Bangalore District Court
M/S. Nandhini Deluxe vs M/S. Cafe Nandini on 3 October, 2020
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE, AT
BANGALORE CITY. [CCH.NO.10]
Dated this the 3rd day of October 2020
PRESENT
Sri.SADANANDA NAGAPPA NAIK, B.A.L., LL.B.
XVIII Addl.City Civil Judge.
O.S.No.3791/2015
Plaintiff M/s. Nandhini Deluxe,
114/1(114(2),
Lalbagh Fort Road,
Minerva Circle,
Bangalore - 560 004.
Reptd by its Managing Partner
N.Ananda,
S/o Late N.Narasimhaiah,
Aged about 70years,
(Rep. by Sri Harikrishna S
Holla, Advocate)
/VS/
Defendants: 1. M/s. Cafe Nandini,
BM. Road Somanahalli,
Maddur Gate,
Maddur -OP Tumkur Road,
Mandya District,
Reptd by its Proprietor.
[PLACED EXPARTE]
2. The Karnataka Milk
Federation Ltd.,
No.2915, KMF Complex,
DR College Post,
2 O.S.No.3791/2015
Dr.M.H.Marigowda Road,
Bengaluru - 29,
By its Managing Director
(By Sri. S.S. Naganand,
Senior Advocate/
Sri.S.N.Aswathnarayan
Advocate)
Date of institution of 24.04.2015
suit
Nature of the (suit or Permanent injunction, render
pronote, suit for accounts, surrender unused
declaration and stocks and for damages.
possession suit for
injunction,) etc.
Date of the 07.09.2016
commencement of
recording of the
evidence.
Date on which the 03.10.2020
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 05 05 09
(SADANANDA NAGAPPA NAIK)
XVIII Addl.City Civil Judge,
Bangalore.
JUDGMENT
The present suit is filed by the plaintiff for grant of permanent injunction restraining infringement, passing 3 O.S.No.3791/2015 off, to surrender the stock of unused offending bills, negatives, positives, transpencies, block for destruction to the Plaintiff, to render true accounts of the profits, to order for damages of Rs.25000/- per month and cost of this suit against the defendant u/s.134 of Trademarks Act.
2. The brief facts of the plaintiff's case as pleaded in the plaint is as follows:
The Plaintiff is a registered partnership concern carrying on business of Andhra Style Vegetarian & Non- vegetarian Restaurant. The Plaintiff is using the Trade mark NANDHINI in respect of said business since 1989. The artistic work, design and get-up in respect of trade mark NANDHINI exclusively belongs to them. On account of intrinsic value, salesmanship and quality of food prepared by them, their trade mark has become popular all over South India. The Trademark and Copyright in respect of NANDHINI exclusively belongs to the Plaintiff. They are running 12 branches at Bangalore. They also registered their trade mark NANDHINI and NANDHINI DELUXE under class 42, under various numbers 1294121, 1284398, 1284399, and 1360905. The same has been registered under the 4 O.S.No.3791/2015 Copy right Act 1957 under No.A-62848/2002. Plaintiff further submits that the Defendant has commenced its business under the name CAFE NANDINI by using plaintiff's trademark NANDHINI DELUXE. The action of the Defendant to adopt the trademark CAFE NANDINI is fraudulent, illegal, contrary to law and unauthorized and calculated to deceive the customers and perverse, illegal and amounts to an act of deceit. The trade mark CAFE NANDINI is structurally, phonetically and visually similar to Plaintiff's registered Trademark. It is further contended that 1st defendant has commenced its business in the month of April 2015. The first defendant appears to be licencee of 2 nd defendant who is using NANDINI for milk and milk products. The 2 nd defendant in Opposition No.256162 opposed the registration of plaintiff's trademark NANDHINI under No.1360905 in class 42 before before registrar of trademark which came to be dismissed on 17.4.2009. It is further contended that the defendants have no authority or right to use the trading style CAFE NANDINI for running restaurant. Since the Plaintiff and Defendants are engaged in business of providing food, the adoption of trade name CAFE NANDINI by Defendants is causing confusion among the customers and it also amounts to 5 O.S.No.3791/2015 infringement and passing off under Trademarks Act. Hence, the suit is filed for the above reliefs.
