The Supreme Court recently ruled that a proprietor of a trademark cannot enjoy a monopoly over an entire class of goods, particularly when the trademark is not in use in respect of goods that fall under the same class.
In M/S Nandini Deluxe v Karnataka Co-Operative Milk Producer’s Federation Ltd, the Karnataka Co-Operative Milk Producer’s Federation (KMF), which has been producing and selling dairy products since 1985, obtained registration for their mark Nandini. The appellant, Nandini Deluxe, which has been running a chain of restaurants since 1989 under the name of Nandhini, applied for registration of the mark Nandhini in respect of various foodstuffs sold in its restaurants.
Despite objections filed by KMF, the deputy registrar of trademarks allowed the registration. However, this was set aside by the Intellectual Property Appellate Board and Karnataka High Court later confirmed the decision in favour of KMF. The court held that when Nandini acquired a distinctive character and became well known, the use of a mark with a different spelling would likely cause confusion among the public.
On appeal before the Supreme Court, the court compared the two marks and observed that not only was the visual appearance of the marks different, but they also related to different products. Moreover, the font used by the company to write Nandhini was different from the style of KMF.
The court held that there was no deceptive similarity between the two marks and allowed the registration in favour of Nandhini Deluxe excluding the category held by KMF and set aside the orders of the IPAB and Karnataka High Court.
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