DR.REDDYS LABORATORIES LIMITED vs THE REGISTRAR OF TRADEMARKS

CMA(TM) No. 31 of 2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
RESERVED ON : 15.09.2026

PRONOUNCED ON : 26.10.2026
CORAM
THE HON'BLE DR.JUSTICE A.D.MARIA CLETE
CMA(TM) No. 31 of 2025
CNR:{HCMA012883812025}
AND
CMP NO. 32017 OF 2025
Dr.Reddys Laboratories Limited
8-2-337, Road
No.3, Banjara Hills,
Hyderabad,
Telengana-500 034.
..Petitioner(s)
Vs
1. The Registrar Of Trademarks
Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai-600 032.
2. Nice Neotech Medical Systems Pvt Ltd.
No. 85, Krishna Industrial Estate,
Vannagaram, Mettukuppam
Chennai 95.
..Respondent(s)
PRAYER IN CMA NO.31 OF 2025 – This Civil Miscellaneous Appeal is
filed under Section 91 of the Trade Marks Act, 1999, read with Rule 2(4) of the
Madras High Court Intellectual Property Rights Division Rules, 2022, (a) to
admit this appeal, (b) to call for the records of the impugned application relating
to the impugned order and issue an order setting aside/quashing the impugned
order dated 22.08.2025 passed by the respondent No.1.
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CMA(TM) No. 31 of 2025
PRAYER IN CMP No. 32017 of 2025 - To stay the operation of the Order
dated 22.08.2025 passed by the Assistant Registrar of Trade Marks and G.I. in
Trade Mark Application No. 1730955 and Opposition No. 797238.
For Petitioner(s): Mr.G.Ramesh
For R1:
Mr.Gangadaran, CGSC
For R2:
Ms.V.Aswini Anjana
J U D G M E N T
This Civil Miscellaneous Appeal is directed against the order dated 22.08.2025
passed by the Assistant Registrar of Trade Marks and Geographical Indications
and Copyrights, Chennai, whereby Opposition No.797238 filed by the appellant
was disallowed and Trade Mark Application No.1730955 filed by the second
respondent for registration of the device mark "nice" in Class 10, in respect of
medical equipment and apparatus, was accepted.
2. The appellant, Dr. Reddy's Laboratories Limited, states that it was
incorporated in 1984 and is a leading pharmaceutical company engaged in the
manufacture and marketing of active pharmaceutical ingredients, generic
medicines, biosimilars and other pharmaceutical products in India and abroad. It
claims to have established substantial goodwill and international reputation
through its business operations, extensive distribution network, research
facilities and continuous promotion of its products. According to the appellant,
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CMA(TM) No. 31 of 2025
it adopted the trademark "NISE" in 1995, derived from the active
pharmaceutical ingredient "Nimesulide" and the expression "Novel Inducer of
Soothing Effect". The mark is used for pain-relieving medicines, including
tablets and sprays, intended for inflammatory conditions, rheumatoid arthritis,
postoperative pain, fever and menstrual pain. The appellant claims registrations
for NISE and its formative marks in Class 5, including Registration Nos.803632
and 803620, dating from 26.05.1998, and subsequent registrations for NISE
KID TABLETS, NISE MR TABLETS, NISE TABLETS, NISE DROPS, NISE
SUSPENSION and NISE FLASH. It asserts that these registrations are valid
and subsisting and that extensive sales, advertisements and continuous use have
conferred substantial reputation and goodwill upon the mark, which it claims to
be well-known.
3. The second respondent, Nice Neotech Medical Systems Private Limited, was
incorporated on 10.07.2001 and is engaged in the manufacture and marketing of
medical equipment and apparatus, particularly equipment used in neonatal
intensive care. On 11.09.2008, it filed Application No.1730955 for registration
of the device mark "nice" in Class 10 for "Medical Equipment and Apparatus",
claiming use from 10.07.2001.The application was advertised in Trade Marks
Journal No.1558 dated 15.10.2012, subject to the condition restricting the area
to South India.
