The Supreme Court Ruling in Nandhini Deluxe: A Performance Review
In this story, I visit the reception extended to the July 2018 Indian Supreme Court decision in Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation.
Summary of Findings
My reaction story on Nandhini had focused on two key points falling from the Supreme Court.
First, the Court had assumed the lack of deceptive similarity between the rival trade marks ‘NANDINI’ (for milk products) and ‘NANDHINI DELUXE’ (for restaurant services) to be self-evident. This, in turn, hinged on two points. One was that there were sufficient differences between the depictions of the rival trade marks to create vastly different overall impressions. The other was that, despite the notional overlap of product classes to which the rival trade marks related, the application of the trade marks was to “relate to different products.”
The second key finding by the Nandhini Supreme Court was that it permitted the co-existence of the rival trade marks in conflicting classes. This was supported separately on facts and law.
On facts, the Supreme Court approved the co-existence on a narrow ground. It found that the Respondent failed to show acquired distinctiveness in relation to milk products in the four-year interregnum prior to the Appellant’s adoption of its (now registered) trade mark. On legal grounds, Nandhini ruled that a pre-existing registration in a class did not constitute a hard barrier to registrability. This extended a position first outlined by the Supreme Court in 1996’s Vishnudas v. Vazir Tobacco.
However, on the purpose of this co-existence, the two cases differed. The Nandhini Supreme Court supported the co-existence for the restrictive reason that proprietors should be prevented from monopolizing an entire class of goods or services. By contrast, the Vishnudas Supreme Court framed the co-existence in affirmative terms, stating that co-existing registrations may be permitted because the framing of the classes themselves are rigid and not sufficiently granular to fit every purpose.
Reaction and Application
With Nandhini having since attained both finality and confirmation, there was a predictable rush to capture its implications. Much of the response was benign to the dissimilar products portion of the decision, but slightly worried for a future with Supreme Court-endorsed intra-class cluttering.
A survey of judicial precedent shows that Nandhini has been summoned in some interesting circumstances. Other applications are not unknown, but three decisions stand out.
In Thakkar v. N Ranga Rao & Sons, Nandhini was used to counter a case for similarity based on complementary products. The Court employed Nandhini to distinguish. It found that the parallel to Nandhini may have been warranted in characterizing the products but the rival trade marks themselves were quite a distance apart. Therefore, in the words of the Nandhini Supreme Court, since “it was difficult to imagine that an average [person] of ordinary intelligence would associate” the products of one with the products of another, the comparison ended there. For the comparison to hold, the trade marks would have to be different, which they were not in this case.
Technova Tapes v. Technova Imaging Systems applied Nandhini to the converse case. This Court, in appeal, reached an independent factual conclusion on the rival products being “altogether different.” It also felt an absence of evidence of dishonest use by the Defendant of an identical but fairly generic trade mark. For it, therefore, Nandhini was not so much a hurdle to be overcome as it was in Thakkar, but more a proof of concept of a dissimilarity finding where the rival products are different.
Finally, in last month’s Bayerische Motoren Werke v. Om Balajee Automobile, Nandhini was once again urged by the Defendants. Here, it was pressed into service to demonstrate that products notionally in the same class (luxury automobiles and e-rickshaws) may be far apart in the terms of target consumers in the real world. This, we may recall, is a line of argument which is familiar to Nandhini but more directly evokes the Vishnudas justification for same class co-existence. (The Defendants here relied on Nandhini but, oddly, not Vishnudas.)
The Court outlined the view that an intra-class difference in products could muddy the waters of a similarity finding and make it “a function of many variables.” It also added an appealing — and, to my knowledge, novel — extension to Nandhini Deluxe by highlighting the manner in which the rival trade marks are treated by their proprietors as a determinant of confusion.
On the variables themselves, though, the BMW Court played safe. It emphasized the strength of the Claimant’s trade mark and the prima facie dishonesty in the Defendants’ adoption. This immediately foreclosed the possibility of drawing a Nandhini-style intra-class distinction, since the relative strength of the parties’ cases was “materially different.”
Suffice to say, therefore, that Nandhini has been exhaustively tested on deceptive similarity. Indeed, in a thematic sense, Thakkar, Technova Tapes and BMW test this finding in each of its principal permutations. The ruling on the intra-class co-existence issue, however, has only been pushed by BMW so far. Even that limited engagement, it is plain to see, reveals the limitations of the Nandhini approach.
In sum, the performance review must return a passing grade. Even so, it is not without reservations regarding future conflicts that surely cannot be long in arriving.
