Madras High Court Sets Aside Registry Order, Protects ‘NANDINI’ Dairy Trademark From Agarbatti Use
Madras High Court Sets Aside Registry Order, Protects ‘NANDINI’ Dairy Trademark From Agarbatti Use
Introduction
The Madras High Court has upheld Karnataka Milk Federation’s (KMF) opposition to the registration of the trademark “nandini” for agarbattis and dhoops, holding that the proposed mark was deceptively similar to KMF’s well-established “NANDINI” trademark used for milk and dairy products. The Court found that phonetic identity and identical visual presentation were likely to mislead consumers, warranting rejection of the rival trademark application.
Factual Background
Karnataka Cooperative Milk Producers Federation Limited (KMF) is a federation of milk producers in Karnataka and the registered proprietor of the trademark “NANDINI.” The mark has been continuously used since 1983 for milk and dairy products and enjoys widespread reputation and goodwill in Karnataka and neighbouring States.
The dispute arose when Shalimar Agarbatti Company, trading under the names Vinod Kanji Shah and Nitin Kanji Shah, applied for registration of the mark “nandini” in Class 3 for agarbattis and dhoops. The proposed mark used the same word without any distinguishing prefix or suffix.
Procedural Background
KMF opposed the trademark application before the Trade Marks Registry under Sections 9, 11, 11(a) and 18 of the Trade Marks Act, 1999, contending that the mark was deceptively similar to its registered trademark and likely to cause confusion.
Moreover, by an order dated April 5, 2010, the Deputy Registrar of Trade Marks rejected KMF’s opposition, holding that “nandini” was a personal name, that exclusivity could not be claimed over it, and that the rival goods were dissimilar.
Aggrieved by the rejection of its opposition, KMF filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Madras High Court.
Issues
1. Whether the proposed mark “nandini” was deceptively similar to KMF’s registered “NANDINI” trademark.
2. Whether registration of “nandini” for agarbattis and dhoops was likely to cause confusion or deception among consumers.
3. Whether the Trade Marks Registry erred in rejecting KMF’s opposition despite the established goodwill of the “NANDINI” mark.
Contentions of the Parties
KMF argued that it was the registered proprietor of the “NANDINI” trademark and that decades of continuous use had conferred substantial goodwill and reputation on the mark. It contended that the respondent’s adoption of the identical word, written in the same style and with identical phonetics, would mislead consumers into believing an association with KMF.
The agarbatti manufacturer contended that “nandini” was a common or personal name over which no monopoly could be claimed, and that the goods agarbattis and dhoops were entirely different from milk and dairy products.
Reasoning and Analysis
The Court noted that there was no dispute regarding KMF’s status as the registered proprietor of the “NANDINI” trademark or the goodwill it had acquired over decades of use.
Justice N. Anand Venkatesh found that the respondent had adopted the word “nandini” without any distinguishing element, and that the phonetic identity and visual presentation were identical to KMF’s mark. The Court held that such adoption was likely to mislead consumers familiar with KMF’s products.
The Court rejected the Registry’s reasoning that “nandini” being a personal name negated exclusivity, observing that the decisive factor was deceptive similarity and likelihood of confusion, not the origin of the word.
The Court also distinguished the Supreme Court’s decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., noting that in that case the mark “NANDHINI DELUXE” was permitted due to clear distinguishing features such as a suffix, distinct logo, and trade dress. Those distinguishing features were entirely absent in the present case.
The High Court held that the Trade Marks Registry failed to consider these crucial aspects and had erroneously rejected KMF’s opposition.
Decision
The Madras High Court allowed KMF’s appeal, set aside the 2010 order of the Trade Marks Registry, and upheld KMF’s opposition to the registration of the mark “nandini” for agarbattis and dhoops. The Court held that the proposed mark was deceptively similar to KMF’s “NANDINI” trademark and was likely to cause consumer confusion.
In this case the plaintiff was represented by Senior Advocate S Ravi with Advocates A Venkatesh Kumar, R Sanjeev and A Shravan.