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CMA(TM) No. 31 of 2025
4. The appellant filed Opposition No.797238 on 03.01.2013, contending that the
second respondent's mark "nice" was visually and phonetically deceptively
similar to its earlier registered mark "NISE". It was further alleged that
registration and use of the impugned mark would be likely to cause confusion
and deception among the purchasing public and prejudice the appellant's rights
and goodwill associated with its registered trademark. It also pleaded that
"NISE" is a well-known trade mark and that the adoption of the impugned mark
was dishonest, invoked Sections 9(1)(a), 9(2)(a), 11(2), 11(3), 11(6), 11(7),
11(10), 12 and 18(1) of the Trade Marks Act, 1999, and asked the Registrar to
refuse the application in exercise of the discretion under Section 18(4).
5. The second respondent filed its counterstatement on 08.05.2013. It objected
that the notice of opposition had been verified by an agent without a power of
attorney. On the merits, it claimed adoption and use of NICE from 10.07.2001,
stated that it did not dispute the appellant's goodwill in medicinal and
pharmaceutical preparations, described NICE as a dictionary word and NISE as
a coined word, pleaded that the goods differ in price, packaging and use, and
undertook not to use NICE for pharmaceutical preparations. The appellant filed
evidence in support of opposition on 19.11.2013 through the affidavit of its
Associate Director (Legal), P. Jayavardhan. The affidavit sets out the sales of
the NISE family of marks from 1999-2000 to 2012-2013 and states that "both
the rival marks have same sound". The second respondent evidence in support
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CMA(TM) No. 31 of 2025
of its application is disputed. The appellant filed written submissions on
19.02.2025 and the second respondent on 20.03.2025.
6. After hearing the parties, the Assistant Registrar, by the impugned order
dated 22.08.2025, held that the nature, character and performance of the goods,
their trade channels and classes of purchasers were different and, therefore,
there will not be any confusion will prevail between the rival marks applied in
different classes i.e. 5 and 10. Accordingly, the opposition was disallowed and
the second respondent's application was accepted. Thereafter, the mark was
entered on the register under Certificate No.3914323 dated 10.10.2025.
7. Aggrieved by the order dated 22.08.2025, the appellant has preferred the
present appeal contending that the Assistant Registrar failed to appreciate its
prior adoption, continuous use, registrations and goodwill in the trademark
"NISE" since 1995. It is alleged that the Assistant Registrar erroneously treated
the goods as dissimilar merely because they fall under Classes 5 and 10, without
considering that pharmaceutical products and medical equipment are allied and
cognate goods within the healthcare sector, catering to overlapping consumers
and trade channels. The appellant further contends that the rival marks "NISE"
and "NICE" are phonetically identical and visually and structurally similar, the
substitution of the letter "S" with "C" being insufficient to eliminate the
likelihood of confusion or association. It is also alleged that the second
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CMA(TM) No. 31 of 2025
respondent dishonestly adopted the impugned mark to take advantage of the
appellant's reputation and that its claim of use from 10.07.2001 remained
unsupported by evidence. According to the appellant, the Assistant Registrar
failed to consider the documentary evidence of prior use and reputation, the
likelihood of confusion in the healthcare sector and the applicable statutory
provisions, and passed an unreasoned order contrary to settled legal principles.
The appellant therefore seeks to set aside the impugned order, allow Opposition
No.797238 and refuse registration of the second respondent's mark under
Application No.1730955.
8. On 18.12.2025, Mr. Gangadaran, learned Central Government Standing
Counsel, took notice for the first respondent. The first respondent has not filed
any counter.
9. The second respondent, Nice Neotech Medical Systems Private Limited,
represented by its Director and authorised signatory, Mrs. Sheeba Wilson, filed
a counter-affidavit denying the grounds raised in the appeal. It contends that the
appeal is devoid of merits and has been filed merely to prolong the opposition
proceedings, which continued for several years before the Trade Marks
Registry. According to the second respondent, the Assistant Registrar passed a
reasoned order dated 22.08.2025 after considering the pleadings, evidence and
submissions of both parties.
