No monopoly over the whole class of goods except particular goods holds SC

The Hon'ble Supreme Court of India on 26.07.2018 pronounced a landmark decision on the issue of Proprietor of a trademark claiming monopoly over the whole class of goods falling in the classification of goods and services with respect to the Trade Mark NANDHINI.

The dispute emerged more than a decade ago when M/s Nandhini Deluxe, which is the restaurant in Bangalore tried to secure the registration of the Trade Mark NANDHINI in respect of Class 29 & 30 goods which contains cooked food, rice and other food articles of various kinds.  The said trademarks were opposed by the Karnataka Cooperative Milk Producer Association who is the owner of the Trade Mark NANDINI in Class 29 & 30 with respect to Milk and Milk Products.  The said goods were also fall within Class 29 & 30 of the classification of goods and services prescribed under the Trade Marks Law.

The said litigation carried out before the Karnataka High Court and prior to the same before IPAB as well as before the Trade Marks office, the matter went uptil Supreme Court in the year 2015 and thereafter the judgment was eventually pronounced on 26.07.2018.  In the matter the Appellants advocate Mr. Sushant Singh relying upon the principle of law laid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd contended that when a person trades or manufactures one good under the broad classification having no bona fide intention to trade in all other goods falling under that broad classification, he cannot be permitted to enjoy monopoly in articles falling under such classification.

In response the Senior Counsel Mr. S.S. Naganand appearing for Karnataka Cooperative Milk Producers Association submitted that the principle of Vishnudas case was based on Trade and Merchandise Act, 1958 and is not applicable on Trade Marks Act, 1999. However the Bench headed by Hon’ble Justice A.K. Sikri and Hon’ble Justice Ashok Bhushan completely disagreed with the counsel for Karnataka Cooperative Milk Producers Association and observed that the principle of law laid down Vishnudas case is equally applicable in the Trade Marks Act, 1999 as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. The Hon'ble Supreme Court of India, while overturning the judgement of Karnataka High Court as well as IPAB and restoring the decision of the registration proceeded to upheld that the policy of the Trade Marks Law that the owner of the trademark is entitled for protection of trademark in relation to particular goods be it similar or different goods.  However, "the said monopoly cannot be expanded to mean the entire class of goods". 

The Hon'ble Supreme Court further laid down that for determination of protection of a trademark, the Court has to consider various variables as per the law which include strength of the trademark, the Proprietors likelihood to expand in the different fields of activities, which may overlap with the opposite party and extend of its use etc.  The Supreme Court essentially came to the conclusion that the word 'Nandhini' or ‘NANDINI’ being the common word of Hindu girl or deity falls fouls of these parameters and thereby the said mark NANDINI of Karnataka Co-operative Milk Producers Association does not deserve such wider net of protection, which may allow the Proprietor to claim monopoly over the whole set up of goods belonging to particular classes i.e. Class 29 & 30 and more so when the business of Karnataka Co-operative Milk Producers Association is relatable to milk and milk products only .

The Bench further referred certain significant findings which may go on to have far-reaching consequences when it comes to decision in the Trademark matters which are pending before the trademark office where proprietors claim protection by filing opposition proceedings.  The said judgment from Hon'ble Supreme Court of India at this juncture may act as guidelines for the Registrars to decide the matters relating to Trade Mark proceedings and delineating the scope of protection which the trade mark deserves depending upon various factors laid down by the Hon'ble Supreme Court of India. 

The said judgment passed by Hon'ble Supreme Court of India  reaffirms the principle that user of the Trade Mark is the key to the protection and mere registration in broad category of goods with the confined user will enable the proprietor to exaggerate its claim of monopoly.

 

Published in Intellectual Property Rights
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