Introduction
The trademark ‘Nandini’ has long been synonymous with dairy products in Karnataka and surrounding regions, owing to its extensive and continuous use by the Karnataka Cooperative Milk Producers Federation Limited since 1983. This mark enjoys significant goodwill and reputation as a household name for milk and milk-based products.
The recent judgment of the Madras High Court in (T)CMA(TM) No.112 of 2023 reaffirms the judiciary’s commitment to safeguarding well-known marks from deceptive similarity, even when applied to non-competing goods. In this appeal transferred from the Intellectual Property Appellate Board, the Court overturned the Deputy Registrar of Trade Marks’ order dismissing the Federation’s opposition to registration of an identical ‘Nandini’ mark (in stylised small letters without prefix or suffix) for agarbattis and doops in Class 3.
The decision turns on phonetic identity, identical stylistic presentation, and the risk of consumer confusion or association, distinguishing it from the Supreme Court’s earlier ruling in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183.
By allowing the appeal, the Court emphasized that phonetic and visual similarity, coupled with the mark’s acquired reputation, can justify refusal of registration under Sections 11 and 11(a) of the Trade Marks Act, 1999, irrespective of goods being dissimilar, thereby reinforcing protection against dilution or unfair advantage being taken of established marks.
Factual Background
The appellant, Karnataka Cooperative Milk Producers Federation Limited (KMF), is a federation of milk producers engaged in the procurement, processing, distribution, and sale of milk and milk products across Karnataka and neighbouring states.
Since 1983, KMF has continuously used the trade mark ‘Nandini’ for its entire range of dairy products, building substantial goodwill and making it a household name in the region. The mark is duly registered and enjoys widespread recognition.
The first respondent, Vinod Kanji Shah & Nitin Kanji Shah trading as Shalimar Agarbatti Company, secured copyright registration for labels featuring ‘Nandini’ in 1985 and obtained registration of the mark ‘Nandini’ under No.501980 in 1988, presumably for their goods.
In the trade marks journal, KMF noticed an advertisement of the first respondent’s application No.694185 in Class 3 for registration of a label mark prominently featuring the word ‘Nandini’ (written entirely in small letters, without any prefix, suffix, or distinctive device dominating the word) in respect of agarbattis (incense sticks) and doops (incense cones).
Alarmed by the identical word and near-identical stylisation, KMF filed opposition No.731657, raising grounds under Sections 9 (distinctiveness), 11 (deceptive similarity and likelihood of confusion), 11(a) (passing off), and 18 (entitlement to registration) of the Trade Marks Act, 1999.
The Deputy Registrar dismissed the opposition on 05.04.2010, holding that ‘Nandini’ is a personal name over which no monopoly can be claimed, the goods are entirely different, resemblance is minimal, and no confusion or deception is likely. Aggrieved, KMF appealed the order, which was originally filed before the IPAB and later transferred to the Madras High Court following abolition of the IPAB.
Key Parties Involved
| Party | Description |
|---|---|
| Karnataka Cooperative Milk Producers Federation Limited (KMF) | Federation of milk producers using the ‘Nandini’ mark since 1983. |
| Shalimar Agarbatti Company | Manufacturer of agarbattis and doops seeking registration of ‘Nandini’. |
Grounds Of Opposition Raised By KMF
- Section 9 – Lack of distinctiveness.
- Section 11 – Deceptive similarity and likelihood of confusion.
- Section 11(a) – Passing off.
- Section 18 – Lack of entitlement to registration.
Procedural Background
The opposition proceedings were conducted before the Deputy Registrar of Trade Marks, Chennai (second respondent), who passed the impugned order dated 05.04.2010 rejecting KMF’s opposition to application No.694185.
The appeal against this order was initially instituted before the Intellectual Property Appellate Board, Chennai, under Section 91 of the Trade Marks Act, 1999. Following the abolition of the IPAB and transfer of pending appeals to High Courts, the matter was renumbered as (T)CMA(TM) No.112 of 2023 before the Madras High Court.
