Bangalore District Court
M S Nandhini Deluxe vs Ms Hotel Mysore Nandhini on 2 September, 2024
KABC010182372020
Form
No.9
(Civil)
Title
Sheet for PRESENT:Sri. Chinnannavar Rajesh Sadashiv,
Judgment
in Suits XVIII Additional City Civil Judge.
R.P. 91
Dated this the 2nd day of September, 2024
PLAINTIFF: M/s.Nandhini Deluxe
114/1(114/2) Lalbagh Fort Road,
Minerva Circle, Bangalore-560 004,
Partnership Firm
Represented by its Managing
Partner Mr.N Anand S/o Late
N.Narasimhaiah,
Aged about 69 years.
[By Sri.S.K, Advocate].
/v e r s u s/
DEFENDANT: M/s.Hotel Mysore Nandhini
#2916/1 L-46/I, Irwin Road,
Next to KSRTC Bus Stand,
Mysore-570 001.
Represented by its Partner.
[By Sri.M.D., Advocate].
Date of institution of the : 08/07/2014
suit
Nature of the suit : For Perpetual Injunction (IPR)
Date of commencement of : 08/01/2018
recording of the evidence
2 O.S.No.5137/2014
Date on which the : 02/09/2024
Judgment was
pronounced.
: Year/s Month/s Day/s
Total duration 10 01 26
****
This suit is filed by the plaintiff as against the defendant for the relief of Perpetual Injunction with respect to to infringement of plaintiff's trade mark, damages etc.,
2. The case of the plaintiff in brief is as under:-
The plaintiff is a registered partnership firm has been using the trade mark 'NANDHINI' for running Andhra Style Vegetarian & Non-Vegetarian Restaurant since 1989. The plaintiff is using the trade mark 'NANDHINI' in particular artistic word, design and get-
up with specially designed fonts with dots inserted in each of the alphabets and their trade mark 'NANDHINI' has become popular all over the India. It is running 12 branches i.e. 'NANDHINI Deluxe Restaurant & Hotel' in Bengaluru. It has obtained registration of their trade mark 'NANDHINI' and 3 O.S.No.5137/2014 'NANDHINI Deluxe Restaurant' and they renewed the validity of trade marks from time to time. The sales turnover of the plaintiff since 1989-90 is increasing from year to year and as on the date of suit i.e., 2013-14, it was of Rs.19,24,69,143.00/-.
It is further case of the plaintiff that it has recently learnt that the defendant has commenced Andhra Style Vegetarian and Non-vegetarian restaurant by name 'MYSORE NANDHINI' at Mysore city by using the plaintiff's registered trade mark 'NANDHINI'. The defendant has prefixed the words 'mysore' and this act of infringement is fraudulent, illegal, contrary to law and calculated to deceive the customers i.e., tourists, who visit the Mysore. The defendant has no authority or right to use the trade mark/trading style/Copyright 'MYSORE NANDHINI' for his restaurant business as it is causing confusion amongst the customers with respect to restaurant of the plaintiff. The defendant has adopted the trade name 'MYSORE NANDHINI', to deceive the customers 4 O.S.No.5137/2014 of the plaintiff. The name adopted by the defendant is similar to the trade mark of the plaintiff. Hence, the defendant has infringed the trade mark of the plaintiff.
The cause of action arose to the plaintiff during the month of June, 2014, when it came to know about hotel of the defendant and thereafter it continued. So, the plaintiff prayed to grant the decree of permanent injunction restraining the defendants or anybody claiming under it from infringing the plaintiff's copyright/ trademark 'NANDHINI' by using offending mark 'MYSORE NANDHINI' in any manner. Further, prayed to direct the defendants to surrender the entire stock of unused offending bills, negatives, positives, transpencies, blocks for destruction. It also sought rending the account of the profit and to pay the damages of Rs.10,000/- per day from the date of filing this suit to the plaintiff along with costs.
3. On issuance of suit summons, defendant appeared and filed written statement. In the said written statement it has admitted that it is running 5 O.S.No.5137/2014 the hotel in the name and styled as 'mysore nandhini' at Mysore. But it has denied that it is infringing the plaintiff's trade mark 'NANDHINI'. It has contended that the word 'NANDHINI' is the name of Goddess 'Ganga', 'Durga' and 'Adi Shakti'. Hence, nobody could monopolize the said name. It has also contended that the plaintiff is running 'NANDHINI Deluxe Restaurant & Hotel' at Bengaluru and it is running 'mysore nandhini Restaurant' at Mysore and hence, there is no question of infringing the trade mark of the plaintiff.
