In present case, the respondent had adopted the device mark “NANDINI” in 1985 for selling milk and milk products. The mark was registered in Class 29 and 30. The appellant on the other hand adopted similar device mark in 1989 for its restaurant business and applied for the mark in respect of various foodstuff items sold by its restaurant. The logo of both the marks is given below for clarity.
Herein the respondent had opposed the registration of the mark which was dismissed by the Registrar allowing the registration of the mark of the appellant in 2007. An appeal was then filed in the IPAB and later in the High Court against the registration of the appellant’s mark where it was held that the respondent’s mark had acquired a distinct character and the goods under both the marks fall under the same class and therefore, the average consumer would conclude that the goods manufactured by the appellant belonged to the respondent.
Consequently an appeal was then made in the Apex Court, wherein, the division bench while examining both the marks, firstly laid down the important facts as follows:
- Though the respondent is a prior user (since 1985), the appellant also had been using this trade mark ‘NANDHINI’ for 12-13 years (since 1989).
- The goods of the appellant as well as respondent fall under the same Classes 29 and 30, however, the goods of the appellant are different from that of the respondent.
- NANDINI/NANDHINI is a generic term, it represents the name of Goddess and a cow in Hindu Mythology. It is not an invented or coined word of the respondent.
- The nature and style of the business of the appellant and the respondent are altogether different.
The Apex Court further observed 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 DELUXE’”, “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 Apex Court upholding the principles laid down in Polaroid Corporation and National Sewing Thread Co. Ltd cases, held that:
- not only visual appearance of the two marks is different, they even relate to different products
- 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
- in respect of goods or description of goods being same or similar and covered by earlier registration and
- 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 trademarks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar.
- Finally, it was held 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”.
The Apex Court stating that present case to be of concurrent user by the appellant set aside the order of the IPAB and the Karnataka High Court.
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