Summary
The Supreme Court restored registration of the restaurant operator’s NANDHINI DELUXE mark subject to its abandoned goods being excluded. Phonetic similarity to the dairy federation’s NANDINI mark did not establish deceptive similarity when the complete logos, distinct products and different businesses were considered. Registration in a broad class did not give the federation a monopoly over all distinct goods in that class, and Section 11(2)’s requirements were not established on these facts.
Issues
- Whether the competing marks and goods justified refusal of registration under the Trade Marks Act, 1999.
- Whether an earlier registration entitled its holder to exclusivity throughout a broad goods class.
Provisions considered
- Section 11(1) and (2), Trade Marks Act, 1999Assessed likelihood of confusion and the additional requirements protecting an earlier well-known mark against use for dissimilar goods. Neither phonetic resemblance nor common classification alone resolved those tests. (¶¶ 9, 18, 21, 23, 24, 25, 28, 30, 31, 32)
Held
- The marks had phonetic similarity, but their visual presentation, logos and overall composition differed substantially. The restaurant operator used NANDHINI DELUXE, a lamp device and a slogan; the federation’s mark used NANDINI and a cow device. Their relevant goods and manner of trading differed, and the operator had relinquished its dairy-goods claim. Confusion or deception was not established on the overall assessment. (¶¶ 24, 25, 26, 27, 28)
- An applicant bears the burden of showing that its mark is not likely to deceive or confuse. Assessment concerns the likely reaction and association of an average purchaser of ordinary intelligence, not merely a side-by-side comparison of words. (¶¶ 27, 28)
- A broad goods class may contain separately identifiable goods. Following Vishnudas, the federation could not preclude registration for distinct goods simply because both registrations concerned Classes 29 and 30. That principle remained applicable under the 1999 Act. (¶¶ 30, 31)
- The Section 11(2) ingredients were not all met: unfair advantage or detriment from this use was not shown. The operator’s adoption in 1989 followed shortly after the federation’s initial use, with no material showing the claimed acquired distinctiveness by that earlier date. The facts indicated concurrent use. (¶¶ 23, 24, 32)
- The earlier final IPAB order between the same parties on the identical issue raised a prima facie issue-estoppel concern. The Court did not finally resolve that point because it allowed the appeals on merits. Registration was restored subject to the abandoned-goods modification referenced to paragraph 18(vii). (¶¶ 33, 34, 35)
Result
Appeals allowed. IPAB and High Court orders set aside; Deputy Registrar’s registration order restored subject to exclusion of the abandoned goods as recorded in paragraph 18(vii). No costs.