It has further contended that it has affixed the 'mysore' to the word 'nandhini' . The font size of the 'mysore' and font size of the 'nandhini' are one and the same. The font style of the plaintiff trade mark is different from the font size of the defendant trade mark. The plaintiff is using the symbol of 'Dev Lamp' prefixing to the word 'NANDHINI Deluxe' but it is not using the said symbol. Each alphabet of the word 'nandhini' contains dots within them but it is not 6 O.S.No.5137/2014 using the said dots. The word 'Deluxe' is suffixed to the trade mark of the plaintiff but said word is absent in it's trade name. It has mentioned the word 'Heritage' at the bottom of it's trade name in small font but no such word is used by the plaintiff. So, he has contended that there are several distinguishing factors and trade name of the defendant is distinct from the trade mark of the plaintiff. Hence, there cannot be any infringement of trade mark of the plaintiff. So, it prayed to dismiss the suit with costs.
4. On the basis of above pleadings, my predecessor in office has framed the following issues :
1. Whether plaintiff proves that it is the registered owner and copyright holder of trademark 'NANDHINI' ?
2. Whether the plaintiff proves that the defendant infringed the plaintiff's well established trade mark and copyright of the trade marks 'MYSORE 'NANDHINI'?
3. Whether the plaintiff is entitled for decree of permanent & mandatory injunction as sought for?
5. Whether the plaintiff is entitled for the damages as sought for?
6. What order or decree?
7 O.S.No.5137/2014
5. In order to prove the case, the Managing Partners of the plaintiff have got examined themselves as PW.1 & P.W.2 and got marked Ex.P1 to 18. In order to rebut the case of the plaintiff, the proprietor of the defendant has got examined himself as DW-1 and got marked Exs.D.1 to 4.
6. Heard the advocate for plaintiff as well as defendant. The learned counsel for plaintiff has filed written argument and relied upon the following citations;
1) 2007 SCC Online Mad 1646 between Kishore Jain Vs. Navarathna Khazana Jewellers;
2) 1967 SCC Online Mad 177 between The Andhra Perfumery Works Joint Family Concerns;
3) M/s.Durga Fabrics, Chennimalai & Ors., Vs. Ms.SriDurga Textiles, Karuri;
4) 2005 SCC Online Mad 862 between Gangotree Sweets and Snacks Pvt. Ltd., Chennai Vs. Shree Gangotree Sweets, Snacks & Savouries;
5) M/s.Sri.Krishna Sweets Pvt Ltd., Vs. M/s.Sri Krishna Sweets;
6) (1969) 2 SCC 727 between Ruston & Hornsby Ltd., Vs. Zamindara Engineering Co.,;
8 O.S.No.5137/2014
7) 2012 SCC Online Del 4326 between Subhash Chand Bansal Vs. Khadim's and Anr.,
8) 1964 SCC Online SC 14 between Kaviraj Pandit Durga Dutt Sharma Vs. Navarathna Pharmaceutical Laboratories.
7. The learned counsel for defendant also relied upon the citation reported in (2018) 9 SCC 183 between NANDHINI Deluxe Vs. Karnataka Cooperative Milk Produces Federation Limited.
8. Perused the pleadings, evidence on record and citations relied by both side.
9. My findings on the above issues are as under:
Issue No.1)........... Affirmative; Issue No.2)........... Negative; Issue No.3)........... Negative; Issue No.4)........... Negative; Issue No.5)...........As per final order for the following:
10. ISSUE NO.1: Before going to decide the disputed facts, the Court has to keep in mind the following admitted facts.
The plaintiff is running the restaurant business in Bengaluru City in the name and 9 O.S.No.5137/2014 style of 'NANDHINI Deluxe Restaurant & Hotel' .
The defendant is running the restaurant in the name and style of 'mysore nandhini' at Mysore City.
The plaintiff is the trade mark holder of the word 'NANDHINI' as well as 'NANDHINI DELUXE' and its 'LOGO' .
So, keeping in mind the above said admitted facts, now I have to consider the evidence on record. Ex.P-1 is the Copyright trademark Certificate issued in favour of Mr.N.Ananda i.e., PW1 with respect to word-mark 'NANDHINI'', the date of registration was 13/05/2004 and renewal Date was 13/05/2014 and registration is valid upto 13/05/2024. Ex.P-2 is the Trademark Certificate issued in favour of plaintiff with respect to device-mark 'NANDHINI DELUXE DEV: LAMP' with effect from 13/05/2014 to 13/05/2024. The Trademark Type is 'DEVICE'. It contains ':LAMP', after the words 'NANDHINI DELUXE with tagline-The Real Spice of life' is also mentioned along with mark of 'red chilly'. So, peculiar DEVICE is registered as trade mark of the 10 O.S.No.5137/2014 plaintiff. So, tits case is with respect to said DEVICE including with respect to WORDMARK- 'NANDHINI'. So, considering both these documents, I hold that the plaintiff has proved that it is trade mark holder of 'NANDHINI' and 'NANDHINI DELUXE DEV: LAMP'. Ex.P.3 is the certified copy of copyright issued to Mr.N.Anand with respect to Artistic work 'nandhini DELUXE' with Dev:Lamp and with tagline-The real specie of Life and also the red chilly. So, tits is the artistic work of the plaintiff and plaintiff cannot claim that the word 'NANDHINI' itself is the artistic work. But, it is the trade mark holder of the word 'NANDHINI' with effect from 13/05/2014. Hence, I answer tits issue in the affirmative.