3. Inspite of service of suit summons defendant No.1 remained absent and placed exparte.
The second defendant appeared through its counsel and filed written statement denying the plaint averments and further contended that the present suit is a continuous gross abuse of the process of law and is liable to be dismissed. Plaintiff is not the owner of the trademark 'Nandini and it has no exclusive right to the word 'NANDINI' . The Intellectual Property Appellate Board and the Division Bench of Hon'ble High Court have concluded that the word NANDINI ( trademark of the present 2nd defendant) has acquired a distinctive character and has become well known and associated with the product of the 2nd defendant and therefore the use of the word Nandini by the plaintiff herein by merely adding letter 'H' and without any difference in pronunciation in local language does not make any difference and would likely to cause confusion in the minds of the public. In view of above findings in earlier round litigation between the parties, the 2 nd defendant has been recognised as a registered owner and prior user of the mark and plaintiff cannot claim any right over the 6 O.S.No.3791/2015 word 'Nandini'. No order as sought can be granted against the true and prior owner of the registered trademark. The present suit is an attempt to usurp the valuable property of the 2nd defendant the registered trademark and the goodwill it has amassed and has been instituted with a view to harass the 2 nd defendant. The suit has to be stayed in view of Sec.124 of Trademarks Act, 1999 and also misjoinder of parties, as the 2nd defendant has not given license to the 1 st defendant to run a vegetarian hotel under the name CAFE NANDINI.
4. It is further contended that that 2nd defendant is a largest co-operative dairy federation in South India, owned and managed by the milk producers within the state of Karnataka. They have over 2.32 million milk producers in over 13,082 dairy co-operative societies at the village level functioning under 14 District Co- operative Milk Unions. Their main object is to help its members in procuring, processing and marketing milk and milk products. They have undertaken several measures to bring about augmentation of production, supply and availability of milk and milk products during the tenure of its existence and has become the lifeline for milk producers, cooperative milk unions and milk 7 O.S.No.3791/2015 federations in Karnataka for the last four decades. It has developed a popular brand of milk and milk products under the brand name 'Nandini' which has been used by them and has been available in the market since the year 1983. The 2 nd defendant under the brand name' NANDINI also manufactures and supplies milk powder, butter, curd, ghee, peda, badam powder, paneer, burfis, ice cream, chocolate, and flavoured milk among many other products. The Nandini brand has 60 varieties of dairy products under its purview and is available in morethen 200 stock keeping units. It is the 2nd largest brand in the co- operative dairy industry in India.
5. It is further contended that its trademark NANDINI is a well-known trademark as specified in Sec.2(1)(zg) of Trademarks Act, 1999 and the same is associated with an image of a cow grazing on a pasture with the sun shining behind it, as well as with the image of a droplet with an inverted open droplet inside it. The 2nd defendant's trademark Nandini enjoys a widespread reputation and it is known by members of the public, who associated the word Nandini with the 2nd defendant's product. Inview of colossal goodwill acquired by the brand over the course of its existence, 2 nd 8 O.S.No.3791/2015 defendant applied for series of trademark registrations of the NANDINI brand to safeguard the brand value so painstakingly created by them. They have obtained 33 registration of their various trademarks under class 20, 30, 31 & 32.
6. It is further contended by the 2 nd defendant that plaintiff started its business in the year 1989, i.e after six years Defendant no.2's brand entered the market. Plaintiff herein started a chain of restaurant serving Andhra Style cuisine by the name NANDHINI. That on 01.09.1998, plaintiff filed application for registration of trademark Nandhini in class 30 vide Trademark No.817305. The 2nd defendant had filed an Trademark application in the year 1986 in class 30, i.e 12 years prior to the plaintiff herein. The defendants have opposed the application on the ground that the 2 nd defendant has already obtained a registered trademark in the name of the word NANDINI. The Deputy Registrar initially allowed the application of the plaintiff and directed for registration of the mark in the name of plaintiff. They have initiated proceedings before IPAB challenging orders passed by the deputy registrar disallowing their application, for the words NANDHINI DELUXE, NANDHINI DELUXE with LOGO, under class 9 O.S.No.3791/2015 30, 29,31,& 30. The IPAB in its order dtd.4.10.2011, held the word Nandini had come to be recognised as a distinctive mark of the 2nd defendant and that the addition of the letter 'H' to the word by the plaintiff could not make any difference to the same. In the said order it is also stated that the addition of the word 'Deluxe' did not improve the case of the present plaintiff as the word Nandhini was identical and that the usage of the same would definitely cause confusion in the minds of public. The plaintiff herein filed a review against the IBPA order dtd.4.10.2011 and the same was dismissed by an order dtd. 1.5.2013 holding that there were no grounds.
