TaxTMI 
TaxTMI 
2018 (7) TMI 2176
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....oducts. 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.....
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....ilk 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 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 r....
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....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 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 m....
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....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 20th April, 2010. The IPAB referred to the judgment of this Court in Vishnudas Trading as Vishnudas Kushandas v. The Vazir Sultan Tobacco Ltd. and Anr. 1996 SCALE (5) 267 and quoted the f....
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....quest 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. 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 4th 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....
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....e 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 4th October, 2011 of the IPAB and dismissing the writ petitions of the Appellant herein has done nothing except accepting the aforesaid reasoning of the 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....
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....rounds of decision, the order proceeds only Under Section 11 and not Under Sections 9 and 11 of the Act. (b) British Sugar Plc v. James Robertson & Sons Ltd. (1996) RPC 281 (CH): (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 arg....
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....ration (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 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 res....
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.... a well-known inasmuch as such finding was without any supporting material. In this behalf, he attempted to show that there was no 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. (2010) 42 PTC 514 (Del) (DB). (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 deity 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....
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....al 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 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 Regist....
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....usceptibilities 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 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....
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.... 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 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 ....
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....f 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 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 i....
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..... 27. This Court in National Sewing Thread Co. Ltd. v. James Chadwick and Bros. AIR 1953 SC 357 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 connect the trade mark with the goods which he would be purchasing. 28. Applying the a....
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.... 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 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 tra....
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....ble 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 appre....
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....d Anr. [MANU/SC/1079/2004 : (2005) 1 SCC 787]; Hope Plantations Ltd. v. Taluk Land Board, Peermade and Anr., [MANU/SC/0686/1998 : (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. 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. 1 Section 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 ....
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...., the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. (3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented (a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or (b) by virtue of law of copyright. (4) Nothing in this Section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances Under Section 12. Explanation.--For the purposes of this section, earlier trade mark means-- (a) a registered trade mark or convention application referred to in Section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks; (b) a trade mark which, on the date of the application for registration of th....
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....rade 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. (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 tra....