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10. The second respondent states that it was incorporated on 10.07.2001 and has
been engaged in the manufacture and marketing of medical equipment and
apparatus, particularly products used in neonatal intensive care. It claims to
have honestly adopted the device mark "nice", which stands for "Neonatal
Intensive Care Equipment", and the mark "neotech", signifying "neonatal
technology", both derived from its corporate name and business activities. It
filed Application Nos.1730955 and 1730956 on 11.09.2008 in Class 10,
claiming use from 10.07.2001, and asserts that both marks have been
continuously used in connection with its business. It relies upon its
incorporation certificate, Memorandum and Articles of Association, trademark
registration certificates, invoices, product catalogues and a consolidated
statement issued by its Chartered Accountant to substantiate its claim of bona
fide adoption and continuous use. It expressly does not dispute the appellant's
goodwill and reputation in respect of pharmaceutical and medicinal
preparations.
11. The second respondent specifically denies that the rival marks are
deceptively similar or that their use is likely to cause confusion. It contends that
the appellant's mark "NISE" is used for pharmaceutical preparations,
particularly pain-relieving medicines containing Nimesulide, whereas its mark
"nice" is used for specialised neonatal medical equipment. According to the
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second respondent, the respective goods differ substantially in their nature,
purpose, price, mode of purchase, trade channels and class of purchasers. While
the appellant's products are marketed through pharmaceutical distribution
channels and pharmacies, the second respondent's equipment is purchased by
hospitals, neonatal intensive care units and medical professionals through
specialised procurement processes. The second respondent further contends that
the appellant has neither established any actual instance of confusion or
likelihood of confusion or association with its trademark, nor proved that the
competing goods are similar or cognate in terms of trade.
12. The second respondent further contends that the competing marks must be
compared as a whole, having regard to their appearance, meaning and the goods
in respect of which they are used. It maintains that its device mark was
independently adopted for its neonatal equipment business and that the
appellant cannot claim exclusive rights over every phonetically resembling
mark across different classes. It denies dishonest adoption, misrepresentation,
passing off, dilution of reputation or any likelihood of commercial association.
It also disputes the appellant's claim that "NISE" is entitled to protection as a
well-known trademark across different classes merely by reason of its
registrations and reputation in pharmaceutical products. According to the
second respondent, the appellant has not established any actual confusion or
demonstrated that it manufactures or markets neonatal medical equipment.
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13. Regarding the allegation of non-filing of evidence, the second respondent
contends that it had filed evidence in support of its application on 19.02.2014,
along with supporting documents, under Rule 51 of the Trade Marks Rules,
2002. It explains that certain physical records maintained by the Trade Marks
Registry were damaged during the floods in December 2015 and were not
completely digitized. Thereafter, the Registry issued communications in 2017
and 2018 for reconstruction of the records. The second respondent asserts that
the absence of its evidence affidavit from the digitized records does not
establish that no evidence was filed. It relies upon the documents available on
the Registry portal, copies retained in its office records and materials produced
in parallel Opposition No.796948 instituted by Nice Pharmaceuticals. It further
contends that the Registrar did not treat its application as abandoned for non-
filing of evidence and that the proceedings continued to be heard on merits. It
also states that its written submissions were e-mailed to the hearing officer and
uploaded on 21.03.2025 with his permission.
14. The second respondent further states that its application was examined on
17.08.2009, followed by a show-cause hearing on 11.09.2012, and was
subsequently advertised in Trade Marks Journal No.1558 dated 15.10.2012. The
appellant filed its opposition on 03.01.2013, to which the second respondent
submitted its counterstatement on 08.05.2013. Thereafter, evidence and written
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submissions were filed, and the opposition was heard on several occasions
between May 2024 and March 2025. According to the second respondent, the
difficulties relating to the missing and damaged Registry records were brought
to the notice of the Assistant Registrar, who considered the available materials
before passing the impugned order.
15. The second respondent also contends that the appellant's reliance on the
principles governing confusion between medicinal products is misplaced, since
the present dispute concerns pharmaceutical preparations on the one hand and
specialised neonatal medical equipment on the other. It submits that the
Assistant Registrar correctly considered the nature and character of the
respective goods, their functions, purchasers and trade channels and concluded
that there was no likelihood of confusion. It maintains that the mere difference
of one letter between the marks or their alleged phonetic resemblance cannot,
without considering the surrounding circumstances, justify refusal of
registration.