7. It is further contended by the 2 nd defendant that the plaintiff herein had challenged the order of IPAB before Hon'ble High Court of Karnataka in WP.Nos.37192-193/2013, 37194-195/2013, 37196- 197/2013,37201-202/2013, 37203-204/2013. The Division Bench of Hon'ble High Court of Karnataka in WP.No.37196-197/2013 vide order dtd. 17.9.2014, directed the plaintiff to comply with the office objections within a period of two weeks and further directed that the writ petitions shall stand dismissed if the objections are not cured within a period of two weeks. As plaintiff herein did not comply with the objections raised by 10 O.S.No.3791/2015 registry, the writ petitions were dismissed for non- prosecution inview of peremptory orders passed by Hon'ble High Court. WP.No.37192-193/2013, 37194- 195/2013 were heard and dismissed on merits vide order dtd. 2.12.2014 wherein it is held that the word Nandini has acquired a distinctive character and had become wellknown, the use of another mark, different only in one alphabet, but with no difference in spelling or pronunciation in the local language, would very likely cause confusion in the minds of the public and as a result has dismissed the writ petitions and uphold the order of the IPAB. Inview of the order dtd.2.12.2-014, passed by Hon'ble High Court, the Co-ordinate Bench of the Hon'ble High Court has dismissed the writ petition Nos.37201-202/2014 by its order dtd. 5.1.2015. The plaintiff has challeged the said two orders before Hon'ble Supreme Court in SLP Nos. 23840-23845/ 2015 and 23847 & 23848/2015 which are pending for consideration. The plaintiff has suppressed the material facts and pending litigations before IPAB in OA.39/2011/TM/CH and OA.40/2011/TM/CH concerning the rightfulness of plaintiff's trademark registration. As such the present suit has to be stayed till the disposal of the proceedings before Hon'ble Supreme Court and IPAB.
11 O.S.No.3791/20158. It is further contended by the 2 nd defendant that in the present suit plaintiff has taken exception to the existence of 1st defendant cafe, bearing the name Cafe Nandini, which is blatant falsehood. 2 nd defendant has no connection to the 1st defendant whatsoever. Since the 2nd defendant learned the existence of 1 st defendant, and the fact that the 1st defendant was illegally marketing its shop under the trading style of 2 nd defendant, selling food items using the trademark and copyright of the 2nd defendant and creating a false impression that the products sold by them were manufactured by the 2nd defendant, the 2nd defendant took action against the 1st defendant and the name board of the 1st defendant bearing the trademark of the 2nd defendant was immediately removed. There is a difference in the spelling of the plaintiff and 2 nd defendant names. The 1st defendant's signage outside the Cafe opened by it displayed the name Cafe Nandini which did not contain the letter 'h' that is the alleged trademark of the plaintiff. It is the 2 nd defendant that took swift action against the offensive acts of the 1 st defendant in order to defend its trademark rather than the plaintiff.
12 O.S.No.3791/20159. It is further contended by the 2 nd defendant that there is no basis for the plaintiff to maintain the present suit against them and despite being fully aware of the facts, plaintiff is persisting with the present suit with an ulterior motive of preventing the 2 nd defendant from using its own registered trademark. There is no subsisting cause of action for the present suit against them, and plaint is liable to be rejected. The plaintiff entered the market six years after the 2 nd defendant's brand NANDINI was launched and started a chain of restaurants under the deceptively similar name 'NANDHINI' with the intention of usurping the goodwill of the 2nd defendant's brand. The defendant No.2 is the prior user and prior registrant. Among these and other grounds 2nd defendant prayed to dismiss the suit.
10. On the basis of the above pleadings my predecessor in office has framed the following issues
1. Whether the Plaintiff proves that it is the registered owner of Trademark NANDINI DELUXE / NANDHINI?
2. Whether the Plaintiff proves that the Defendants had infringed the Plaintiff's well established Trademark NANDINI DELUXE by using offending trademark CAFE NANDINI?
13 O.S.No.3791/20153. Whether the Plaintiff proves that the Defendants have passed off their Trademark NANDHINI DELUXE?
4. Whether the Plaintiff is entitled for the decree of permanent and mandatory injunctions as sought for?
5. Whether the Plaintiff is entitled for the damages as sought for?
6. What Order or Decree?
11. The Plaintiff in order to substantiate their contention got examined its managing partner as PW1, got marked the documents at Ex.P1 to 18. On the other hand the Addl.Director (Marketing) of the 2 nd defendant is examined as DW1, got marked the documents at Ex.D1 to D27 and closed their side.
12. I have heard the learned counsel for the Plaintiff and 2nd Defendant. The counsel for the 2 nd defendant also filed written arguments.
13. The learned counsel for the Plaintiff has cited plethora of cases:
1. 2011(47) PTC 209 (BOM) Hindustan Unilever Limited Vs. Ashique Chemicals and others
2. 2011(46) PTC 466(DEL)- Creaves Cotton Limited Vs. Mohammad Rafi and others.14 O.S.No.3791/2015
3. AIR 1965 SC 980 - Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories
4. 2018(75) PTC 209(SC) -Nandhini Deluxe Vs. Karnataka Co-operative Milk Producers Federation Ltd
5. 1969 2 SCC 131 - K.R.Chinna Krishna Chettiar Vs. Shri Ambal and Co., and others.
14. The learned counsel for the Defendant No.2 has cited the following cases:
1. (2016) 2 SCC 683 - Syed Mohideen Vs. P.Sulochana Bai.
2. Judgment in O.S.No.174/2019 dtd.16.3.2020 of Hon'ble High Court of Delhi between Peps Industries Ltd. Vs., Kurlon Ltd.
3. Judgment in RFA No.251/2008 dtd.26.5.2010 of Hon'ble High Court of Karnataka in the case of Rangoon Chemical Works Pvt. Ltd., Vs. Hawpar International Ltd.
