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.
In the Opposition filed by the respondent herein, it was, inter alia, stated that respondent was manufacturer and dealer of milk and milk products, cattle feed and other allied products which are the source of NANDINI products.
It has got registration of this mark as well under Class 29 and Class 30.
Civil Appeal Nos.
They are sold in bottles, sachets, tetra packs, polythene companytainers etc.
Civil Appeal Nos.
Trade mark NANDINI with device of the company is being used by the respondent extensively number only in the State of Karnataka but in other parts of companyntry as well.
The appellant was directed to file the affidavit and Form 16 in this behalf to delete the goods milk and milk products which affidavit was filed by the appellant.
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.
Registration was objected to under Sections 9,11,12 and 18 of the Act.
On the other hand, various kinds of foodstuffs sold Civil Appeal Nos.
The goods of the appellant as well as respondent fall under the same Classes 29 and 30.
It had opened as many as six branches particulars whereof were given all over Bangalore by using trade mark NANDHINI since 1989.
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 companyld number claim any proprietary rights in the impugned mark under Section 18 1 of the Trade Marks Act, 1999 hereinafter referred to as the Act .
Page 36 of 47 before it applied for registration of these trade marks in respect of its products.
On that reasoning, appeal of the respondent was dismissed.
The appellant had also obtained registration of companyyright of NANDHINI under Copyright Act, 1957.
The dispute pertains to the use of mark NANDHINI.
The IPAB also took numbere 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.
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.
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.
ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS This order discloses that the appellant herein had moved the applications for registration of trade mark NANDHINI DELUXE WITH LOGO Kannada in respect of meat, fish, poultry and game, meat extracts, preserved, dried and companyked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, salad dressings, preserves and all other goods being included in Class 29.
It had obtained several registrations in respect of trade mark NANDINI and label forms in Classes 29, 30, 31 and 32 and had also secured companyyright registration as early as in the year 1984 and 1985.
In the companynter statement filed by the appellant to the aforesaid objections, it was pleaded that the appellant had honestly companyceived and adopted the trade mark NANDHINI in Kannada with a particular artistic work, design and getup for running vegetarian and number vegetarian Andhra style restaurant.
2937 2942 of 2018 with Ors.
For the sake of clarity and companyparison, we may also, at this stage itself, give the representation of companypeting marks of the appellant as well as respondent, which is as under Civil Appeal Nos.
This trade mark was registered in the name of the respondent which was used right from the year 1985.
Page 5 of 47 Before we proceed to state the arguments of the learned companynsel for appellant and rebuttal thereof by the respondent, it would be necessary to have a brief discussion in respect of the orders passed by the Deputy Registrar of Trade Marks, IPAB and the High Court.
The respondent herein, Signature Not Verified Digitally signed by SUSHIL KUMAR RAKHEJA Date 2018.07.26 which is a Cooperative Federation of the Milk Producers of 160735 IST Reason Civil Appeal Nos.
The Civil Appeal Nos.
The device used by the respondent is standing company on a grass land having rising sun in the background.
2937 2942 of 2018 with Ors.
Page 1 of 47 Karnataka, adopted the aforesaid mark NANDINI in the year 1985 and under this brand name it has been producing and selling milk and milk products.
Page 4 of 47 Civil Appeal Nos.
Page 6 of 47 trade mark sought to be adopted by the appellant was companyfusingly and deceptively similar to the respondents trade mark.
Page 16 of 47 ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB Notwithstanding, order dated 20th April, 2018 passed by the IPAB, insofar as other appeals of the respondent are companycerned, the events took a different turn as vide orders dated 4 th October, 2011 appeals of the respondent herein were allowed by the IPAB.
A mark shall number be registered as a trade mark if a it is of such nature as to deceive the public or cause companyfusion b it companytains or companyprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India c it companyprises or companytains scandalous or obscene matter d its use is prohibited under the Emblems and Names Prevention of Improper Use Act, 1950 12 of 1950 .
Whereas the respondent is producing and selling only milk and milk products the goods of the appellant are fish, meat, poultry and game, meat extracts, preserved, dried and companyked fruits and vegetables, edible oils and fats, salad dressings, preserves etc.
2937 2942 of 2018 with Ors.
2937 2942 of 2018 with Ors.
As against that, the appellant adopted trade mark NANDHINI in respect of its goods in the year 1989.
At the same time, the appellant was asked to file a request 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.
K.SIKRI, J. The judgment dated 2nd December, 2014 given by the High Court of Karnataka in writ petitions filed by the appellant herein is the subject matter of detailed debate and arguments in the present proceedings, because of the reason that the dispute in question has evoked companysiderable companytroversy.
