by  specifically  mentioning  the names of such articles and by indicating the class under which such article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other  specific  products  made  of  “manufactured tobacco” as mentioned in Class 34 of Fourth Schedule of the  Rules.  In  our  view,  the  contention  of  Mr Vaidyanathan that in view of change in the language of Section 8 of the Trade Marks Act as compared to Section 5  of  the  Trade Marks  Act,  1940,  registration  of  trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and Fourth Schedule of the Rules.”

31. We  may  mention  that  the  aforesaid  principle  of  law  while

interpreting the provisions of Trade and Merchandise Act, 1958 is

equally  applicable  as it  is  unaffected by the Trade Marks Act,

1999 inasmuch as the main object underlying the said principle is

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 44 of 47

that the proprietor of a trade mark cannot enjoy monopoly over

the entire class of goods and, particularly, when he is not using

the said trade mark in respect of certain goods falling under the

same class.  In this behalf, we may usefully refer to Section 11 of

the Act which prohibits the registration of the mark in respect of

the  similar  goods or  different  goods but  the provisions  of  this

Section do not cover the same class of goods.

32. The aforesaid discussion leads us to hold that all the ingredients

laid down in Section 11(2) of the Act, as explained by the Delhi

High Court in Nestle India Ltd., have not been satisfied.  We are

not persuaded to hold, on the facts of this case, that the appellant

has adopted the trade mark to take unfair advantage of the trade

mark of the respondent.  We also hold that use of ‘NANDHINI’ by

appellant  in  respect  of  its  different  goods  would  not  be

detrimental to the purported distinctive character or repute of the

trade mark of the respondent.  It is to be kept in mind that the

appellant had adopted the trade mark in respect of items sold in

its restaurants way back in the year 1989 which was soon after

the  respondent  had  started  using  the  trade  mark  ‘NANDINI’.

There is no document or material produced by the respondent to

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 45 of 47

show  that  by  the  year  1989  the  respondent  had  acquired

distinctiveness in respect of this trade mark, i.e., within four years

of the adoption thereof.  It,  therefore, appears to be a case of

concurrent user of trade mark by the appellant.

33. There is some force in the argument of learned counsel for the

appellant that IPAB while passing orders dated 4th October, 2011

ignored its earlier order, of a Coordinate Bench, passed on 20 th

April,  2010.  Appeal in which order dated 20th April,  2010 was

passed was between the same parties on identical issue.  The

IPAB had dismissed the said appeal of the respondent and that

order had attained finality.  Prima facie, this would act as an issue

of estoppel between the parties (see the Bhanu Kumar Jain vs.

Archana  Kumar  and  Anr.  [(2005)  1  SCC  787];   Hope

Plantations  Ltd.  vs.  Taluk  Land  Board,  Peermade  and

Another, [(1999) 5 SCC 590)].  However, as we are holding that

the  impugned  orders  of  the  IPAB  and  High  Court  are  not

sustainable in law and have decided these appeals on merits it is

not necessary to make any further comments on the aforesaid

aspect.

Civil Appeal Nos. 2937-2942 of 2018 with Ors. Page 46 of 47

34. As a result, the orders of the IPAB and High Court are set aside.

These appeals are allowed and the order of the Deputy Registrar

granting registration in favour of the appellant is hereby restored,

subject to the modification that registration will  not be given in

respect of those milk and milk products for which the appellant

has abandoned its claim, as noted in para 18(vii) above.   

35. In  the  peculiar  facts  of  this  case,  we  refrain  ourselves  from

awarding any costs.  

.............................................J. (A.K. SIKRI)

.............................................J. (ASHOK BHUSHAN)

NEW DELHI; JULY 26, 2018.

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