In fact the law pronounced on these judgments have become axiomatic and the same has been applied by me in the appreciation of the relevant material on record.
15. I answer the above issues are as follows:
Issue No.1: In the Negative Issue No.2: In the Negative Issue No.3: In the Negative 15 O.S.No.3791/2015 Issue No.4: In the Negative Issue No.5: In the Negative Issue No.6: As per final order, for the following:
REA S ON S
16. Issue No.1: It is the contention of the plaintiff that it is the registered owner of the trademark NANDHINI DELUXE and NANDHINI.
17. It is argued by the counsel for the plaintiff that the plaintiff has produced the trademark certificates at Ex.P3 to 6 which shows that they are the registered owner of the above said trademarks. They have also produced the copy right registration certificate at Ex.P7 which shows that they are the registered owner of the copyright NANDHINI.
18. Percontra, it is the contention of the defendant No.2 that plaintiff has failed to produce the proof of registration. Ex.P3 to 6 are in respect of class No.29. These are different as claimed by them in the plaint and the documents does not disclose they were valid as on the date of filing the suit.
19. The learned counsel for defendant No.2 vehemently argued that on perusal of the Ex.P3 to 6 16 O.S.No.3791/2015 shows that the registration under Ex.P3 was valid upto 7.10.2009, similarly Ex.P4 was valid upto 8.1.2011, Ex.P4 & 6 are valid upto 13.5.2014. From the perusal of Ex.P3 to 6, it is apparent that the trademarks were not valid as on the date of institution of the suit. The present suit was instituted on 24.4.2015. Plaintiffs have not produced any material to substantiate the fact that the trademark registrations were subsequently renewed and they were valid and current as on the date of the suit. The plaintiffs filed I.A.No.9 under order 7 rule 14(3) of CPC, seeking permission to produce additional documents after the conclusion of evidence by both parties. However, after hearing, this court by its order dtd. 23.1.2020 has dismissed the application filed by the plaintiff. The said order has attained finality as the same has not been challenged by the plaintiff. Since the plaintiff has failed to prove that it is the registered owner of trademark as on the date of institution of the suit,prayed this court to answer issue No.1 in the negative.
20. This court has meticulously perused the documents relied by the plaintiff in support of the ownership as to the registered Trademark. On perusal of Ex.P3 it shows the proprietary details of plaintiff as 17 O.S.No.3791/2015 N.Anand, A.Narasimha, Rupesh Anand trading as Nandhini Deluxe and having a trademark for the word mark Nandhini Deluxe vide certificate No.656498 issued on 10.10.2007 under class 29, the said registration is valid up to 7.10.2009. Ex.P4 shows the proprietary details of Plaintiff as as N.Anand, trading as Nandhini vide certificate No.656563 under class 29 issued on 12.10.2007 valid upto 8.1.2011 for the word mark Nandhini Label. Ex.P5 shows the proprietary details of plaintiff as N.Anand trading as Nandhini under class 42 certificate No.656496 issued on 10.10.2007 valid upto13.5.2014 for the word mark Nandhini. Ex.P6 shows the proprietary as N.Anand, certificate No.656499 under class 42 valid up 13.5.2014 for the word mark Nandhini Deluxe -DEV: Lamp. On perusal of these documents, it shows that the plaintiff was the registered owner of the trademark NANDHINI DELUXE and NANDHINI. The said certificates are valid up to 13.5.2014. The present suit is instituted on 24.04.2015, the plaintiff has not produced the legal use certificates which were valid at the time of filing the suit. Even during the pendency of the suit, plaintiff has not produced any documents to show that their registration is still valid with respect to the above said trademarks. Though the plaintiff has filed I.A.No.9 on 12.11.2019 for 18 O.S.No.3791/2015 production of the documents under order 7 Rule14(3) CPC, the same was dismissed vide order of this court dated 13.1.2020 by holding that the documents sought to be produced are online print outs which are noted as not for legal use. Further as argued by the learned counsel for the 2nd defendant, plaintiff has not preferred any appeal against the said order and it has attained finality. There is much force in the argument of learned Sr.Counsel for the defendant No.2 that just because the some of the cases are decreed in favour of the plaintiff, does not mean that it will have to be decreed against the other persons, as the earlier case and this case is completely different and involved between different parties. Even this court is of the opinion that such judgments amounts to judgment in personam as provided under section 41 of Indian Evidence Act and binding only between the parties and not against the whole world.
21. It is also pertinent to note that though the suit has been filed in the year 2015, even after 5 years, till the matter has posted for judgment, the plaintiff has not filed any legal use certificates showing that have continued to be the registered owner of the trademarks. It is also the contention of the defendant No.2 that they have opposed 19 O.S.No.3791/2015 the registration of the trademark of the plaintiff before IPAB and their opposition proceeding are pending for consideration. These facts clearly show that as the plaintiff has not produced any documents to show that they are the registered owner of the trademark NANDHINI DELUXE and NANDHINI, they have failed to prove that they are the registered owner of the Trademarks. Therefore, issue No.1 is answered in the negative.
