Madras High Court backs Nandini Milk in trademark dispute over agarbattis

The Madras High Court on Monday set aside a 2010 order of the Trade Marks Registry that had rejected Karnataka Milk Federation’s opposition to the registration of the mark ‘nandini’ for agarbattis and dhoops, holding that the proposed trademark was deceptively similar to KMF’s long-standing ‘NANDINI’ brand, as reported by Bar and Bench.

Justice N Anand Venkatesh allowed an appeal filed under Section 91 of the Trade Marks Act, 1999, and overturned the order passed by the Deputy Registrar of Trade Marks on April 5, 2010, which had permitted the registration of the mark in favour of Shalimar Agarbatti Company, trading under the names Vinod Kanji Shah and Nitin Kanji Shah.

The Court held that the proposed mark was likely to mislead consumers due to its phonetic identity with KMF’s ‘NANDINI’ trademark and the identical style of writing adopted, despite the goods falling under a different category.

KMF, a federation of milk producers in Karnataka, has been using the ‘NANDINI’ mark since 1983 for milk and dairy products. The mark is registered and enjoys widespread recognition and goodwill across Karnataka and neighbouring States.

The dispute arose after Shalimar Agarbatti Company sought registration of the mark ‘nandini’ in Class 3 for agarbattis and dhoops. KMF opposed the application under Sections 9, 11, 11(a) and 18 of the Trade Marks Act, contending that the mark was deceptively similar to its own and would cause confusion among consumers.

The Trade Marks Registry had rejected the opposition, holding that ‘nandini’ was a personal name over which no exclusivity could be claimed and that the rival goods were unrelated.

The High Court disagreed with this assessment. Justice Venkatesh noted that there was no dispute regarding KMF being the registered proprietor of the ‘NANDINI’ trademark and having built substantial goodwill over several decades.

The Court found that the agarbatti manufacturer had adopted the same word ‘nandini’ without any prefix or suffix to distinguish it and had used the same visual style and phonetic form as KMF’s mark, which could easily mislead consumers familiar with the dairy brand.

Justice Venkatesh distinguished the case from the Supreme Court’s 2018 ruling in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd, where the top court had permitted the use of ‘NANDHINI DELUXE’ after noting distinguishing features such as the addition of a suffix, a unique logo and a distinct trade dress.

He observed that such distinguishing features were absent in the present case, as the applicant had used only the word ‘nandini’ without modification and in the same visual style as KMF’s mark.

The Court concluded that the Trade Marks Registry had failed to consider these crucial aspects and had erred in rejecting KMF’s opposition, and accordingly allowed the appeal.

KMF was represented by senior advocate S Ravi, along with advocates A Venkatesh Kumar, R Sanjeev and A Shravan, while the Trade Marks Registry was represented by senior panel counsel J Madanagopal Rao.