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In view of the foregoing, it is ordered that the opposition No. MAS-194405 is dismissed and application No. 982285 in Class-29 shall proceed to registration subject to deleting the items “Milk and Milk products” from the specification of goods by filing a request on form TM-16 and the amended application should be notified in the Trade Marks Journal.” ORDER DATED 20TH APRIL, 2010 OF THE IPAB :

11. The aforesaid order rejecting the opposition of the respondent to the registration of trade mark ‘NANDHINI’ as sought by the appellant and allowing appellant’s application for registration, except for milk and milk products, was challenged by the respondent by filing set of appeals. One such appeal being OA/4/2008/TM/CH was decided by IPAB vide its order 20 th April, 2010. The IPAB referred to the judgment of this Court in Vishnudas Trading as Vishnudas Kushandas vs. The Vazir Sultan Tobacco Ltd. and Anr.2 and quoted the following passage therefrom:-

13. The IPAB noted that in the instant case, the respondent is dealing with milk and milk products whereas the appellant is dealing with the other products like meat and fish etc. from which dishes are 2 1996 SCALE (5) 267 prepared in its restaurants and served to the customers. It took note of certain principles that when a person trades or manufactures one good under the broad classification having no bona fide intention to trade in all other goods falling under that broad classification, he cannot be permitted to enjoy monopoly in articles falling under such classification as held in Vishnudas Trading as Vishnudas Kushandas2 . Therefore, in the instant case, when the respondent has its limited business only in milk and milk products with no intention to expand the business of trading in other goods falling under Class 29 and the appellant was given registration in other articles only, specifically excluding milk and milk products, there was nothing wrong in according registration of those products in favour of the appellant under the trade mark ‘NANDHINI’. The IPAB also observed that the respondent had failed to prove that by allowing such registration in favour of the appellant, any confusion or deception would ensue. On that reasoning, appeal of the respondent was dismissed. At the same time, the appellant was asked to file a request on Form 16 to delete the goods ‘milk and milk products’ The appellant filed the affidavit to this effect, as directed by IPAB on 18th July, 2011.

(iii) Another submission of Mr. Sushant Singh was that the finding of the High Court that the mark is prohibited from registration in respect of entire class or classes of goods runs contrary to the principle of law laid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.9 where the Court has observed that the monopoly under Trademark only extends to the goods which are falling in a particular class and not the entire class of goods and the trade mark which is identical or similar in nature can be registered for the goods which are falling within the same class inasmuch as giving the monopoly to the entire class of goods and services to the registered proprietor would lead to trafficking in the trade mark which is not the object and the purpose of the Trade Mark Act.

30. Having arrived at the aforesaid conclusion, the reasoning of the High Court that the goods belonging to the appellant and the respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the appellant to have the registration of the concerned trade mark in its favour, would be meaningless. That apart, there is no such principle of law. On the contrary, this Court in Vishnudas Trading as Vishnudas Kushandas2 has decided otherwise as can be seen from the reading of para 47 of the said judgment:-