22.Issue No.2 & 3: It is the contention of the plaintiff that the Defendant has commenced its business under the name CAFE NANDINI by using plaintiff's trademark NANDHINI DELUXE. The action of the Defendant to adopt the trademark CAFE NANDINI is fraudulent, illegal, contrary to law and unauthorized and calculated to deceive the customers and perverse, illegal and amounts to an act of deceit. The trade mark CAFE NANDINI is structurally, phonetically and visually similar to Plaintiff's registered Trademark. It is further contended that 1st defendant has commenced its business in the month of April 2015. The first defendant appears to be licencee of 2nd defendant who is using NANDINI for milk and milk products. The 2 nd defendant in Opposition No.256162 opposed the registration of plaintiff's trademark NANDHINI under No.1360905 in class 42 20 O.S.No.3791/2015 before before registrar of trademark which came to be dismissed on 17.4.2009. It is further contended that the defendants have no authority or right to use the trading style CAFE NANDINI for running restaurant. Since the Plaintiff and Defendants are engaged in business of providing food, the adoption of trade name CAFE NANDINI by Defendants is causing confusion among the customers and it also amounts to infringement and passing off under Trademarks Act.
23. Learned counsel Sri. Harikrishna S Holla, appearing on behalf of the plaintiff argued that the defendant No.1 is a licencee of 2 nd defendant. 1St defendant is a restaurant which comes under class 43. On perusal of Ex.P13 Bill it clearly shows that they are using the trade name Cafe Nandini. Even Ex.P10 to 14 shows that the 1st defendant is using Cafe Nandini. Even in the written statement filed by 2 nd defendant they admit that 1st defendant is a licensee and claims that they have no connection with 1st defendant. It is argued that 1 st defendant is the part of 2nd defendant only. It is contended by the 2nd defendant that 1st defendant has misused the name. However, the defendant No.2 admit that 1st defendant was selling food, thereafter they have taken against the 1st defendant. Even on perusal of 21 O.S.No.3791/2015 Ex.D16, it states that retail sellers in respect of milk. When the 1st defendant is the retail seller in respect of the milk he is supposed to sell milk only, and should not venture in the restaurant business. It is contended that despite 1st defendant is using cafe, the 2 nd defendant did not take proper action against them. It is argued that even on perusal of Ex.D18 & D22 a letter dtd. 11.6.2015 and 23.6.2015, it shows that 1 st defendant is using the name Cafe Nandini. It is argued that Mandya Milk Union gave license to 1st defendant. There is a privity between Mandya Milk Union and 2nd defendant and they are jointly liable for infringement. It is also contended that the Hon'ble Supreme Court upheld the right of plaintiff to use the word NANDHINI in a decision reported in 2018 75 PTC 209 (SC). It is contended that defendants are only into milk products. Therefore, the action of defendatns amounts to infringement of the plaintiff's Trademark.
24. Percontra, the learned Senior Counsel Sri.S.S.Naganand appearing on behalf of 2 nd defendant strenuously argued that even on perusal of Ex.P3 & P4, it shows that plaintiff is into the business of meat, fish poultry. On perusal of Ex.P5 it shows that they are into business of food and drink. Ex.P6 shows that they are into business of real spice.
22 O.S.No.3791/201525. Learned Senior Counsel has also drawn this court attention to Sec.27(1) and 29(1) of the Trademarks Act, 1999 and contended that that an infringement action does not lie against the registered proprietor of a trademark.
26. It is also contended that the burden of proving issue No.2 rests on the plaintiff. Sec.27 of Trademarks Act, 1999 provides that an action for infringement does not lie in respect of an unregistered trademark. Therefore, as a corollary, the plaintiff must prove that it is the owner of the registered trademarks as on the date of institution of the suit, in order to maintain a suit for infringement. It is argued that in the present case, the plaintiff has not produced any material to substantiate its contention regarding ownership of the mark NANDHINI or NANDHINI DELUXE as on the date of filing the suit. Therefore, on this ground alone, a suit for infringement filed by the plaintiff is not maintainable and prayed for answer the issue No.2 in the negative.
27. It is further argued that the plaintiff has obtained the registration of the word mark NANDINI and device mark. In fact, 2nd defendant has, in all, more than 30 registered trademarks in its name under various 23 O.S.No.3791/2015 classes.Though the words Nandhini of the plaintiff and Nandini of the 2nd defendant sounds phonetically similar, the plaintiff cannot prevent the 2 nd defendant from using the words 'Nandini' in relation to any products, as such use is statutorily protected under section 34 of the Trademarks Act, 1999. Sec.34 of Trademarks Act provides that a proprietor of a trademark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. It is an admitted fact that the 2 nd defendant's brand '"Nandini" was established in the year 1983, six years prior to the commencement of the plaintiff's business, and the 2nd defendant had also obtained registration for the word and mark 'Nandini' in the year 1986 itself, 3 years prior to the commencement of the plaintiff's business and 12 years prior to the plaintiff's application for registration in 1998. Being aware of the existence of the prior trademark of the 2nd defendant bearing the same name, the plaintiff's attempt to confer upon itself monopoly to use the word Nandini cannot be permitted.