16. The second respondent further disputes the appellant's claim that "NISE" is
a well-known trademark, stating that it has neither been declared well-known by
any Court nor included in the Registry's list of well-known trademarks. It
contends that, although the appellant may be the prior user of "NISE" for
pharmaceutical preparations, the second respondent is the first adopter and prior
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user of "nice" for medical equipment and apparatus. Relying upon Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd. , (2001) 5 SCC 73, Corn
Products Refining Co. v. Shangrila Food Products Ltd. , AIR 1960 SC 142,
and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation
Ltd. , (2018) 9 SCC 183, it contends that the Assistant Registrar correctly
appreciated the differences between the rival goods, their purchasers and trade
channels, and the absence of likelihood of confusion, and passed a reasoned
order disallowing Opposition No.797238. It therefore seeks dismissal of the
appeal with costs.
17. Learned counsel for the appellant submitted that the Assistant Registrar had
applied an erroneous legal test by treating the difference in classification as
determinative of the similarity of goods. It was contended that Section 7 of the
Trade Marks Act, 1999 provides for classification for registration purposes,
whereas the statutory enquiry under Section 11 concerns the similarity of goods
and likelihood of confusion. Referring to Sections 29(2), 29(3) and 29(4),
learned counsel submitted that the Act recognises protection even where the
competing goods are dissimilar, subject to the statutory conditions. Reliance
was placed on Corn Products Refining Co. v. Shangrila Food Products Ltd.,
AIR 1960 SC 142, FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd.,
2017 SCC OnLine Del 6381, and Wipro Enterprises Pvt. Ltd. v. Himalaya
Wellness Company & Ors., FAO (OS) (COMM) 145/2023 decided on
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01.10.2024, to contend that goods falling under different classes may
nevertheless be allied and cognate. Reference was also made to the Nice
Classification to demonstrate the relationship between goods falling under
Classes 5 and 10.
18. Learned counsel further submitted that the impugned order does not contain
any finding that the rival marks are visually or phonetically dissimilar.
According to learned counsel, the Assistant Registrar proceeded on the footing
that similar marks could coexist because the goods were different, without
independently examining the degree of resemblance between the marks.
Reliance was placed on K.R. Chinna Krishna Chettiar v. Sri Ambal& Co.,
(1969) 2 SCC 131, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals
Ltd., (2001) 5 SCC 73, to contend that phonetic resemblance is an important
factor and that the marks must be assessed from the standpoint of an average
purchaser with imperfect recollection. It was further submitted that the Assistant
Registrar merely reproduced the principles in Cadila without applying them to
the facts of the case.
19. Learned counsel submitted that trademark protection is not necessarily
confined to the goods presently manufactured by the proprietor and that the
reasonable possibility of expansion into allied and cognate goods must also be
considered. Reliance was placed on Laxmikant V. Patel v. Chetanbhai Shah,
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(2002) 3 SCC 65, Shree Rajmoti Industries v. Shri Vishwaprabha Food
Products Pvt. Ltd., 2018 SCC OnLine Del 11595, and Burger King
Company LLC v. Virendra Kumar Gupta, 2023 SCC OnLine Del 7735, to
contend that an established proprietor is entitled to protection against confusing
use in commercially related fields. It was further submitted that the Assistant
Registrar failed to examine whether the appellant's established reputation could
give rise to an assumption of commercial association between the competing
undertakings.
20. Learned counsel further submitted that the second respondent's claim of user
from 10.07.2001 required scrutiny in the light of the evidence actually available
before the Registry. It was pointed out that the alleged Rule 51 affidavit was not
available in the digitized records and that the documents subsequently produced
from the second respondent's office could not automatically be treated as
evidence duly filed and served in the opposition proceedings. Learned counsel
also submitted that the mere incorporation of the second respondent on
10.07.2001 did not establish commercial use of the mark from that date,
particularly when the invoices relied upon commenced only from 2005.
Reliance was placed on Suresh Kumar Jain v. Union of India, 2012 SCC
OnLine Del 12, and Shiva Tobacco Company v. Md. Zaheeruddin, 2014
SCC OnLine IPAB 22, concerning unsupported claims of prior user.
