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Citation – 2007 (109) Bom L R 306
Facts:
§ Defendant 1- Nando’s- company registered in Ireland
§ Defendant 2 – Nando’s Indage Restaurants Private Limited, is a franchisee.
§ Plaintiff – Nandu’s.
Nandu’s owner is Mr. Nandakumar. He is known to family and business associates as NANDU and they referred to his business as Nandu’s business. Nandu’s was formed in 1977, and registered in 1989 under Class 29 to the Schedule to the Trade Marks Rules in respect of processed and frozen meat products falling in Class 29. Plaintiff also owned the copyright in respect of the artistic work consisting of the said trademark. Nandu’s business started as poultry farm but slowly extended to selling frozen chicken, kebabs, biryani, in ready to eat form. They have not yet opened restaurants but plan to. Plaintiff registered another trademark in 2005. The word “Nandu’s” is a prominent feature in the said trademark as well.
In 2001, Nando’s (def) filed an application for registration of their trademark. But plaintiff’s registered trademark was cited as a conflicting mark by the registrar. Plaintiff filed for an injunction to prohibit defendants to use their mark on similar products as well as their restaurants.
Issue: Whether the court should grant injunction to prohibit defendant to open a restaurant under the name Nando’s?
Sub issues-
1. Whether Nandu’s and Nando’s are similar marks?
2. Whether the goods and service they provide are identical or similar?
Holding:
§ It has been established that NANDU’s is a very famous trademark and have a huge reputation. Yes, visually, the two marks are not only deceptively similar but virtually identical. Even phonetically, the two marks are similar. The similarity is enhanced taking into consideration the possible pronunciation of the Defendant’s mark in our country.
§ There can be a little doubt that, as far as the packaged food is concerned, the plaintiffs are entitled to the injunctions sought. Packaged food, if sold by the Defendants would undoubtedly be similar to the goods dealt in by the Plaintiffs.
§ To find whether the restaurant business is similar to the business of the Plaintiffs following points must be taken into consideration:
a) The respective uses of the respective goods or services: Nandu’s sells frozen and processed meat products whereas Nando’s provides cooked food along with hospitality services;
b) The respective users of the respective goods or services: Nandu’s targets shoppers who buy their products to be cooked and consumed at home whereas Nando’s is meant for those who want to go outside for a social activity to a specialized restaurant;
c) The physical nature of the goods or acts or service: Processed and frozen meats are not the same as or similar to restaurant services;
d) The respective trade channels through which the goods or services reach the market: Nandu’s sells its product through cold storages and supermarkets whereas Nando’s serves food chosen from a menu;
e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
f) The extent to which the respective goods or services are competitive. The question to be asked is “is there a likelihood of confusion? : Frozen and processed meats are not in competition with Nando’s restaurant services in any way.
“The marketing practices of today are such that a customer who attends a banquet which he knows is catered by the Appellant would, when he encounters a food product in the grocery store under an almost identical mark, naturally assumes that it came from the catering firm. The difference between a service for the catering of food and the actual sale of food is a rather fine legal distinction not likely to be drawn by laymen.”
This allows us to put in perspective the following criteria to decide whether or not there was infringement when the goods/services are not similar:
a) Identical/similar marks: The names are only slightly phonetically similar;
b) Reputation: Nando’s as an internationally established brand already has a vast reputation and does not need to infringe on another mark to exploit its distinctiveness;
c) Trademark has distinctive character: Both Nando’s and Nandu’s are dissimilar marks as they are inherently distinctive and are even pronounced differently;
d) Taking unfair advantage: Due to a prior international reputation, Nando’s does not need to take advantage of another mark, and because of the dissimilarity of goods and services and the marks themselves, it was observed that Nando’s was not taking unfair advantage.
Conclusion: For the above reasons, the perpetual injunction was not granted as it was held that Nando’s was not infringing upon the trademark, Nandu’s.
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