28. It is argued that the plaintiff has also been unable to prove that the trademark of the plaintiff and the 2nd defendant are identical so as to cause confusion 24 O.S.No.3791/2015 in the minds of the general public. It is further contended that in a Judgment reported in (2018) 9 SCC 183 - Nandhini Deluxe Vs. Karnataka Milk Federation, the Hon'ble Supreme Court in the judgment inter-parties has considered the trademarks of both plaintiff and 2 nd defendant and has reached the conclusion that both the trademarks are completely different and there are hardly any common features in the marks of the plaintiff and 2 nd defendants. It was on this premise that the Hon'ble Supreme Court allowed the appeal filed by the plaintiff and granted registration of the trademark in favour of the plaintiff. The findings recorded in the earlier judgment between the parties acts as issue estoppel and the plaintiff cannot be allowed to now contend that the trademarks of the plaintiff and 2nd defendant are identical or nearly identical so as to cause confusion. Even otherwise, it is apparent, from a reading of the judgment that the question which arose for consideration is as to whether the plaintiff herein is entitled to registration of its trademark ' Nandhini' or Nandhini Deluxe' and not whether the 2nd defendant can run a hotel/restaurant under its brand name 'Nandini'. Therefore the question of 2nd defendant infringing the trademark of the plaintiff does not arise. The purported admission of DW1 in his cross examination that the mark Nandini/ Nandini 25 O.S.No.3791/2015 Deluxe should not be used by defendant No.2 for any hotel and restaurant services as per the order of Supreme Court in SLP Nos.23840-23845/2015 and 23847 and 23848/2015 is no consequence and cannot be relied upon by the plaintiff, as the 2nd defendant is not engaged in the business of running restaurants at present and the plaintiff has not produced any materials to show that the 2nd defendant is engaged in the business of running restaurant.
29. It is contended that in the course of cross examination, PW1 was shown Ex.P14 to 18 and questions were posed in relation to those exhibits. PW1 in his cross examination has admitted that:
"It is correct to suggest that the wordmark Nandini in Ex.P14 resembles with that appearing in Ex.D1. It is correct to suggest that the mark of grazing cow appearing in Ex.P18 resembles with that appearing in Ex.D2. It is correct to suggest that the trademark of plaintiff Nandini does not resembles with that of the trademark of defendant No. 2 appearing in Ex.D1. It is not correct to suggest that the word Nandini appearing in Ex.P15 to P17 resembles with that of mark of the plaintiff."
It is contended that in the light of the above admission by PW1, it is apparent that the plaintiff has been unable to demonstrate that its registered trademark has been infringed by the defendant No.2. The plaintiff 26 O.S.No.3791/2015 has further miserably failed to produce any materials to show that the 2nd defendant has granted license to the 1 st defendant for the purpose of running a restaurant under the trading style Cafe Nandini. It is apparent that the plaintiff has failed to prove that the 2 nd defendant has infringed upon the registered trademark of the plaintiff.
30. It is argued that even in Nandhini Case supra the Hon'ble Supreme Court has held at para 26.7 that the Nandhini and Nandini are both are different, both of them have adopted a different style. The letter H is not found in 2nd defendant. Moreover the plaintiff's trademark has got a lamp in it. The 2 nd defendant's mark has got a cow logo, Even on the perusal there is hardly any similarity. Even at para 27, it has held that we do not find that two marks are similar. Therefore, the plaintiffs are bound by Supreme Court Judgment and they are now estopped from contending that the plaintiff's mark and defendant No.2's mark are similar. The same is also hit by resjudicata.
31. It is also contended that para 29 of Kaviraj Pandit's case refers to deceptive similarity and degree of resemblance. However, in this case there is no deception, and the marks are not similar. Both are phonetically and 27 O.S.No.3791/2015 visually different. A passing off and infringement action are completely different. In a passing off action, there must be intention to deceive. The 2 nd defendant is having more registered trademarks than the plaintiff which runs into 4 pages in the written statement. The 2 nd defendant has more sales and advertisement expenditure than the plaintiff. 2Nd defendant is the co-operative operator and has no intention of passing off the mark of the plaintiff. The plaintiff has not produced any proper documentation for comparison of both the marks. It is contended that the 2nd defendant's trademark which are marked as Ex.D1 to 12 are valid upto 14.9.2021. It is contended that 1st defendant is not connected with 2nd defendant. Hence, they do not have any grievance if this court passes any order against the 1st defendant. It is argued that ratio of Nandhini's case has been wholly misunderstood. Hon'ble Supreme Court has ordered that the plaintiff is entitled for registration and opposition of the defendant No.2 is turned down. What follows next after registration is yet to decided. The 2 nd defendant is having morethan 32 brands and the contention of the plaintiff that we are into milk only is not tenable. Also referred to the decisions relied by the plaintiff to contend that those decisions are not applicable to the present case.
