Use of Identical Trade Mark Without Suffix or Stylisation Is Deceptively Similar Even for Dissimilar Goods: Madras High Court

"Where a mark has acquired a household identity, its protection must extend beyond class boundaries" –  In a notable decision Madras High Court set aside the Deputy Registrar of Trade Marks’ order dismissing an opposition filed by Karnataka Cooperative Milk Producers Federation Ltd., the proprietor of the well-known ‘NANDINI’ trademark for milk and dairy products.

Justice N. Anand Venkatesh held that the respondent’s attempt to register ‘nandini’ for agarbattis and dhoops in Class 3 was deceptively similar, even though the products were different, because the mark was phonetically identical and presented in a visually indistinguishable style.

The Court held that the Deputy Registrar had "erroneously rejected the opposition without appreciating the phonetic identity, visual similarity, and long-standing reputation of the appellant’s mark", and emphasized that consumer confusion remains the core test under the Trade Marks Act, 1999.

"Generic word defence fails when identity of mark and manner of use mislead the consumer"

At the heart of the legal dispute was the contention that ‘nandini’ is a generic or personal name, and thus not exclusively owned by any party. However, the High Court rejected this reasoning outright, observing that "even generic terms, when associated with a specific source over time, acquire distinctiveness warranting protection against deceptive use."

Justice Venkatesh stated:
"Phonetically, the word ‘nandini’ is the same and it has also been written in the same style in the offending mark of the first respondent... a customer, who is well versed with the mark of the appellant, will certainly be misled."

While acknowledging that the goods – milk products on one side, and agarbattis on the other – were not similar in nature, the Court found that the identity of the marks in style, sound, and appearance overrode this difference.

"Product dissimilarity no defence where brand identity is mimicked in totality"

The appellant, a federation that has used the mark ‘NANDINI’ since 1983, argued that the adoption of the exact same name, written in lower-case style, by the respondents was intended to misappropriate their goodwill.

The Court concurred, pointing out that the Deputy Registrar had failed to examine how the consumer perceives the mark, especially given the reputation and public association built by the appellant.

The impugned mark, the Court noted, lacked any prefix, suffix, or visual differentiation—a key factual distinction from the Supreme Court’s decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183, which had been wrongly relied upon by the Registrar.

“In the case before the Supreme Court, the mark was 'NANDHINI DELUXE', supported by a tagline and logo that distinguished it from the appellant's dairy brand. Here, the word 'nandini' is used standalone, in the same font and case, making it deceptively similar,” the Court explained.

"Likelihood of confusion does not demand identity of goods, only identity of perception"

Justice Venkatesh clarified that the Trade Marks Act does not limit protection to identical goods, especially when dealing with marks that have acquired distinctiveness and recognition.

The Court held:
“The deception is not in the nature of goods sold, but in the perception created in the minds of the average consumer... Where a mark is well known, its protection cannot be constrained by rigid class boundaries."

By ignoring these factors, the Deputy Registrar had “adopted a myopic view of deceptive similarity”, and the rejection of the opposition was unsustainable in law.

Trade Mark Opposition Allowed, Registrar’s Order Set Aside

The Madras High Court allowed the appeal, holding that the impugned trademark of the respondent was deceptively similar to the registered and well-known mark of the appellant, even though the products were dissimilar.

"This Court finds that the second respondent has not taken into consideration the above crucial aspects and has erroneously rejected the opposition filed by the appellant,” the judgment concluded.

The impugned order dated 05.04.2010 passed by the Deputy Registrar of Trade Marks was set aside. The opposition by Karnataka Cooperative Milk Producers Federation Ltd. was upheld. No costs were imposed.

Date of Decision: January 19, 2026