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21. Learned counsel further pointed out that the second respondent had given
different explanations for the origin of its mark, describing "NICE" as a
dictionary word before the Assistant Registrar and subsequently as an
abbreviation of "Neonatal Intensive Care Equipment". It was contended that
these explanations required consideration while assessing the bona fides of
adoption. Learned counsel also referred to the territorial restriction of the
second respondent's registration to South India and submitted that the
significance of such restriction had not been adequately examined. It was
therefore contended that the impugned order failed to address material issues
and statutory requirements and was liable to be set aside.
22. Per contra, learned counsel for the second respondent submitted that the
expression "NICE" was a legitimate abbreviation of "Neonatal Intensive Care
Equipment" and that the adoption of an abbreviation connected with the
corporate name and business was permissible under the Trade Marks Act.
Reference was made to Sections 2(1)(m) and 2(1)(o) of the Act. Reliance was
placed on Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65,
Evergreen Sweet House v. Ever Green, 2008 (38) PTC 325 (Del), and T.V.
Venugopal v. Ushodaya Enterprises Ltd., (2011) 4 SCC 85, concerning the
distinction between descriptive, suggestive and distinctive marks and the
circumstances relevant to honest adoption.
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23. Learned counsel further submitted that the appellant's reliance on phonetic
resemblance was insufficient, since the marks must be compared in their
entirety and in the context of the goods for which they are used. Reliance was
placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5
SCC 73, South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.,
FAO (OS) 389/2014, decided on 13.10.2014 (Delhi High Court, Division
Bench), and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra,
2025 INSC 981 (Civil Appeal No.10638 of 2025, decided on 14.08.2025), to
contend that deceptive similarity cannot be determined by isolating individual
letters or sounds. It was further submitted that the Assistant Registrar was
entitled to consider the overall commercial circumstances rather than phonetic
similarity alone.
24. Learned counsel relied upon Heifer Project International v. Heifer
Project India Trust, 2024 SCC OnLine Del 2847, and submitted that the
appellant had failed to establish the necessary connection between the
competing goods, trade channels and purchasers. It was contended that the
principles governing confusion between medicinal preparations could not be
mechanically applied to specialised medical equipment purchased through
institutional procurement procedures. Reference was also made to Corona
Remedies Private Limited v. USV Limited (Gujarat High Court, Appeal
from Order No.30 of 2015, decided on 12.08.2015) to emphasise the
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relevance of the knowledge of purchasers, the circumstances of purchase and
the degree of care exercised in selecting the goods.
25. Learned counsel further submitted that the doctrine of natural expansion
could not be invoked merely on the basis of a hypothetical possibility of the
appellant entering the medical-equipment industry. It was pointed out that
"NISE" was associated with a particular pharmaceutical product, whereas "Dr.
Reddy's" was the appellant's corporate mark. According to learned counsel, no
research proposal, manufacturing plan, regulatory application or other
contemporaneous material had been produced to establish a proposed expansion
of the NISE mark into neonatal medical equipment. Reliance was placed on
RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Ltd., 2025:DHC:4961-
DB, and Nandhini Deluxe v. Karnataka Cooperative Milk Producers
Federation Ltd., (2018) 9 SCC 183, to contend that trademark rights cannot be
extended indiscriminately to commercially distinct goods.
26. Learned counsel further submitted that the alleged absence of the Rule 51
affidavit from the digitised Registry records could not, by itself, establish that
no evidence had been filed. It was contended that the second respondent had
produced the available office copies and supporting records and that the
consequences of non-digitisation and loss of Registry records could not
automatically be visited upon the applicant. The second respondent also relied
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on the continuation of the opposition proceedings on merits, without any order
treating its application as abandoned, to dispute the appellant's procedural
objections.
27. Further the learned counsel submitted that a quasi-judicial order cannot be
set aside merely because its reasoning is brief, provided the material issues have
been considered and the basis of the conclusion is discernible. Reliance was
placed on K. Kalpana Saraswathi v. P.S.S. Somasundaram Chettiar, (1980)
1 SCC 630. It was contended that the Assistant Registrar had considered the
relevant factors identified in Cadila, including the nature of the goods, their
purchasers and modes of purchase, and had reached a reasoned conclusion
regarding the absence of confusion. Learned counsel therefore prayed for
dismissal of the appeal with costs.
