1. Dispute over registration of phonetically similar trademarks for different goods within the same classification under the Trade Marks Act, 1999. (Para 1 , 2 , 3 , 6 , 7 , 14 , 24 )
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2018 Supreme(SC) 737
SUPREME COURT OF INDIA
A.K. SIKRI, ASHOK BHUSHAN, JJ.
M/s. Nandhini Deluxe - Appellant
Versus
M/s. Karnataka Co-Operative Milk Producers Federation Ltd. - Respondent
Civil Appeal Nos. 2937-2942 & 2943-2944 of 2018
Decided On : 26-07-2018
Important Points
IMPORTANT POINTS
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.
Judgment of coordinate Bench attaining finality would act as estoppel between the parties in subsequent proceedings.
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.
Judgment of coordinate Bench attaining finality would act as estoppel between the parties in subsequent proceedings.
Subject
Intellectual Property Law - Trademarks
Act Referred
ENGLISH ACT: S.11, S.12(1)
TRADE MARKS ACT: S.18(1), S.9, S.11, S.12, S.8
TRADE MARKS ACT: S.18(1), S.9, S.11, S.12, S.8
Headnote
Trade Marks Act, 1999 – Section 11 and 18 r/w Class 29 and Class 30, Schedule IV, Trade Marks Rules, 2002 – Though having phonetic similarity the trade mark with logo adopted by the two parties altogether different – The two marks relating to different products – Products not belonging to same class – 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 – Held, mark adopted by appellant will not cause any confusion and he is a concurrent user of the trade mark. (Para 24, 25, 28, 29, 32)
(1997) 4 SCC 201; AIR 1953 SC 357 – Relied upon
(2010) 42 PTC 514 (Del) (DB) – Cited with approval
1996 SCALE (5) 267; MANU/TN/3041/2011; (1996) RPC 281 (CH); (1964) 2 SCR 211; 182 F. Supp. 350 (1960); (2015) 221 DLT 359; (2001) 5 SCC 73 – Referred
Estoppel – Judgment of coordinate Bench attaining finality – Would act as estoppel between the parties in subsequent proceedings. (Para 33)
(2005) 1 SCC 787; (1999) 5 SCC 590 – Relied upon
Facts of the case:
The dispute in this appeal pertains to the use of mark ‘NANDHINI’. The respondent herein, which is a Cooperative Federation of the Milk Producers of 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.
The respondent filed appeals before the Intellectual Property Appellate Board Chennai which were allowed and the writ petitions filed by the appellant there against have been dismissed by the High Court.
Finding of the Court:
Mark adopted by appellant will not cause any confusion and he is a concurrent user of the trade mark.
Result: Appeals allowed.
Legal Category Hierarchy
- intellectual property law
- practice and procedure
Table of Contents
2. Whether a well-known trademark prevents registration of a similar mark for different goods in the same class or if honest concurrent use permits registration. (Para 18 , 19 , 20 , 21 , 22 )
3. Marks are visually distinct and relate to different products; a trademark proprietor cannot claim monopoly over an entire class of goods without using the mark for all items. (Para 23 , 24 , 25 , 26 , 27 , 28 , 29 , 32 )
4. Registration of a similar mark for distinct goods within the same class is permissible if there is no likelihood of confusion and no monopoly over the entire class. (Para 30 , 31 )
5. Appeals allowed; orders of the IPAB and High Court set aside; registration granted for the appellant, excluding milk and milk products. (Para 34 )
6. Can a trademark proprietor claim exclusive rights over an entire class of goods if they only trade in a few items within that class?
No. A proprietor cannot enjoy a monopoly over an entire class of goods if they do not use the mark for all items in that class, as this would lead to trafficking in trademarks and preclude other traders from registering distinct goods within the same class. (Para 30 , 31 )
7. What factors determine whether two marks are deceptively similar when the products are different?
The court considers variables including the strength of the mark, degree of similarity between marks, proximity of products, likelihood of the prior owner bridging the gap, actual confusion, the defendant's good faith in adoption, product quality, and the sophistication of the buyers. (Para 26 , 27 , 28 )
8. When does Section 11(2) of the Trade Marks Act, 1999 prohibit registration of a similar mark for dissimilar goods?
Registration is prohibited if the mark is identical or similar to an earlier trademark, the earlier mark has a reputation in India, the use of the later mark is without due cause, and such use takes unfair advantage of or is detrimental to the earlier mark's distinctive character. (Para 20 , 21 , 32 )
9. Can a name of a deity or a generic term be registered as a trademark?
Yes, provided the mark has acquired secondary distinctiveness through use. There is no general prohibition against using the name of a God unless the mark contains matter likely to hurt the religious susceptibilities of any class of citizens under Section 9(2)(b). (Para 7 , 20 , 24 )
JUDGMENT :
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 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 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 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 :-
“Image”
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
