The Madras High Court set aside a 2010 Trade Marks Registry order, holding ‘nandini’ for agarbattis deceptively similar to KMF’s ‘NANDINI’ dairy trademark. Justice N Anand Venkatesh ruled the phonetic identity and presentation could mislead consumers.
CHENNAI: The Madras High Court set aside 2010 decision made by the Trade Marks Registry that dismissed the Karnataka Milk Federation’s (KMF) opposition to the registration of the mark ‘nandini’ for agarbattis and dhoops.
Justice N Anand Venkatesh ruled that the proposed mark was deceptively similar to KMF’s established ‘NANDINI’ trademark, associated with its milk and dairy products, and could confuse consumers due to its phonetic resemblance and identical presentation.
The Court accepted the appeal under Section 91 of the Trade Marks Act, 1999, annulling the order issued by the Deputy Registrar of Trade Marks on April 5, 2010.
KMF, which is an association of milk producers in Karnataka, has been utilizing the ‘NANDINI’ mark for its milk and dairy products since 1983. This mark is registered and widely recognized across Karnataka and neighboring states.
The conflict emerged when Shalimar Agarbatti Company, operating under the names Vinod Kanji Shah and Nitin Kanji Shah, applied for the registration of the mark ‘nandini’ in Class 3 for agarbattis and dhoops. KMF opposed this application, asserting under Sections 9, 11, 11(a), and 18 of the Trade Marks Act that the mark was deceptively similar to KMF’s well known dairy brand, which could lead to consumer confusion.
However, the Trade Marks Registry dismissed KMF’s opposition, claiming that ‘nandini’ was merely a personal name, thus not warranting exclusivity, and also concluded that the competing goods were different.
The High Court disagreed with this judgment.
Justice Anand Venkatesh remarked that there was no contention regarding KMF being the registered owner of the ‘NANDINI’ mark and having developed considerable goodwill over the years. The Court observed that the agarbatti manufacturer’s use of the same word ‘nandini’, without any distinguishing prefixes or suffixes, along with the identical style of writing, could mislead consumers familiar with KMF’s ‘nandini’ products.
The Court stated,
“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 Court also differentiated this case from the Supreme Court’s 2018 ruling in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. In that instance, the Supreme Court allowed the use of ‘NANDHINI DELUXE’ by another party, noting distinguishing features such as the addition of a suffix (‘DELUXE’), a unique logo, and a distinct trade dress.
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Justice Venkatesh pointed out that those distinguishing features were lacking in the current situation. He noted that, in contrast to Nandhini Deluxe, the present applicant had used only ‘nandini’, without any modifications, and in the same visual style as KMF’s mark.
The Court determined that the Trade Marks Registry overlooked these important factors, leading to the incorrect dismissal of KMF’s opposition.
It stated while granting KMF’s appeal,
“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,”
KMF was represented by Senior Advocate S Ravi, alongside Advocates A Venkatesh Kumar, R Sanjeev, and A Shravan, while the Trade Marks Registry was represented by Senior Panel Counsel J Madanagopal Rao.
Case Title: Karnataka Cooperative Milk Producers Federation Limited v. Vinod Kanji, Shah and Nitin
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