28. Points for Consideration:
(i) Whether the second respondent's device mark “nice” is phonetically,
visually and deceptively similar to the appellant's registered trademark “NISE”?
(ii) Whether, having regard to the nature of the competing goods, the
class of purchasers, the trade channels and the modes of purchase, registration
of the second respondent's mark is likely to cause confusion or association with
the appellant's earlier trademark within the meaning of Section 11(1) of the
Trade Marks Act, 1999?
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(iii) Whether the appellant has established its claim of a well-known
trademark, dishonest adoption by the second respondent and the other grounds
raised under Sections 11(2) and 11(3) of the Trade Marks Act, 1999?
(iv) Whether the order dated 22.08.2025 passed by the Assistant Registrar
of Trade Marks, dismissing Opposition No.797238 against Application
No.1730955, warrants interference by this Court?
Points 1 to 4:
29. The appellant is the registered proprietor of the trademark "NISE" in Class 5
in respect of pharmaceutical and medicinal preparations. The second respondent
has obtained registration of the device mark "nice" in Class 10 in respect of
medical equipment and apparatus. The appellant claims prior adoption and use
of NISE and contends that the second respondent's mark is deceptively similar.
The second respondent maintains that its mark was independently adopted and
that the competing goods, purchasers and trade channels are different. The
question is whether the rival marks are likely to cause confusion or association
concerning the commercial origin of the goods.
Appellant – NISE Second respondent – nice
NISE
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30. On comparison, this Court finds that "NISE" and "nice" are phonetically
similar. Both consist of four letters, the only difference being the substitution of
"S" with "C". The device representation of the second respondent's mark does
not eliminate their similarity in pronunciation. However, phonetic similarity
alone is not conclusive. Under Section 11(1) of the Trade Marks Act, 1999, the
Court must also consider the nature of the goods, their purchasers, trade
channels and the likelihood of confusion or association with the earlier
trademark.
31. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. , (2001) 5 SCC
73, the Hon'ble Supreme Court laid down seven factors for determining
deceptive similarity, namely, the nature of the marks, their degree of
resemblance, the nature of the goods, similarity in their character and
performance, the class of purchasers having regard to their education,
intelligence and degree of care, the mode of purchase and other surrounding
circumstances. The Supreme Court further held that the weight to be attached to
each factor depends upon the facts of the case and that equal weight need not be
given to every factor.
32. Applying these principles, the appellant's NISE mark is used for
pharmaceutical preparations, particularly medicines for pain and inflammatory
conditions. The second respondent's product catalogue shows that it principally
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manufactures neonatal and infant-care equipment, including incubators, radiant
warmers, phototherapy units, ventilators and respiratory-care apparatus used in
hospitals and neonatal intensive-care units. The competing goods are materially
different in their nature, function, purpose and manner of use. Their common
connection with healthcare does not, by itself, establish a sufficient commercial
relationship to give rise to confusion.
33. The class of purchasers and mode of purchase are also materially different.
Pharmaceutical preparations are ordinarily purchased by patients and members
of the public through pharmacies, often on prescription. The second
respondent's specialised neonatal equipment is predominantly purchased by
hospitals and medical institutions through doctors, biomedical engineers and
procurement personnel. Such equipment is selected after considering its
technical specifications, safety, suitability, performance and price. The
purchasers therefore exercise a higher degree of care and attention. These
circumstances are relevant under the fifth and sixth factors laid down in Cadila
and weigh against the likelihood of confusion.
34. Section 11(1) also requires consideration of the likelihood of association
with an earlier trademark. Thus, the question is not merely whether one product
would be mistaken for another, but whether purchasers are likely to believe that
the goods originate from the same or commercially connected undertakings.
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Although the rival marks are phonetically similar, the specialised nature of the
second respondent's equipment, the knowledge of its purchasers and the manner
of procurement weigh against such an inference. The appellant has not
established sufficient circumstances showing that purchasers of the second
respondent's medical equipment are likely to associate those goods with its
NISE pharmaceutical business.
