Nandhini Deluxe v. Karnataka Co-op Milk (2018): No monopoly over a whole class of goods

Two names separated by a single silent letter — NANDINI and NANDHINI — sound almost identical to the Indian ear, yet the Supreme Court allowed both to coexist on the trade marks register. The reason lay not in the marks but in what they sold. NANDINI is the dairy brand of the Karnataka Co-operative Milk Producers Federation; NANDHINI is a chain of restaurants. In Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd., (2018) 9 SCC 183, a Bench of A.K. Sikri and Ashok Bhushan, JJ. held that phonetic resemblance alone cannot defeat registration when the goods, the trade channels and the consumers are different, and reaffirmed that no proprietor enjoys a monopoly over the entire class heading under which its mark is registered.

The facts in brief

The respondent Federation, a co-operative body of Karnataka milk producers, adopted the mark NANDINI in 1985 and built it into a well-known dairy brand selling milk and milk products. The appellant, Nandhini Deluxe, began running restaurants under the mark NANDHINI in 1989 and applied to register that mark for a range of foodstuffs sold in its outlets — items such as coffee, tea, spices, ground provisions, meat and other restaurant supplies — falling within Classes 29 and 30 of the trade marks classification.

The Federation opposed, arguing that NANDHINI was deceptively similar to NANDINI and that, since both fell within the same classes of goods, registration would cause confusion. The Deputy Registrar initially allowed the appellant's applications. The Intellectual Property Appellate Board (IPAB), by an order dated 4 October 2011, reversed and ruled against the appellant, and the Karnataka High Court upheld the IPAB. Nandhini Deluxe carried the dispute to the Supreme Court.

The question

Could a proprietor that had registered and used its mark for milk and milk products resist registration of a phonetically similar mark used for restaurant foodstuffs, on the footing that both fell within the same broad classes — or does protection extend only to the goods the proprietor actually deals in? The case turned on the interplay of Section 11 of the Trade Marks Act, 1999 (which bars registration of marks deceptively similar in relation to similar goods where there is a likelihood of confusion) and the principle that a registration in respect of a class does not confer monopoly over every item within that class.

What the Court held

The Court allowed the appeal in substantial part. Comparing the marks in their totality — not merely the spoken word but the get-up, device, packaging and the goods to which each was applied — it concluded that consumers were unlikely to be confused. The dairy's NANDINI was sold as milk and milk products through dairy channels; the appellant's NANDHINI was the name of restaurants and the foodstuffs they served, presented with a distinct visual identity. The goods, the manner of trade and the relevant consumers were different.

On that reasoning the Court set aside the orders of the IPAB (4 October 2011) and of the Karnataka High Court, restored the earlier IPAB view of 20 April 2010, and allowed Nandhini Deluxe to register its mark — subject to the condition that it shall not extend the mark to milk and milk products, the precise goods in which the Federation had built its reputation, where confusion would indeed be a real possibility. It also recorded that NANDINI had not been shown to have crossed into well-known-mark territory such that it could claim protection across unrelated goods.

Analysis

The decision is a careful application of three connected ideas. First, deceptive similarity is not assessed on the words in the abstract; it is judged on the overall impression, weighing the nature of the goods, the channels of trade and the class of purchasers. Phonetic nearness is one factor, not a trump card — as the Court emphasised, the marks must be seen "in totality."

Second, registration in a class is not ownership of the class. The Court drew on the structure of Section 11 and the classification scheme to hold that a registered proprietor's exclusivity tracks the goods for which the mark is registered and used, not every item that the Registrar's class heading happens to encompass. Allowing one trader to fence off an entire class it does not actually trade in would frustrate competition and over-reward incumbency.

Third, the Court located the dispute within Section 11(2), which extends protection across dissimilar goods only for marks with a reputation in India such that unfair advantage or detriment to distinctive character results. Because NANDINI had not established that elevated status, and because the appellant's use was on different goods, the conditions for refusing registration were not satisfied. The single carve-out for milk and milk products keeps the ruling principled: protection is denied where goods overlap and confusion is genuinely likely, and permitted where they do not.

Why it matters

For practitioners the judgment is a reliable anchor whenever an opponent leans on phonetic similarity and a shared class to block a registration. It confirms that the comparison must run goods-against-goods and consumer-against-consumer, and that a class-wide claim collapses where the senior user does not in fact trade across the class. It sits alongside the pharmaceutical-confusion line of authority — where a higher standard applies precisely because the goods and the risk of harm are the same — by marking the opposite pole: similar names, but different goods, different channels, no deception. Brand owners are reminded that breadth of protection follows breadth of genuine use and reputation, not the bare width of a registration certificate.

Related on Valkya

• Cadila Health Care v. Cadila Pharmaceuticals: deceptive similarity in pharma
• Alkem Laboratories v. Numen Biotech: phonetic similarity of trademarks
• Pernod Ricard v. Karanveer Singh Chhabra: publici juris and trademarks
• N.R. Dongre v. Whirlpool: transborder reputation in trademark law

Sources

• Supreme Court of India, Judgment dated 26 July 2018, Civil Appeal Nos. 2937-2942 of 2018
• WIPO Lex, "M/s. Nandhini Deluxe v. M/s. Karnataka Co-operative Milk Producers Federation Ltd."