28 O.S.No.3791/201532. It is further contended that in an action for passing off, the plaintiff is required to show colourable imitation so calculated to cause deception that the goods traded by him are to be taken to by the ordinary purchaser as that of the plaintiff. There is a difference in the spelling of the plaintiff's and defendant No.2's names, in as much as the plaintiff's name has the addition of the letter 'h'. The signage outside the Cafe opened by the 1 st defendant displayed the name 'Cafe Nandini' which did not contain the letter 'h' that is the alleged trademark of the plaintiff herein.
33. Secondly, the contention of the plaintiff that the defendants are attempting to tread on the goodwill and reputation of the plaintiff is equally misconceived. In this regard it is submitted that the 2 nd defendant has produced a statement showing advertisement and promotional expenditure from 2005-06. There is absolutely no cross examination by the counsel for the plaintiff on both the statements produced by the 2 nd defendant and as such the statements are deemed to have been proved in the manner known to law. A perusal of the statement reveals that the 2 nd defendant has spent substantially on advertisement and sales promotion to bolster its name and reputation in the market. That 29 O.S.No.3791/2015 apart, the plaintiff, admittedly, had a long-standing business relationship with the 2nd defendant as it used to purchase the 2nd defendant's milk and milk products. Therefore, there is no need for the 2 nd defendant to tread on the reputation and goodwill of the plaintiff. The plaintiff has not adduced evidence of any consumers/ independent witnesses to the effect that the customers of the plaintiff were led to believe that the restaurant started by the 1st defendant has any connection with the plaintiff. Thus, the plaintiff has failed to prove a misrepresentation to the public by the defendants which would likely lead the public into believing that the plaintiff has offered the goods and services. The 2 nd defendant took action against the offensive acts of the 1 st defendant by lodging police complaint against the 1 st defendant, who immediately thereafter removed the sign board. Therefore, inview of the above submissions prayed to answer issue No.2 and 3 in the negative.
34. I have considered the arguments of both counsels with utmost reverence and also given careful considerations to the rulings relied by both the counsels. Without going to the merits of the case on infringement, in view holding issue No.1 that the plaintiff is not able to show that they are registered owner of the trademark 30 O.S.No.3791/2015 NANDHINI DELUXE or NANDHINI as Sec.27(1) mandates that no person shall be entitled to institute a suit to prevent or to recover damages for the infringement of unregistered trademark, the present suit is not maintainable against the defendants for infringement. Hence, I hold the above issue no.2 in the negative.
35. On perusal of the evidence of PW1, he has stated that the plaintiff was constituted in the year 1989. Even on perusal of certified copy of the partnership deed at Ex.P1, it shows that the partnership firm came into force from 1.4.1989 with the name of M/s.Hotel Nandhini Deluxe. DW1 in his evidence has stated that the word Nandini has been used by them since the year 1983. Even on perusal of the Ex.D6 trademark certificate it reveals that the marks are used since 4.1.1983. Various documents produced by the defendant shows that as on the date of filing the suit, they are the registered owners of the trademark NANDINI and the same as used since 4.1.1983 and valid upto 14.09.2021.
36. It is a settled principle of law that even an unregistered proprietor of trademark can maintain a suit against the registered proprietor of the trademark. However, they need to show that they are the prior user 31 O.S.No.3791/2015 in respect of the said trademark. In the present case on perusal of the entire records it shows that the plaintiff has established its business in the year 1989 and the defendant No.2 has commenced its business way back in the year 1983 and obtained the registration of their mark in the year 1986. Therefore, the suit for passing off against the 2nd defendant is not maintainable.
37. If this considers the passing off action against the 1st defendant, in the cause title, address of the 1 st defendant is shown as Somanahalli, Maddur Gate, Mandya District. Even on perusal of Ex.D6 the mutual agreement dtd.19.1.2015, reveals that the Mandya Milk Union has entered into said agreement with first defendant for the retail sale of milk and milk products for the period of 3 years ie., till 18.1.2017. As per Sec.134(1)
(c) of Trademarks Act, 1999, passing off action has to be filed where the defendant is carrying on the business and Sec.20 of CPC is applicable for filing suit for passing off. Since the suit is filed in the District of Bangalore, the same cannot be entertained before this court. Even considering the passing off action against the defendant no.2 on the merits, it is the contention of the plaintiff that the 1st defendant commenced its business in the month of April 2015 at Mandya District. It is pertinent to 32 O.S.No.3791/2015 note that 2nd defendant has issued a letter dtd.23.6.2015 at Ex.D22 to the Executive Director Mandya Milk Union on unauthorized use of Cafe Nandini by the 1 st defendant asking them to remove the said board and to report the action taken against the 1st defendant to the 2nd defendant. The Executive Director of Mandya Milk Union has replied to the said letter at Ex.D23 dtd.30.6.2015 stating that the name Cafe Nandini has been completely removed. It shows that soon after the filing of the suit, within two months 2 nd defendant has taken a strict action against the 1st defendant for misusing of their trademark NANDINI. Moreover, the 2 nd defendant has specifically contended that they have not issued any license to the 1st defendant to run the restaurant. On coming to know that, 1st defendant was running a restaurant, 2nd defendant has taken strict action against them before police and got closed the same. Inview of closing of the business the suit against the 1st defendant either even for passing off does not arise. Therefore, the suit against Defendant No.1 is infructuous. Hence, I answer the above issue no.2 & 3 in the negative.
