Karnataka Cooperative Milk Producers Federation Limited Vs Vinod Kanji Shah

# Madras High Court Protects 'Nandini' Trademark: Sets Aside Dismissal of Opposition Against Identical Mark for Agarbattis

## Introduction

The trademark 'Nandini' has long been synonymous with dairy products in Karnataka and surrounding regions, owing to its extensive and continuous use by the Karnataka Cooperative Milk Producers Federation Limited since 1983. This mark enjoys significant goodwill and reputation as a household name for milk and milk-based products. The recent judgment of the Madras High Court in (T)CMA(TM) No.112 of 2023 reaffirms the judiciary's commitment to safeguarding well-known marks from deceptive similarity, even when applied to non-competing goods. In this appeal transferred from the Intellectual Property Appellate Board, the Court overturned the Deputy Registrar of Trade Marks' order dismissing the Federation's opposition to registration of an identical 'Nandini' mark (in stylised small letters without prefix or suffix) for agarbattis and doops in Class 3. The decision turns on phonetic identity, identical stylistic presentation, and the risk of consumer confusion or association, distinguishing it from the Supreme Court's earlier ruling in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183. By allowing the appeal, the Court emphasized that phonetic and visual similarity, coupled with the mark's acquired reputation, can justify refusal of registration under Sections 11 and 11(a) of the Trade Marks Act, 1999, irrespective of goods being dissimilar, thereby reinforcing protection against dilution or unfair advantage being taken of established marks.

## Factual Background

The appellant, Karnataka Cooperative Milk Producers Federation Limited (KMF), is a federation of milk producers engaged in the procurement, processing, distribution, and sale of milk and milk products across Karnataka and neighbouring states. Since 1983, KMF has continuously used the trade mark 'Nandini' for its entire range of dairy products, building substantial goodwill and making it a household name in the region. The mark is duly registered and enjoys widespread recognition. The first respondent, Vinod Kanji Shah & Nitin Kanji Shah trading as Shalimar Agarbatti Company, secured copyright registration for labels featuring 'Nandini' in 1985 and obtained registration of the mark 'Nandini' under No.501980 in 1988, presumably for their goods. In the trade marks journal, KMF noticed an advertisement of the first respondent's application No.694185 in Class 3 for registration of a label mark prominently featuring the word 'Nandini' (written entirely in small letters, without any prefix, suffix, or distinctive device dominating the word) in respect of agarbattis (incense sticks) and doops (incense cones). Alarmed by the identical word and near-identical stylisation, KMF filed opposition No.731657, raising grounds under Sections 9 (distinctiveness), 11 (deceptive similarity and likelihood of confusion), 11(a) (passing off), and 18 (entitlement to registration) of the Trade Marks Act, 1999. The Deputy Registrar dismissed the opposition on 05.04.2010, holding that 'Nandini' is a personal name over which no monopoly can be claimed, the goods are entirely different, resemblance is minimal, and no confusion or deception is likely. Aggrieved, KMF appealed the order, which was originally filed before the IPAB and later transferred to the Madras High Court following abolition of the IPAB.

## Procedural Background

The opposition proceedings were conducted before the Deputy Registrar of Trade Marks, Chennai (second respondent), who passed the impugned order dated 05.04.2010 rejecting KMF's opposition to application No.694185. The appeal against this order was initially instituted before the Intellectual Property Appellate Board, Chennai, under Section 91 of the Trade Marks Act, 1999. Following the abolition of the IPAB and transfer of pending appeals to High Courts, the matter was renumbered as (T)CMA(TM) No.112 of 2023 before the Madras High Court. The appeal came up for final hearing before Honourable Mr. Justice N. Anand Venkatesh. Mr. S. Ravi, Senior Counsel, assisted by Mr. A. Venkatesh Kumar, Mr. R. Sanjeev, and Mr. A. Shravan, appeared for the appellant. The first respondent was served but chose not to contest effectively, neither engaging counsel nor appearing in person. The second respondent (Deputy Registrar) was represented by Mr. J. Madanagopal Rao, Senior Panel Counsel. The Court reserved judgment on 08.01.2026 and delivered it on 19.01.2026, allowing the appeal and setting aside the impugned order.

## Reasoning and Decision of Court

The Court began by noting the undisputed facts: both parties use the word 'Nandini', the appellant enjoys long-standing reputation and registration for dairy products, and the first respondent sought registration for agarbattis and doops in Class 3. The Deputy Registrar rejected the opposition primarily on grounds that 'Nandini' is a personal name (derived from Hindu mythology, meaning a divine cow or goddess), no exclusive right exists over it, goods are dissimilar, resemblance is minimal, and no confusion is likely. The Court then analysed the Supreme Court's decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183, where the same appellant opposed registration of 'NANDHINI DELUXE' for restaurant foodstuffs. In that case, the Apex Court upheld registration, finding 'NANDHINI' generic, goods dissimilar (no milk products claimed), phonetic similarity insufficient due to the added 'DELUXE' and different stylisation/logos, and no deceptive similarity when viewed as a whole. The Madras High Court distinguished the present case on critical facts: here, the offending mark uses 'Nandini' identically—without prefix/suffix—and in the exact same all-small-letter style as the appellant's prominent usage. Phonetically identical and visually/stylistically near-identical, the mark carries a high risk of deception or association, especially given the appellant's massive reputation built over decades. A consumer familiar with 'Nandini' dairy products could easily be misled into believing a connection exists with the incense products. The Court held that the Deputy Registrar failed to consider these distinguishing features—phonetic identity, identical stylisation, and acquired reputation—rendering the impugned order erroneous. Accordingly, the appeal was allowed, the order dated 05.04.2010 set aside, and no costs were imposed.