11. ISSUE NOS.2 TO 4:- As these issues are interlinked with each other, they have been taken up together to avoid repetition and to appreciate the evidence on record, they are taken up together for common discussion.
11 O.S.No.5137/2014
The burden of proving issue No.2 to 4 is upon the plaintiff. The plaintiff has to prove that the defendant has infringed the plaintiff's trade mark 'NANDHINI' by using offending trade mark 'MYSORE NANDHINI' . Ex.P-4 is the Menu-Card of the plaintiff's Hotel and also contains its logo with Dev:Lamp. Ex.P-5 is the Menu-Card of the defendant. Ex.P- 7 is visiting card of defendant. Ex.P- 8 and 9 are the photographs of the hotel of the defendant. Ex.D.1 and 2 are the photographs produced by the defendant containing its logo of the plaintiff as well as its hotel. So, I have perused and compared both the trade marks or trade names. If these logo and style of writing of names are perused with bare eyes then these are not similar to each one. In the trade mark of the plaintiff DEV:LAMP' is prefixed to the word 'nandhini DELUXE'. There is no such 'LAMP' used by the defendant. In each alphabet of word 'nandhini' , the plaintiff has put dots but no such dots are appearing in the name board of the defendant. The 12 O.S.No.5137/2014 word 'DELUXE' is used by plaintiff but such word is not used by the defendant. The word 'mysore' is used by the defendant and he has also put the word 'Heritage' after the word 'mysore nandhini' , but no such word is used by the plaintiff. The defendant has put the symbol of Mysore Palace but no such symbol is used by the plaintiff. If the prudent-man sees both trade names then there is no any confusion at all. If the ordinary prudent-man sees the name boards of plaintiff as well as defendant, he would not confuse whether both names are of the same Hotel. After comparing both photographs,I hold that the defendant has not using the deceptive, identical or similar trade mark or trade name of the plaintiff.
12. The learned advocate for plaintiff has argued that defendant has used the word 'NANDHINI' and hence, he has violated the trade mark or infringing the trade mark of the plaintiff. Admittedly, the hotel of the defendant is situated at Mysore. The Mysore is famous for Chamundeshwari Temple i.e., 13 O.S.No.5137/2014 Goddess of Durga and Goddess Durga is also called as 'NANDHINI' and defendant is used or established its hotel in the said name. Admittedly, the plaintiff has no any branches at Mysore City. Mysore City is famous for Palace or Chamundeshwari Temple. It is also called as cultural and Heritage City. If defendant has used the word 'nandhini' and used the symbol of Palace as well as the word heritage, then it cannot be said as violation of trade mark of the plaintiff. Defendant is running its hotel at Mysore and he has got every right to use the generic name of goddess 'NANDHINI' and even he can use the symbol of Palace, for which the Mysore is famous. Plaintiff has no right to question the same. Though the plaintiff is trademark holder of 'NANDHINI', the plaintiff cannot contend that nobody should use tits generic name 'NANDHINI'.
13. The Hon'ble Apex Court in (2018) 9 SCC 183 with respect to the present plaintiff's case as against the KMF was pleased to observe as under; 14 O.S.No.5137/2014
"Though there is a phonetic similarity insofar as the words 'NANDHINI'/NANDINI' are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the appellant has written 'NANDHINI' as its mark is totally different from the style adopted by the respondent for its mark 'NANDINI'. Further, the appellant has used and added the word 'Deluxe' and, thus, its mark is 'NANDHINI DELUXE'. It is followed by the words 'the real spice of life'. There is device of lamp with the word 'NANDHINI'. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark 'Cow' as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the appellant's mark with that of the respondent when these marks are seen in totality".
The word ''NANDHINI'' represents the name of Goddess and a cow. Tits word is used by people from all walks of life and it is also used in Puranas and 15 O.S.No.5137/2014 Hindhu Mythological stories. Hence, the plaintiff cannot claims monopoly of the word 'NANDHINI'.
14. A bare perusal of the name boards of the plaintiff as well as defendant would show that there is hardly any similarity of the plaintiffs mark with that of the defendant when these marks are seen in totality. Hence, the judgment relied by the defendant is aptly applicable to the facts of tits case. The plaintiff is claiming the exclusive right over the word 'NANDHINI' but it is generic word. Hence, plaintiff cannot claim its/its exclusive right over tits name. PW1 has admitted that he has no hotel in Mysore. So, it's case that tourists may be put into confusion of its hotel and that of defendant hotel cannot be accepted. Merely because defendant has used the word 'nandhini' it cannot be said that there is infringement of plaintiff's right. The Font size, style of writing the names etc., are not similar. Hence, the case of the plaintiff that there is an infringement of trade mark cannot be accepted.
16 O.S.No.5137/2014
15. The judgments relied by the plaintiff are not applicable to the facts of this case. In the first judgment reported in 2007 SCC Online Mad 1646 between Kishore Jain Vs. Navarathna Khazana Jewellers, there was an infringement of trade mark, the trade mark were used in the said case was 'KAZANA' and similar name was used by the defendant but in this case, the trade names are not similar one. Hence, said judgment cannot be applied.
16. In the 2nd citation reported in 1967 SCC Online Mad 177 between The Andhra Perfumery Works Joint Family Concerns, the similar word was used as 'Ganesh' but in this case, the names used are not the similar.
17. The 3rd citation reported in M/s.Durga Fabrics, Chennimalai & Ors., Vs. Ms.Sri.Durga Textiles, Karuri, the everything was used the same except adding 'Sri.Durga' but in this case everything is not similar except word is 'nandhini' . Hence, said case cannot be accepted. Likewise, in the case of 17 O.S.No.5137/2014 Gangotree Sweets and Snacks Pvt. Ltd., Chennai Vs. Shree Gangotree Sweets, Snacks & Savouries, the word 'Gangotree' and 'Shree Gangotree' were similar and identical but in this case no such similarity is there.
18. The last case of our Hon'ble High Court of Karnataka reported in M/s.Sri.Krishna Sweets Pvt Ltd., Vs. M/s.Sri Krishna Sweets, the word Sri.Krishna and Krishna were identical to each other. In this case, the word 'NANDHINI' or 'NANDHINI DELUXE' is not similar to the word 'mysore nandhini' Restaurant. Hence, the said citation is not at all applicable to the facts of this case.
19. In order to grant the relief of injunction, the Court should satisfy that the defendant has used the trade mark, which is deceptively similar. The question of deceptive similarity is a question of fact. So, the Court has to compare both the trade marks or trade names and then shall come to the conclusion. In this case if both names of plaintiff hotel as well as 18 O.S.No.5137/2014 defendant hotel are compared with bare eyes there is no any similarity in these names. When the two marks are not identical, the plaintiff has to establish that the trade mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered. But, in this case if both marks are compared, there is no chance of likely to deceive the customers. Hence, I hold that the plaintiff has not proved the issue No.2 to 4. Hence, the plaintiff is not entitle for any reliefs in this suit. Accordingly, I answer all these issues in the negative and I proceed to pass the following:
The suit of the plaintiff is hereby dismissed with costs.
*** [Dictated to the Stenographer, after transcription, the Script is corrected directly in computer, signed and then pronounced by me, in the Open Court on this the 2nd day of September, 2024.] [Chinnannavar Rajesh Sadashiv ] XVIII Additional City Civil Judge.
BENGALURU.19 O.S.No.5137/2014
1. List of witnesses examined on behalf of
a). Plaintiff's side:
PW.1 :: N.Ananda PW.2 :: Rupesh Ananda
b). Defendant's side:
DW1 :: K.S. Aruna
3. List of documents marked on behalf :
a). Plaintiff's side:
Ex.P.1 Certified copy of trademark registration certificate No. 1284398 in Class 42.
Ex.P.2 Certified copy of trademark registration certificate No. 1284399 in Class 42.
Ex.P.3 Certified copy of Copyright Certificate registration No. A-
62848/2002.
Ex.P.4 Menu-card of the plaintiff. Ex.P.5 Menu-card of the defendant. Ex.P.6 Original hand bill of the defendant. Ex.P.7 Visiting card of the defendant. Ex.P.8 & 9 Two photographs.
Ex.P.10 Notarized copy of Deed of
partnership reconstitution of
'Nandini Deluxe' dated 24.11.2020 Ex.P11 Certified copy of the death certificate of PW1.
Ex.P12 Certified copy of Deed of
Partnership of reconstitution of
20 O.S.No.5137/2014
'NANDHINI Deluxe' .
Ex.P.13 to Certified copies of Deeds of
15 Assignment.
Ex.P16 Form TM-P(3 in sheets).
Ex.P17 CD with respect to Ex.P-8 & 9.
Ex.P18 Certificate u/sec.65B of Evidence
Act with respect to Ex.P-17.
b). Defendant's side:
Ex. D.1 to 4 Two photographs along with two CD.
XVIII Additional City Civil Judge.
BENGALURU.