Case Name : M/s. Nandhini Deluxe vs MS. Karnataka Co-operative Milk Producers Federation Ltd.
Case Reference: (2018) 11 SCR 275 :
Neutral Citation:
Case Number: CA 2937-2942/2018
Court: Supreme Court
Bench: 02
Coram: AK Sikri, Ashok Bhushan
Date: 26.07.2018
Facts (para 24)
- Respondent used mark for dairy products
- Appellant used mark for fish, meat, poultry, game, meat extracts, preserved/dried/cooked fruits & vegetables, edible oils & fats, salad dressings, preserves - giving up claim qua milk
- NADINI/NANDHINI (mark) - generic name; not invented/coined work of respondent
- Nature and style of business of parties different
- Respondent : Milk Co-operative Federation
- Appellant : Restaurants
- Though phonetic similarity as to name; logo adopted is different (cow 🐄 vs lamp 🪔)
Assessment for marks being deceptive or confusing
Assessment of average man of ordinary intelligence associating goods (Paras 28-29) 1) Visual appearance of marks is different 2) Manner in which goods are traded is different (milk vs restaurant (food/stationary))
Respondent must show distinctiveness in trademark (Para 32)
Same Class but different goods
Principles in Vishnudas Trading vs Vazir Sultan Tobacco are applicable to TM Act
- Proprietor of trade mark cannot enjoy monopoly over entire class of goods
- Especially when he is not using trade mark in respect of some goods in same class (Paras 30-32)
Genus vs Class
Distinction between : (Para 30 at 307- B/C)
- Description of goods forming a genus; and
- E.g. Same description in sections 46, 12, 34
- Separate and distinctly identifiable goods under genus in other sections
- E.g. Class of goods in sections 18, Rules 12, 26 read with Fourth Schedule Explanation of “Class” (Para 30 at 307-C/D to G/H)
Same Class - Concurrent User
Concurrent user of trade mark (Para 30 at 306-G/307-A)
Registration can be prohibited for subsequent registration when : 1) the goods, or the description of goods is same or similar and covered by earlier registration; 2) trade mark is same or deceptively similar to mark already registered
Burden of proving that mark is not likely to deceive or cause confusion
Burden of satisfying to the Registrar that the mark is not likely to deceive or cause confusion, falls upon the applicant (Para 27)
– Refer also: Vishnudas Trading vs Vazir Sultan Tobacco National Sewing Thread vs James Chadwick, AIR 1953 SC 357
See also: TM 1958 - Section 8 TM 1958 - Section 12
PDF: Nandhini Deluxe vs Karnataka Co-operative Milk Producers Federation, (2018) 11 SCR 275.pdf