35. In Nandhini Deluxe v. Karnataka Co-operative Milk Producers
Federation Ltd., (2018) 9 SCC 183 , the Hon'ble Supreme Court held that,
while determining deceptive similarity, the competing trademarks must be
considered as a whole, having regard to their visual appearance, the nature of
the products and the manner in which they are traded. The Supreme Court,
notwithstanding the phonetic similarity between the marks "NANDHINI" and
"NANDINI", found that their overall appearance, the products and the manner
of trading were different and that an ordinary purchaser of average intelligence
was unlikely to associate the goods of one party with those of the other. Thus,
phonetic similarity alone is not conclusive, and the likelihood of confusion must
be determined upon the facts and circumstances of each case.
36. The appellant's earlier registrations and commercial use of NISE in relation
to pharmaceutical preparations are established. However, the second
respondent's incorporation documents, product catalogue and other business
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CMA(TM) No. 31 of 2025
records support its explanation that the mark "nice" was adopted in connection
with its neonatal medical equipment business. The expression also forms part of
its corporate name, Nice Neotech Medical Systems Private Limited,
incorporated on 10.07.2001. Although incorporation does not, by itself,
establish trademark use from that date, these circumstances support its
explanation of independent adoption. Dishonest adoption cannot be inferred
solely from phonetic similarity without sufficient evidence of deliberate
imitation.
37. The appellant has also relied upon the goodwill and reputation acquired by
NISE through long and continuous use. While the materials support its
reputation in pharmaceutical preparations, Section 11(2) requires proof that the
earlier trademark is well known in India and that use of the later mark without
due cause would take unfair advantage of, or be detrimental to, its distinctive
character or repute. The appellant has not sufficiently established these
additional requirements. Likewise, the objection under Section 11(3)(a), based
on passing off, cannot succeed without establishing a likelihood of
misrepresentation regarding commercial origin, which has not been
demonstrated in the circumstances of the present case.
38. The parties have also raised rival contentions concerning the filing of the
second respondent's evidence under Rule 51 of the Trade Marks Rules, 2002.
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CMA(TM) No. 31 of 2025
While the appellant disputes its filing, the second respondent refers to the loss
and subsequent reconstruction of certain Registry records. Even without placing
decisive reliance upon the disputed evidence, the appellant's earlier trademark
rights have been considered, and the substantive requirements for refusing
registration under Section 11 have not been established. The procedural
objection therefore does not alter the conclusion on merits.
39. On an overall consideration of the factors laid down in Cadila , this Court
finds that the rival marks are phonetically similar. Nevertheless, the differences
in the nature, character and purpose of the goods, the class of purchasers, their
degree of care and the modes of purchase substantially weigh against the
likelihood of confusion. The appellant has also failed to establish a likelihood of
association concerning commercial origin, the additional requirements of
Section 11(2), dishonest adoption or passing off under Section 11(3)(a).
40. The Assistant Registrar, having considered the differences between the
competing goods, their purchasers and trade channels, rejected the appellant's
opposition. Upon independent consideration of the evidence and the applicable
legal principles, this Court finds that the conclusion reached by the Assistant
Registrar does not warrant interference. Accordingly, the rival marks are held to
be phonetically similar, but the remaining points concerning likelihood of
confusion or association, well-known status, dishonest adoption, passing off and
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CMA(TM) No. 31 of 2025
interference with the impugned order are answered against the appellant.
41. In the result, this Civil Miscellaneous Appeal is dismissed, confirming the
order dated 22.08.2025 passed by the Assistant Registrar of Trade Marks and
Geographical Indications and Copyrights, Chennai, disallowing Opposition
No.797238 in respect of Trade Mark Application No.1730955. There shall be
no order as to costs. Consequently, the connected miscellaneous petition, if any,
is closed.
26-10-2026
Index: Yes/No
Speaking/Non-speaking order
Neutral Citation: Yes/No
AY
To
The Registrar Of Trademarks
Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai-600 032.
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CMA(TM) No. 31 of 2025
DR.A.D.MARIA CLETE J.
AY
CMA(TM) No. 31 of 2025
AND
CMP NO. 32017 OF 2025
26-10-2026
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