Procedural Timeline
| Year | Event |
|---|---|
| 1983 | KMF begins use of the ‘Nandini’ trademark. |
| 1985 | Respondent secures copyright registration for ‘Nandini’ labels. |
| 1988 | Respondent obtains trademark registration No.501980. |
| 2010 | Deputy Registrar dismisses KMF’s opposition. |
| 2023 | Appeal heard by the Madras High Court as (T)CMA(TM) No.112 of 2023. |
Reasoning and Decision of Court
The Court began by noting the undisputed facts: both parties use the word ‘Nandini’, the appellant enjoys long-standing reputation and registration for dairy products, and the first respondent sought registration for agarbattis and doops in Class 3.
Findings of the Deputy Registrar
The Deputy Registrar rejected the opposition primarily on the following grounds:
- ‘Nandini’ is a personal name (derived from Hindu mythology, meaning a divine cow or goddess).
- No exclusive right exists over such a name.
- The goods are dissimilar.
- Resemblance is minimal.
- No likelihood of confusion exists.
Reference to Supreme Court Precedent
The Court then analysed the Supreme Court’s decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183, where the same appellant opposed registration of ‘NANDHINI DELUXE’ for restaurant foodstuffs.
In that case, the Apex Court upheld registration, finding:
- ‘NANDHINI’ was generic.
- Goods were dissimilar (no milk products were claimed).
- Phonetic similarity was insufficient due to the added word ‘DELUXE’.
- Different stylisation and logos reduced similarity.
- No deceptive similarity when viewed as a whole.
Distinction Drawn by Madras High Court
The Madras High Court distinguished the present case on critical facts: here, the offending mark uses ‘Nandini’ identically—without prefix or suffix—and in the exact same all-small-letter style as the appellant’s prominent usage.
Phonetically identical and visually and stylistically near-identical, the mark carries a high risk of deception or association, especially given the appellant’s massive reputation built over decades.
Likelihood of Consumer Confusion
A consumer familiar with ‘Nandini’ dairy products could easily be misled into believing a connection exists with the incense products.
The Court held that the Deputy Registrar failed to consider:
- Phonetic identity.
- Identical stylisation.
- Acquired reputation of the earlier mark.
This failure rendered the impugned order erroneous. Accordingly, the appeal was allowed, the order dated 05.04.2010 was set aside, and no costs were imposed.
Point of Law Settled in the Case
This judgment settles that phonetic identity combined with near-identical stylisation of a well-known mark can render a later mark deceptively similar under Section 11 of the Trade Marks Act, 1999, warranting refusal of registration even for dissimilar goods in different classes, where there exists a likelihood of confusion, association, or unfair advantage being taken of the earlier mark’s reputation.
Clarification of Supreme Court Ruling
The Court clarified that the Supreme Court’s ruling in Nandhini Deluxe (2018) 9 SCC 183 does not lay down an absolute proposition protecting all uses of ‘Nandini/Nandhini’.
Distinctions in the following aspects are decisive:
- Additional elements such as prefixes or suffixes (like ‘Deluxe’).
- Different artistic presentation.
- Logos.
- Overall get-up.
Where the later mark adopts the dominant word identically in spelling, pronunciation, and writing style without differentiating features, and the earlier mark enjoys substantial goodwill, opposition must succeed to prevent deception or dilution.
Case Details
| Case Title | Karnataka Cooperative Milk Producers Federation Limited Vs. Vinod Kanji Shah & Nitin Kanji Shah, Trading as Shalimar Agarbatti Company & Anr. |
|---|---|
| Date of Order | 19.01.2026 |
| Case Number | (T)CMA(TM) No.112 of 2023 |
| Name of Court | High Court of Judicature at Madras |
| Name of Hon’ble Judge | Mr. Justice N. Anand Venkatesh |
