Prabha Sridevan, J
1 . These four appeals were disposed of by four different orders, dated 05.02.2008, 17-042009, 27-04-2009 and 13.08.2007. They are in respect of the
marks ""NANDHINI DELUXE"" (Kannada) under application No. 982284 in class 30 an ""NANDHINI DELUXE"" (Kannada) under application No.
982286 in class 06 is th subject matter of OA 12 & 13/2009/TM/CH; NANDHINI DELUXE WITH LOG (Kannada) under application No. 982285 in
class 29 is the subject matter of OA 41/2009/TM/CH. The application No. 982281 in class 31 which relates to the mark ""NANDHINI DELUXE
which is the subject matter of OA 85/2009/TM/CH an ""NANDHINI"" word per se application No. 817305 in 30 is the subject matter of
OA/53/2009/TM/CH. Since the facts are the same and issues involved are identical in all these matters, they are being disposed of by this common
order.
2. The Appellants opposed the registration. The learned Deputy Registrar disallowed the opposition. The reasons for rejection of the opposition in both
the orders are almost identical. The learned Deputy Registrar held that the opponents cannot claim monopoly over the trade mark NANDINI and that
though the opponents are the prior user, there is no deception or confusion since parties are dealing in different description of goods. The artistic work
design and letters of the applicant's marks are totally different from that of the opponent's and the balance of convenience is in favour of the applicant.
However, with regard to the registration in class 29 the applicants were directed to delete the items ""milk and milk products"" by filing TM 16.
Aggrieved by the orders, the opponents have filed this appeal.
3. The grounds of appeal are almost the same. The Appellant is a Federation of milk producers and the trade mark NANDINI belongs to the
Appellant. The goods sold are milk and milk products such as curd, butter, cheese, ghee, milk powder, flavoured milk, pannier, khoa, ice-cream and
milk based sweets. They are sold in bottles, sachets, tetrapacks, polythene containers etc, since the year 1983. The device of a standing cow on a
grass land in the background of rising sun is also used by the Appellant. It is a well known trade mark and a household name in the State of
Karnataka. For two-and-half decades, this mark has been used by the Appellant and no one else. The Appellant has given statistics of the sales
turnover and the advertisement and sales promotional expenditure for the last 10 years from 1996-97 Rs. 39.80 lakhs to 2005-2006 Rs. 1048.89 lakhs.
The Appellant has obtained several registrations in respect of the trade mark ""NANDINI"" and label forms in classes 29, 30, 31 and 32. The Appellant
has also secured copyright registration as early as 1984 and 1985. While that is so, the Appellant came across the advertisement of the Respondent
with an identical mark and therefore filed this opposition.
4. The Learned Counsel for the Appellant submitted that it is the household name and the adoption of ""NANDHINI"" is dishonest and the channel of
trade of the Appellant's goods and the Respondent's goods are the same, the class of customers who purchase cannot be expected to look at the
difference in the device which is relied on by the learned Deputy Registrar. The only thing that the common man would refer to is the word
NANDHINI and whether it is NANDHINI MILK, KHOA or NANDHINI SPI and the addition of the letter 'H' in the English representation cannot
make the difference because the pronunciation is the same and the Kannada script they are identical.
5 . The Learned Counsel for the Respondent submitted that the Appellant having acquiesced in the continuance of the mark of Respondent for 18
years cannot now oppose the registration. The Learned Counsel submitted that the mark is not confusing, and that the word ""Nandini"" which belongs
to a deity cannot be appropriated by the Appellant.
6. The Appellant filed many documents to support his case and the Respondent also relied on certain documents. The Respondents relied: 2003(27)
PTC 352 (Mad) Woodlands Travels and Agencies and Anr. v. K. Vasudevan R a o AIR 1963 SCC 449 (V 50 C63) Amritdhara Pharmacy v. Satya
Gupta, 2004 (29) PTC 376 (IPAB) Kraft Jacobs Sucharc Ltd., v Government of India by Secretary Ministry of Commerce and Industry and Ors.,
2004 (28) PTC 404 (Del) Bharat Hotels Limited v. Unison Hotels Limited.The Appellant relied on (2001) 5 SCC 73 Cadila Health Care Ltd., v. Cadila
Pharmaceuticals Ltd..
