The Madras High Court on Monday set aside a 2010 order of the Trade Marks Registry that had rejected Karnataka Milk Federation’s (KMF) opposition to the registration of the mark ‘nandini’ for agarbattis and dhoops [Karnataka Cooperative Milk Producers Federation Limited v. Vinod Kanji, Shah and Nitin].
Justice N Anand Venkatesh held that the proposed mark was deceptively similar to KMF’s long-standing ‘NANDINI’ trademark, used to market its milk and milk products, and was likely to mislead consumers due to phonetic identity and identical style of writing.
The Court allowed the appeal under Section 91 of the Trade Marks Act, 1999, and overturned the order passed by the Deputy Registrar of Trade Marks on April 5, 2010.
KMF is a federation of milk producers in Karnataka and has been using the mark ‘NANDINI’ for milk and dairy products since 1983. The mark is registered and enjoys widespread recognition in Karnataka and neighbouring States.
The dispute arose when Shalimar Agarbatti Company, trading under the names Vinod Kanji Shah and Nitin Kanji Shah, sought registration of the mark ‘nandini’ in Class 3 for agarbattis and dhoops.
KMF opposed the application under Sections 9, 11, 11(a) and 18 of the Trade Marks Act, contending that the mark was deceptively similar to the dairy brand's mark and would cause confusion.
The Trade Marks Registry rejected the opposition, holding that ‘nandini’ was a personal name, that no exclusivity could be claimed over it, and that the rival goods were different.
The High Court disagreed.
Justice Anand Venkatesh noted that there was no dispute that KMF was the registered proprietor of the ‘NANDINI’ mark and had built substantial goodwill over decades.
The Court found that the agarbatti manufacturer had adopted the same word ‘nandini’ with no prefix or suffix to set it apart, and with the same style of writing and phonetic identity. This could easily mislead customers familiar with KMF's 'nandini' products, the Court held.
“Phonetically, the word ‘nandini’ is the same and it has also been written in the same style in the offending mark of the first respondent ... The phonetic similarity and the manner in which the first respondent has written the word ‘nandini’ as its mark would certainly make the offending mark deceptively similar and a customer, who is well versed with the mark of the appellant, will be certainly misled by the style adopted by the first respondent in writing the word ‘nandini’ and also its phonetic resemblance," the January 19 ruling states.
The Court also distinguished the Supreme Court’s 2018 decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. In that case, the Supreme Court had permitted the use of ‘NANDHINI DELUXE’ by another company. This was after the top court noted certain features which distinguished the proposed mark from KMF's mark, such as the addition of a suffix (‘DELUXE’), a unique logo and a distinct trade dress.
Justice Venkatesh noted that those distinguishing features were absent in the present case.
He observed that, unlike Nandhini Deluxe, the present applicant had used only ‘nandini’, without any modification, and in the same visual style as KMF's mark.
The Court concluded that the Trade Marks Registry had failed to consider these crucial aspects and had erroneously rejected KMF’s opposition.
“This Court finds that the second respondent (trademark registry) has not taken into consideration the above crucial aspects and has erroneously rejected the opposition filed by the appellant," it said while allowing KMF's appeal.
KMF was represented by Senior Advocate S Ravi with Advocates A Venkatesh Kumar, R Sanjeev and A Shravan
The Trade Marks Registry was represented by Senior Panel Counsel J Madanagopal Rao.
[Read Judgment]