Balkrishna Hatcheries v. Nandos International Ltd. 2007(35)PTC295(Bom)

Balkrishna Hatcheries v. Nandos International Ltd. 2007 Case Study

Facts

1. A suit was instituted for an order of permanent injunction restraining the defendant from using his mark "Nandos" which was allegedly infringing the registered trademark "Nandus" of the plaintiff. 
2. The plaintiff has registered the trademark "Nandus" in respect of processed and frozen meat products and also applied for registration in respect of the restaurant business. 
3. The defendant also registered its trademark "Nandos" in more than 30 countries and applied in India for its restaurant business earlier than the plaintiff.
4. The plaintiff claimed infringement action on the ground of S.29(1), S.29(2)(b), and S. 29(4) of the Trade Marks Act, 1999. The plaintiff also claimed an action for passing off.

Issue

1. Whether the defendant had infringed the trademark "Nandus" registered by the plaintiff in respect of the processed and frozen meat products.

Observations

1. To raise an infringement action under S.29(1) the plaintiff has to establish that:-
1. The defendant's mark is identical or similar to the plaintiff's registered mark, and
2. The mark is being used in relation to the same goods for which the plaintiff's mark is registered.
2. S.29(2)(b) states that a registered trademark can be infringed if:-
1. the defendant uses a similar mark in relation to the identical or similar goods or services for which the registered trademark was in use.
2. Such use causes confusion to or deceives the public.
3. S.2(3) says that goods and services are said to be associated if both the goods and services have to be provided by the same business
4. S.29(4) empowers the plaintiff to raise an infringement action even in the case of use of the mark for dissimilar goods or services for which the trademark is registered if-
1. Marks are identical or similar, and
2. A registered trademark has a reputation in India, and
3. A registered trademark has a distinctive character or repute, and
4. Use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
5. Passing off - 3 essential elements to establish the tort of passing off:-
1. Goods/services must be sold/offered in a manner that deceives or is likely to deceive the public
2. The goods/services misrepresented to create confusion that the defendant's goods are the same as the plaintiff's.
3. Loss or likelihood of loss to the plaintiff.
6. Star Industrial Company Ltd. 1976- The tort of passing off invades the goodwill of a business and no goodwill can exist without the existence of a business. 

Ratio Decidendi

1. The plaintiff failed to prove that the defendant was using the identical or similar mark "Nandos" for the same goods or services i.e. processed or frozen meat products. 
2. Also, the defendant admitted that they do not sell processed or frozen meat products.
3. The plaintiff's trademark was registered for goods i.e. "processed and frozen meat" while the defendant's mark was used for service i.e. restaurants and food outlets.
4. Comparison is not allowed between the plaintiff's goods and the defendant's services for the purpose of S.29.
5. The following tests are applied to validate the similarity or association between the plaintiff's goods and the defendant's service, which the plaintiff failed to satisfy:-
1. Respective uses of goods/services
2. Respective users of the goods/services
3. Physical nature of the goods/services
4. Trade channels of the goods/services
5. Where goods likely to be found in supermarkets
6. The extent to which the goods/services are competitive
7. Whether the goods provided or services traded by the same business.
6. The plaintiff failed to establish the distinctive character or repute of the trademark:-
1. The turnover and advertising figures in the plaint were not certified by an auditor and were found to be incorrect.
2. Since the plaintiff was not in the business of restaurants/food outlets and selling sauces, no question of reputation arises here.
7. Mere knowledge of the existence of a registered trademark does not prove that the defendant's mark was taking unfair advantage of or was detrimental to the character or repute of the registered trademark.
8. Since the plaintiff had no business or goodwill or reputation in the business of running a restaurant or selling sauces, no action for passing off will arise.

Decision

1. The plaintiff failed to make out any primary facie case.
2. Dismissed the ad interim order which restricted the defendants from using the mark.