7. We have considered the submissions and the materials on record. We find that in OA /41/200/TM/CH at Page 41 of the paper book, even before
TM 16 has been filed the certificate has been issued deleting the items ""milk and milk products."" The order impugned refers to evidence produced by
the applicants to show that they are the proprietors of the mark. The only documents that are produced by the Respondents are advertisements which
show the existence of a hotel, these are:
a) one refers to ""Nandhini Andhra Speciality Restaurants
b) is an advertisement in the Deccan Herald which refers to the ""Nandhini - The Restaurant
c) refers to the pectoral depiction of the Restaurant Nandhini
d) an advertisement dated 12.01.2000 ""For the tastiest Andhra food in town"", dated 9.8.2002 ""Home Delivery and Outdoor Catering"" and so on.
8 . This evidence only shows that the Respondents are running a restaurant which would come under class 42. We are not concerned with that. We
must be shown that the Respondents are dealing in goods in respect of which the trademarks have been registered. Therefore, the fact that the
Appellant did not raise any objection to their mark for 18 years has no relevance in this case. That will be dealt with as and when the registration in
class 42 is taken up as the issue of controversy.
9 . Now we are concerned with whether the Respondent can use the trademark for goods in classes 29 and 30. 'Nandini' may be a common name or
even a Goddess' name. But the word 'Nandini' and the mark 'Nandini' have been associated with the Appellant from 1985 which is evidenced from
the Copyright Certificate dated 25.02.1992. In fact the Respondents themselves do not deny that the Appellant has been in the business for more than
two decades. It is the case of the respondents that they also have their name in the business. But the Respondent's business is running a hotel and
there is not a scrap of evidence to show that they are trading in the goods in question. There is no doubt that if the goods under class 29 and 30
bearing the Respondent's trade mark come out in the market the average consumer would conclude that it belongs to the Karnataka Cooperative Milk
Producer's Federation. The word NANDINI has acquired distinctiveness. In fact even in the impugned order the finding is that the Appellants are
using the trade mark prior to Respondent/applicant. When the Appellants are using the trade mark prior to Respondent in the same class of goods we
do not understand how the registration of the Respondent's mark can be permitted.
10. In 2003(27) PTC 352 there was evidence to show that the mark W-WOODYS had been used on its products in the shop restaurant, on boxes and
cartons and therefore the objection of woodlands Travels and Agencies was rejected.
11. In 2004 (29) 376 PTC interim injunction was not granted since the Plaintiff had failed to establish secondary meaning in respect of the word grand
and there was material to show that the Plaintiff was not the first user of the word grand in connection with their hotel business.
12. In 2004 29 PTC the word was MILKA. There the competing marks were MILKA and PIONEERS MILKA written in a typical style.
13. In 2007 34 PTC the registration of the impugned mark CITIZEN had continued for seven years and there was no evidence of confusion.
14. So each case has to be decided on the basis of the facts on hand. With regard to the Appellant's mark we find that one of the documents which is
the Kannada Weekly Sudha where it is stated that ""I am using NANDINI. You?"" In Tharanga Kannada Weekly, ""Nandini Ghee has a role in every
moment of life Celebration"" (translated from Kannada). These are pieces of evidence to show that the word Nandini itself has become associated
with the Appellant's products and therefore, though it might be a Hindu name, or even a deity's name, it has come to be recognized as a distinctive
mark of the Appellant by the Appellant's use of the same for nearly two decades. The conclusion of the Registrar that it is not likely to confuse cannot
be sustained. The word is identical. The addition of a letter H by the Respondent cannot make a difference. Whether it is Nandini or Nandhini, it is
pronounced identically. and in Kannada there is no difference in the spelling of the trademark of the Appellant and that of the Respondent.
15. We have referred to the advertisement which says ""I am using nandini"". It is clear that the consumer and the general public who are the source of
the goods when the word nandini is used. When that is so, we cannot permit the Respondent to use the identical mark in relation to goods which are
akin to the Appellants.
16 . The addition of the word Deluxe cannot improve the case of the Respondent since the word NANDHINI is identical and it definitely will cause
confusion in the minds of the consumers.
17. The priority in use is indisputably the Appellants. It has been so regularly and consistently used that the marks have become entrenched in the
minds of the consumer. It will definitely not being in the interest of the public to allow the Respondent to use the mark in connection with the goods in
question. The balance of convenience is not in favour of the Respondent.
18. The Registrar's order does not stand the test of reasonableness and deserves to be set aside. Accordingly, the above appeals are allowed. The
miscellaneous petitions stand disposed of. No order as to costs.