## Point of Law Settled in the Case

This judgment settles that phonetic identity combined with near-identical stylisation of a well-known mark can render a later mark deceptively similar under Section 11 of the Trade Marks Act, 1999, warranting refusal of registration even for dissimilar goods in different classes, where there exists a likelihood of confusion, association, or unfair advantage being taken of the earlier mark's reputation. The Court clarified that the Supreme Court's ruling in Nandhini Deluxe (2018) 9 SCC 183 does not lay down an absolute proposition protecting all uses of 'Nandini/Nandhini'; distinctions in additional elements (prefix/suffix like 'Deluxe'), different artistic presentation, logos, and overall get-up are decisive. Where the later mark adopts the dominant word identically in spelling, pronunciation, and writing style without differentiating features, and the earlier mark enjoys substantial goodwill, opposition must succeed to prevent deception or dilution. This reinforces holistic comparison of marks in totality while giving weight to acquired distinctiveness and consumer perception in well-known marks.

**Case Detail**  

**Title:** M/s. Karnataka Cooperative Milk Producers Federation Limited v. Vinod Kanji Shah & Nitin Kanji Shah, Trading as Shalimar Agarbatti Company & Anr.  

**Date of Order:** 19.01.2026  

**Case Number:** (T)CMA(TM) No.112 of 2023  

**Neutral Citation:** Not specified in the judgment  

**Name of Court:** High Court of Judicature at Madras  

**Name of Hon'ble Judge:** Mr. Justice N. Anand Venkatesh  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

**Written By:** Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi  

**Suggested Titles:**  

1. Phonetic and Stylistic Identity Seals Victory for 'Nandini': Madras HC Overturns Opposition Dismissal in Agarbatti Trademark Case  

2. Madras High Court Protects Well-Known 'Nandini' Mark: Identical Stylisation Triggers Deceptive Similarity Despite Dissimilar Goods  

3. Distinguishing Nandhini Deluxe: Madras HC Allows Appeal Against Registration of Identical 'Nandini' for Incense Products  

**Suggested Tags:** Trademark Opposition, Deceptive Similarity, Section 11 Trade Marks Act, Well-Known Mark, Phonetic Identity, Stylistic Similarity, Nandini Trademark, Madras High Court, Dissimilar Goods, Passing Off, Acquired Reputation, Intellectual Property Appeal  

**Headnote of Article:** In a significant ruling, the Madras High Court set aside the dismissal of opposition to registration of the mark 'Nandini' in Class 3 for agarbattis, holding that identical phonetic identity and stylisation create deceptive similarity and likelihood of confusion with the appellant's well-known 'Nandini' mark for dairy products, distinguishing it from the Supreme Court's Nandhini Deluxe judgment due to absence of differentiating elements like suffix or different get-up.

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The Karnataka Cooperative Milk Producers Federation Limited (KMF), using the well-known registered trade mark **'Nandini'** since 1983 for milk and dairy products across Karnataka and neighbouring states, opposed the first respondent's (Shalimar Agarbatti Company) application for registering an identical word mark **'Nandini'** (in small letters, same style, with floral/bird devices) for agarbattis and dhoops in Class 3. The Deputy Registrar dismissed the opposition in 2010 primarily on grounds that 'Nandini' is a personal/generic name, goods were different, resemblance was minimal, and no confusion was likely. Aggrieved, KMF appealed (initially to IPAB, later transferred to Madras High Court as (T)CMA(TM) No.112 of 2023). Distinguishing the Supreme Court decision in *Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.* (2018) 9 SCC 183 — where opposition was rejected due to added 'Deluxe', different logos, dissimilar overall presentation, different goods/business, and generic nature of the term — the High Court held that here the proposed mark was phonetically identical, written in the identical style (all small letters) without any prefix/suffix, and likely to deceive/mislead consumers familiar with KMF's reputed 'Nandini' mark despite different goods, rendering it deceptively similar. The impugned order was set aside and the appeal allowed.

**Crisp bullet points of law settled in the case:**

- Phonetic identity combined with identical stylistic presentation (same manner of writing, all small letters, no prefix/suffix) of the word mark can render it deceptively similar to an earlier reputed mark, even for dissimilar goods, leading to likelihood of confusion/misleading consumers familiar with the prior mark. (Para 14)

- Where the overall visual and phonetic presentation of the mark is substantially identical (unlike cases where additional words like 'Deluxe' or materially different logos distinguish the marks), the generic or mythological nature of the word alone does not preclude protection against deceptive similarity under the Trade Marks Act, 1999. (Para 11–14, distinguishing *Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.*, reported in 2018 (9) SCC 183)

**Case Title:** Karnataka Cooperative Milk Producers Federation Limited Vs Vinod Kanji Shah & Nitin Kanji Shah, Trading as Shalimar Agarbatti Company & The Deputy Registrar of Trade Marks  

**Order date:** 19.1.2026  

**Case Number:** (T)CMA(TM).No.112 of 2023  

**Neutral Citation:** Not available in provided document (Madras High Court web copy)  

**Name of court:** High Court of Judicature at Madras  

**Name of Judge:** The Honourable Mr. Justice N. Anand Venkatesh

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

**Written By:** Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi