When a Common Name Becomes Dangerous: Nandhini Deluxe, Nandini Agarbatti and the Myth of Generic Immunity

The Trade Marks Act rejects both extremes. It does not permit proprietors to privatise ordinary language. Equally, it does not permit rivals to use ordinary language as a mask for trade association.

The recent order of the Madras High Court in Karnataka Coop. Milk Producers Federation Ltd. v. Vinod Kanji Shah¹, is significant not because it departs from the Supreme Court’s ruling in Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.², but because it shows how easily that ruling can be misunderstood.

The dispute before the Madras High Court arose from an appeal under Section 91, Trade Marks Act, 1999 against a Trade Marks Registry order dated 5 April 2010. The Registry had rejected the opposition filed by Karnataka Cooperative Milk Producers Federation Ltd. (KMF) against an application for registration of the label mark “Nandini” for agarbattis and dhoops in Class 3. The Registry’s reasoning was familiar: “Nandini” was a personal name, no one could claim exclusivity over it, the goods were different, and the resemblance between the marks was insufficient to cause confusion. The High Court set aside that order.

At first glance, this appears to sit uneasily with the Supreme Court’s earlier decision in the Nandhini Deluxe case. That impression is incorrect. The Madras High Court did not dilute the Supreme Court. It applied it with necessary precision.

In the case of Nandhini Deluxe, the Supreme Court had to consider whether KMF, proprietor of the mark “NANDINI” for milk and milk products, could prevent registration of “NANDHINI DELUXE” for restaurant related food items falling in Classes 29 and 30. The court noted several cumulative facts. KMF was a prior user of “NANDINI” since 1985 for milk and milk products. Nandhini Deluxe had adopted and used its mark from 1989. Although both sets of goods fell within Classes 29 and 30, the goods were not the same. Nandhini Deluxe had given up milk and milk products. The court also observed that NANDINI/NANDHINI was not an invented word, but a culturally familiar expression representing the name of a goddess and a cow in Hindu mythology. Most importantly, the Supreme Court compared the rival marks as a whole and found that “NANDHINI DELUXE”, with its logo, lamp device, style and additional wording, was materially different from KMF’s “NANDINI” mark.

The ratio, therefore, was never that the word “Nandini” had become incapable of trade mark protection. Nor was it that a culturally familiar name may be copied in any visual form and for any goods merely because it is not coined. The ratio was more careful: A proprietor cannot monopolise a broad class of goods merely because its registration falls within that class, and similarity must be judged by a composite assessment of the marks, goods, trade channels, reputation, surrounding circumstances and likelihood of confusion.

The Madras High Court’s 2026 order turns precisely on those distinctions. The first respondent’s application was for “Nandini” simpliciter for agarbattis and dhoops. The High Court specifically noted that unlike “NANDHINI DELUXE”, the impugned mark had no prefix, no suffix, and had adopted the same style of writing the word “nandini”, all in small letters. The court found that phonetically the word was the same, and visually the style of writing was close enough to mislead a customer familiar with KMF’s mark. It therefore held that the Registry had failed to consider the crucial distinguishing features and had erroneously rejected the opposition.

This is the core lesson. Genericity is not immunity.

A word may be common in language and still become distinctive in trade. A personal name, religious name, mythological name, geographical expression or culturally familiar word may not be inherently monopolistic. But once it is used consistently, advertised extensively, recognised by consumers, and visually presented in a particular trade dress, it may acquire source identifying significance. The law does not protect the word as vocabulary. It protects the word as a badge of origin.

This distinction is central to the Trade Marks Act, 1999 (the Act). Section 9 recognises that marks which are otherwise weak may become registrable through acquired distinctiveness. Section 11 is concerned with likelihood of confusion, association, reputation and the consequences of use by another trader. Section 17 prevents a proprietor from asserting exclusivity over every non-distinctive part of a composite mark, but it does not authorise another trader to reproduce the dominant source identifying feature in a confusing manner. The Act therefore rejects both extremes. It does not permit proprietors to privatise ordinary language. Equally, it does not permit rivals to use ordinary language as a mask for trade association.

The error in many readings of Nandhini Deluxe lies in treating the word “generic” as a conclusion rather than a factor. In trade mark law, “generic” must be used with care. A word may be generic for the goods themselves, such as “milk” for milk. That is one category. A word may also be common, personal, devotional or mythological, without being generic for the goods. “Nandini” is not generic for dairy products or agarbattis in the strict goods descriptive sense. It is a common cultural name. Such a word begins with a narrower zone of exclusivity than an invented mark, but it may still command protection where the defendant’s adoption is likely to create association with the plaintiff’s trade source.

The Supreme Court’s decision in Amritdhara Pharmacy v. Satya Deo Gupta³, remains instructive on this point. The comparison is not an exercise in microscopic dissection, but one made from the standpoint of a person of average intelligence and imperfect recollection. In Corn Products Refining Co. v. Shangrila Food Products Ltd.⁴, the Supreme Court gave importance to reputation and the likelihood that consumers may associate one mark with another. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.⁵, the court reiterated that deceptive similarity is a contextual inquiry, requiring attention to the nature of marks, goods, purchasers, surrounding circumstances and the probability of confusion. These principles are not displaced merely because the contested word is common.

Nor does classification conclude the inquiry. The Supreme Court in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.⁶, cautioned against allowing a proprietor to enjoy an unmerited monopoly over all goods falling within a broad class when the proprietor trades only in some of them. Nandhini Deluxe applied that logic because KMF’s business was milk and milk products, whereas Nandhini Deluxe was in the restaurant business and had deleted milk and milk products from its specification. But Vishnudas is not a licence to adopt a rival’s reputed mark in an identical visual manner for different goods. It restrains overbroad monopoly. It does not protect confusing imitation.

The Madras High Court’s reasoning is therefore doctrinally sound. It does not say that KMF owns the word “Nandini” for the whole marketplace. It says something narrower and stronger: Where another trader adopts “Nandini” without prefix or suffix, writes it in the same style, and seeks registration despite KMF’s longstanding reputation, the Registrar cannot dismiss the opposition merely by invoking commonness of name or difference in goods.

This has wider consequences for trade mark practice. Applicants often assume that if a word is religious, personal, laudatory or culturally common, it is safe. That assumption is dangerous. The real question is not whether the dictionary contains the word. The real question is whether the marketplace associates that word, in that form, with another trader. If the answer is yes, adoption becomes legally perilous.

The order also offers a caution to the Registry. Opposition proceedings cannot be disposed of by formulaic reasoning. It is insufficient to say that the goods are different or that the word is common. The Registrar must compare the marks as a whole, examine the manner of writing, consider reputation, assess trade channels, test likely association and ask whether an average consumer, with imperfect recollection, may believe that the later mark has a commercial connection with the earlier proprietor.

The phrase “generic immunity” is therefore a misconception. Common words do not enjoy immunity. They enjoy availability only so long as their use does not trespass into another trader’s acquired distinctiveness. The more closely a later user copies the visual presentation, phonetic identity and commercial impression of a reputed mark, the less persuasive the defence of commonness becomes.

The true reconciliation between Nandhini Deluxe and the Madras High Court’s 2026 order is this: Nandhini Deluxe protected legitimate coexistence; the Madras High Court restrained confusing proximity. One case refused a monopoly over an entire class and a culturally common word. The other refused to let that culturally common word be deployed in a manner too close to an established source identifier.

That is not contradiction. It is trade mark law doing what it is meant to do. It keeps ordinary language free, but not deception free. It protects competition, but not appropriation. It permits coexistence, but not calculated association.