The case of Nandhini Deluxe vs. M/S. Karnataka Cooperative Milk Producers Federation Ltd. is a significant trademark dispute adjudicated by the Supreme Court of India on July 26, 2018. The central issue revolved around the use and registration of the trademark "NANDHINI" by the appellant, a restaurant business, in the face of opposition from the respondent, a cooperative federation known for its milk and milk products sold under the phonetically similar trademark "NANDINI." This case exemplifies the application of trademark law principles under the Trade Marks Act, 1999, particularly concerning distinctiveness, likelihood of confusion, and the scope of monopoly over a class of goods. It underscores the balance between protecting established trademarks and allowing fair use by others in different trade contexts.
Detailed Factual Background

Detailed Factual Background

Respondent's Business and Trademark: The respondent, Karnataka Cooperative Milk Producers Federation Ltd., adopted the trademark "NANDINI" in 1985 for its milk and milk products. The mark, registered under Classes 29 and 30 of the Trade Marks Rules, 2002, featured a logo of a cow with the word "NANDINI" in an egg-shaped circle. Over the years, the respondent claimed that "NANDINI" had become a well-known mark and a household name in Karnataka, akin to "Amul" in Gujarat, due to its extensive use and promotion. Appellant's Business and Trademark: The appellant, M/S. Nandhini Deluxe, began using the trademark "NANDHINI" in 1989 for its restaurant business in Bangalore and one location in Tamil Nadu.

The mark was stylized as "NANDHINI DELUXE" with a lamp device and the tagline "the real spice of life," applied to foodstuffs like meat, fish, poultry, fruits, vegetables, edible oils, and spices sold in its restaurants. The appellant sought registration of this mark under Classes 29 and 30, among others, but explicitly excluded milk and milk products from its claim. Nature of the Marks: Both "NANDINI" and "NANDHINI" are phonetically similar, differing only by one letter ("H"). However, their visual representations, logos, and business contexts were distinct. "NANDINI/NANDHINI" is a generic term in Hindu mythology, referring to a goddess and a cow, and is not an invented word. Timeline: The respondent's use predated the appellant's by four years (1985 vs. 1989). By the time the appellant applied for registration in the early 2000s, it had used "NANDHINI" for over a decade.

Detailed Procedural Background

• Initial Application and Opposition: Appellant applied under Classes 29 and 30. Respondent opposed, alleging deceptive similarity and acquired distinctiveness.
• Deputy Registrar's Decision (2007): Objection dismissed, finding no confusion; registration granted excluding milk products.
• IPAB Order (April 20, 2010): Upheld Deputy Registrar's view citing Vishnudas Trading.
• IPAB Order (October 4, 2011): Reversed earlier order, accepted respondent's claims of well-known mark and confusion.
• High Court Decision (2014): Dismissed appellant's writ petitions, upheld IPAB ruling.
• Supreme Court Appeals: Appellant challenged the IPAB and High Court decisions.

Issues Involved in the Case

• Likelihood of confusion between "NANDINI" and "NANDHINI"
• Whether "NANDINI" is a well-known mark under Section 11(2)
• Scope of monopoly under Classes 29 and 30
• Applicability of honest concurrent use under Section 12
• Proper application of Sections 9, 11, and 12 of the Trade Marks Act, 1999

Detailed Submission of Parties

Appellant's Submissions:

• No likelihood of confusion due to different goods and trade channels
• Vishnudas Trading limits monopoly to specific goods
• "NANDINI" not proven as a well-known mark (Nestle India test)
• Honest use since 1989; offered to exclude milk products
• "NANDHINI" is a generic deity name

Respondent's Submissions:

• "NANDINI" is well-known and deserves protection
• Phonetic similarity in same classes will cause confusion
• Appellant adopted mark dishonestly
• Deity argument doesn't prevent registration under Section 9(2)(b)
• Section 11(2) overrides Section 12

Judgments Cited

• Vishnudas Trading v. Vazir Sultan Tobacco Ltd.: No monopoly over an entire class
• British Sugar Plc v. James Robertson: Distinction between similar goods and confusion
• Nestle India Ltd. v. Mood Hospitality: Criteria for well-known mark
• Polaroid Corp. v. Polarad Electronics: Multiple factors to assess confusion
• National Sewing Thread Co. Ltd. v. James Chadwick: Focus on average consumer's perception
• London Rubber Co. Ltd. v. Durex Products: Burden of proving no deception lies with applicant

Detailed Reasoning and Analysis of Judge

• Marks are phonetically similar but visually and contextually distinct
• Different goods and trade channels reduce risk of confusion
• "NANDHINI" is not deceptively similar; visual and trade differences matter
• Vishnudas Trading limits class-based monopolies
• Respondent failed to prove "NANDINI" is well-known per Nestle India
• Long use by appellant qualifies as honest concurrent use under Section 12
• Inconsistencies in IPAB decisions noted

Final Decision

The Supreme Court allowed the appeals, set aside the High Court and IPAB orders, and restored the Deputy Registrar's registration grant, with the appellant's concession to exclude milk and milk products.

Case Title: Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.
Date of Order: July 26, 2018
Case No.: Civil Appeal Nos. 2937-2942 of 2018 with Civil Appeal Nos. 2943-2944 of 2018
Neutral Citation: AIR 2018 Supreme Court 3516, (2018) 9 SCC 183
Name of Court: Supreme Court of India
Name of Judge: Hon'ble Shri A.K. Sikri and Shri Ashok Bhushan)

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539