A seven-year-old legal battle, proceedings initiated by ITC against Nestle India, was finally disposed of by the Madras High Court on June 10, 2020. The suit was filed by ITC (“Plaintiff”) to claim that Nestle’s (“Defendant”) Maggi Noodles has been passing off their product as those of ITC’s using the Plaintiff’s mark, “Magic Masala” which is similar to their product.
A single-judge bench of Justice C. Saravanan, after an exhaustive analysis of facts, precedents and evidence, held that there was no passing off of the product. The High Court observed that the term ‘Magic Masala’ would have been held as a distinctive mark, had it been in use for the uninterrupted period, qualified for protection and monopoly. However, Plaintiff’s Sunfeast Yippee! Noodles started using the term since 2010 whereas Nestle initiated the use from 2013.
It is also pertinent to note that the Plaintiff’s annual report shows no mention of classifying the term either as a brand or sub-brand as it was argued. The Plaintiff’s brand was presented as “Sunfeast Yipee!” for noodles, foraying into FMCG industry to diversify the business operations from hospitality, paper and Agri-based industries, which originally operated in the Tobacco sector. Initially in 2010, ‘Sunfeast Yipee!’ was launched in two variants namely, ‘Classic Masala’ and ‘Magic Masala’ and later introduced one more variant ‘Chinese masala’.
It can be concluded that these variants were used to distinguish the flavors and not categorized as sub-brand.
Undoubtedly, the adoption of the expression ‘Magical Masala’ by the Defendant is inspired by the term ‘Magic Masala’ used by the Plaintiff. However, the Plaintiff is not eligible to claim any advantage as the words ‘magic masala’, individually and collectively, are laudatory and descriptive and cannot be monopolized by any proprietor. The words, individually and collectively, are common to the trade and therefore, the use of words by Nestle is legitimate and justifiable.
“The word ‘Magic’ is laudatory. It is incapable of being appropriated by the plaintiff (ITC). As such no person can claim any monopoly over the said word ‘Magic’ or ‘Magical’ or their derivative as they are common to the trade. Therefore, it is incapable of being monopolised by any trader.”Justice C. Saravanan held
It is important to note that Indian Trade Mark Law permits the trader or proprietor to claim exclusive rights, such a word must have acquired a secondary meaning capable of being associated exclusively with that proprietor, over a descriptive or laudatory word which ITC had not shown. Section 9 of the Trademarks Act, prohibits to register generic names.
The packaging and branding of both the products are altogether different, showing no similarity and hence, the High Court observed that the elements of passing off are not established by the ITC.
Moreover, upon comparing the wrappers of both the brands it can be inferred that there is no visual or ocular similarity between the two and hence, it cannot be said that there is a passing-off the product. Even though there is a phonetic similarity between the words ‘magic’ and ‘magical’, they are incapable of being monopolized as they are descriptive and laudatory in nature and common in the trade.
“Both the words ‘Magic’ and it’s derivative ‘Magical’ is common to the trade. Therefore, neither the plaintiff nor the defendant can claim any monopoly over the expression ‘Magic’ or ‘Masala’ for they are common words in Indian culinary and Indian food industry.”
Therefore, the single bench Judge of Madras High Court dismissed the suit on the ground that these words, despite being phonetically similar and generic in nature, are common English words which cannot be marked as exclusive for any owner as they are descriptive and laudatory in nature.