Madras HC rules in favour of KMF in ‘nandini’ agarbatti trademark dispute

New Delhi: The Madras High Court has set aside a 2010 order of the Trade Marks Registry that rejected Karnataka Milk Federation’s (KMF) opposition to the registration of the mark ‘nandini’ for agarbattis and dhoops, holding that the proposed mark was deceptively similar to KMF’s long-standing ‘NANDINI’ trademark, according to Bar and Bench.

Justice N Anand Venkatesh allowed KMF’s appeal under Section 91 of the Trade Marks Act, 1999, overturning the April 5, 2010 order passed by the Deputy Registrar of Trade Marks. The Court held that the use of ‘nandini’ for agarbattis was likely to mislead consumers due to phonetic identity and the identical style of writing.

KMF, a federation of milk producers in Karnataka, has used the ‘NANDINI’ mark for milk and dairy products since 1983. The mark is registered and has built substantial goodwill in Karnataka and neighbouring States.

The dispute arose after Shalimar Agarbatti Company, trading under the names Vinod Kanji Shah and Nitin Kanji Shah, sought registration of ‘nandini’ in Class 3 for agarbattis and dhoops. KMF opposed the application under Sections 9, 11, 11(a) and 18 of the Act, arguing that the mark would cause confusion.

While the Trade Marks Registry had earlier rejected the opposition on the grounds that ‘nandini’ was a personal name and that the goods were different, the High Court disagreed. Justice Venkatesh noted that the agarbatti manufacturer had adopted the word ‘nandini’ without any prefix or suffix and in the same visual style as KMF’s mark.

“Phonetically, the word ‘nandini’ is the same and it has also been written in the same style in the offending mark of the first respondent ... The phonetic similarity and the manner in which the first respondent has written the word ‘nandini’ as its mark would certainly make the offending mark deceptively similar and a customer, who is well versed with the mark of the appellant, will be certainly misled by the style adopted by the first respondent in writing the word ‘nandini’ and also its phonetic resemblance,” the Court observed in its January 19 ruling, as per the news report.

The Court distinguished the Supreme Court’s 2018 decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., noting that in that case the addition of the suffix ‘DELUXE’, a distinct logo and trade dress set the mark apart. Justice Venkatesh held that such distinguishing features were absent in the present matter.

The Court concluded that the Trade Marks Registry had failed to consider these aspects and had erroneously rejected KMF’s opposition.