38. Issue No.4 and 5: In view of holding issue No.1 to 3 in the negative plaintiff is not entitled for the 33 O.S.No.3791/2015 relief of permanent injunction, mandatory injunctions and for damages as sought. Though the plaintiff has sought for damages of Rs.25,000/- per day from the date of filing the suit, there is no pleading to support the same. The plaintiff has also not led any oral evidence or produced any documentary evidence in support of its claim for damages. Hence, I hold the above issue no.4 and 5 in the negative.
39.Issue No.6: It is contended by the defendant no.2 that the suit of the plaintiff is liable to be dismissed with exemplory costs. The plaintiff herein has suppressed material facts pertaining to pending litigation before the IPAB in OA.39/2011/TM/CH and OA.40/2011/TM/CH concerning the rightfulness of the plaintiff's trademark registration despite the existence of the prior trademark of the 2nd defendant. The above appeal has been filed by the 2nd defendant challenging the order passed by the Deputy Registrar of the trade mark registry on plaintiff's registration of the plaintiff's trademark in class 42(Presently class 43). Inview of Sec.124 of the Trademarks Act, 1999, the present suit has tobe stayed till the disposal of the proceedings before IPAB.
40. Since both parties proceeded with the trial and as there is no objection to proceed with passing the 34 O.S.No.3791/2015 judgment, this court posted the matter for judgment after arguments of both the parties.
41. Inview, this findings on issue No.1 to 5 the plaintiff is not entitled for the relief as sought for. Hence, I proceed to pass the following:
ORD ER The suit of the plaintiff is hereby dismissed.
No order as to costs.
Draw decree accordingly.
[Dictated to the Judgment Writer directly on computer, computerised, and print out taken by him, corrected and then pronounced by me in open court, this the 3 rd day of October 2020].
(SADANANDA NAGAPPA NAIK) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BANGALORE ANNEXURE List of witnesses examined on behalf of Plaintiff:
PW1 : N.Ananda List of documents marked on behalf of Plaintiff:
Ex.P1 & 2 : CC of Instrument of partnership Ex.P3 to 6: Trademark registration certificates Ex.P7 : Copyright registration certificate Ex.P8 : CC of Partnership Deed Ex.P9 : Menu card of the Plaintiff's Ex.P10 : Packing cover of the plaintiff 35 O.S.No.3791/2015 Ex.P11 to 13: 3 Bills of defendant Ex.P14 to 16: Photographs of the defendant's cafe Ex.P17 : Packing cover of the defendant Ex.P18 : Packing box.
List of witnesses examined on behalf of Defendant:
DW1 : M.Raghunandan List of documents marked on behalf of Defendant:
Ex.D1 & 2: Copies of certificate of registration of trademark of 2nd defendant Ex.D3 to 6: Legal use certificate of trademark registration under class 29.
Ex.D7 : Legal use certificate for device Ex.D8 : Legal use certificate for TM under Class 30 Ex.D9 to 12: Legal use certificates Ex.D13 : Statement of expenses for advertisement Ex.D14 : Statement of sales turn over of defendant Ex.D15 : Application for retail sales Ex.D16 : Original agreement dtd. 19.1.2015 Ex.D17 : Orders of District Milk Union, Mandya Ex.D18 : Letter dtd.11.6.2015 Ex.D19 : Intimation letter dtd. 11.6.2015 Ex.D20 : Retail sale cancellation orders Ex.D21 : FIR Copy Ex.D22 : Letter dtd. 23.6.2015 Ex.D23 : Reply dtd. 30.6.2015 Ex.D24& 25: Photographs Ex.D26 : CD containing Ex.D24 & 25 Ex.D27 : Letter of authorisation.
XVIII Addl. City Civil Judge Bangalore City.36 O.S.No.3791/2015
Judgment pronounced in the open court as per separate judgment. Operative portion of judgment is as follows:
ORDER The suit of plaintiff is hereby dismissed.
No order as to costs.
Draw decree accordingly.
XVIII Addl.C.C. & S.J., Bangalore