NANDO’S Vs NANDU: SPICY TRADEMARK ISSUE

“I was desperately waiting for Nando’s to open up in India as I have always relished their juicy hot chicken dishes in London. But while having chicken, I always wondered and thought how close the name is to the popular shakti kapoor character in raja Babu ‘Nandu sabka bandhu’. And here you come across a Bombay High court decision, testifying my wonderings. But nothing to do with shakti kapoor, this case was between a company selling chicken products by the name nandu’s.

Now a little bit about the case. A trade mark infringement case was filed by Balkrishna Hatcheries (owner’s of Nandu brand) against Nando’s International, an irish chain of restaurants, in India. The court awarded an ad interim injunction against nando’s on grounds of deceptive similarity and passing off in favour of our Nandu. The marks are reproduced below. The Court considered british sugar v james Robertson, giant food v nation’s foodservice, kerley’s and mcarthy and came to a reasoned judgment. However, few points to be brought out here.

The defendants namely Nando’s did not or failed to place reliance upon their transborder reputation, which was also noted by the Court in para 28. this was probably the only point in their favour as plaintiff’s existed since 1977 in India. Again in para 28, Court says ‘Their reputation, if any, in India can only be on the basis of a trans border reputation. It is not clear when it arose in India. Although, considering the number of restaurants, it may be possible to argue, prima facie that it now exists in India. The Plaintiff’s reputation however have been in existence long before the Defendant’s reputation could have arisen in India.’ Secondly, the court very interestingly analyses the phonetic similarity of the two marks by breaking it in consonants and vowels in para 16. Going by that analogy, the word nando’s is pronounced as ‘nan’ as in ‘pan’ and ‘do’s’ and not ‘those’. However, since Nandu’s is a hindi name, it is pronounced as ‘nan’ as in ‘nun’ and du’s as in ‘thooo’s’. Keeping in mind the class of customer’s nando’s would cater to (upper middle to upper class), it is highly unlikely that anyone of them would pronounce it as nandu’s and get confused.

Class of customer’s is one of the considerations precedented by British sugar referred in this case and by Kerley’s. Again, on breaking the components of the mark, in Sabel v Puma, ECJ observed that the mark should be looked at from an average consumer’s point of view that normally perceives the mark as a whole and does not proceed to analyse its various details and the courts should not look in to the mark in too much details. However, it has also been held in mystery drinks v OHIM that phonetic similarity is particularly important in case of hotel services as word of mouth is of extreme importance.

Next comes the similarity of goods or services. Are they really similar in this case? I think they are co-related in the sense that the poultry farm and processed chicken producer (plaintiff) is the first few links of the trade chain and restaurant owner Nando’s come after that. Court considers Plaintiff’s contention that they have plans to launch restaurant and hotel chains. Well! I also plan to become Prime Minister of India. Just because a single product type is included, it cannot be said that the goods and services are similar. Another important point is that the defendant, before the case, attempted to negotiate a deal with Nandu’s for co-existence, in which they agreed to some extent about the similarity of the marks. A pre- action protocol of this nature should be encouraged in India when there are innumerable cases pending before courts. However, it is appreciated that Courts of India have started taking IP seriously and now there are increasing number of cases on TM and domain name infringement being filed and decided. Thanks for reading.”