Intellectual Property RightsTrademark In IndiaMonopoly cannot be claimed on Words being Common to Trade

HIGH COURT OF JUDICATURE AT MADRAS

M/s. ITC Limited

Versus

Nestle India Limited

            CS No. 231/2018 | 10^th June, 2020

FACTS

In the present case, M/s. ITC Limited (hereinafter referred to as “the Plaintiff”) is a well-known company and had successfully diversified into Fast Moving Consume Goods Sector in the year 2010. In the same year, the Plaintiff has launched Sunfeast Yipee! Noodles in two variants, one of them being namely “Magic Masala”.

According to the Plaintiff this variant forms a predominant feature of the Plaintiff’s composite trademark Sunfeast Yippie! noddles Magic Masala. Further, due to the superior quality , instant noodle having the expression Magic Masala enjoyed reputation giving huge turnover and success to the Plaintiff.

Nestle India Limited (hereinafter referred to as “the Defendant”) is a pioneer in the instant noodles and had introduced 2-Minutes Maggi Noodles in India in the early 80’s. It has introduced several variants during the course of time and in 2013, it introduced another variant, viz. Maggixtra -delicious Magical Masala.

In the present case, the dispute arose for the aforementioned reason as it is the case of the Plaintiff that the adoption of the deceptively similar expression Magical Masala by the defendant in the year 2013 for marketing their noodles amounts to passing-off.

According to the Plaintiff, the Defendant being threatened by the Plaintiff’s success, launched the “Magical Masala” as a sub-brand by copying the expression “Magic Masala” by slightly tweaking it and by adding a syllable “al” to the word “Magic”.

Subsequently, the Plaintiff approached the High Court of Madras for seeking a decree of permanent injunction against the Defendants seeking restraint order for passing off, rendition of accounts / damages etc.

ISSUES FOR CONSIDERATION

1. Whether the expression “Magic Masala” qualifies as a trademark and is capable of being monopolise to the exclusion of Defendant and others?

2. Whether as per the facts of the case there was passing-off of the instant noodle by the Defendant by adopting the expression “Magical Masala”?

CONTENTIONS OF THE PARTIES 

The Plaintiff contended that the expression Magic Masala forms a principal feature of the Plaintiff’s composite trademark and has become distinctive as the general public associate Sunfeast Yippee! Noodles Magic Masala with the expression Magic Masala and the adoption of the said expression by the Defendant was intended to dilute the Plaintiff’s proprietary rights over Magic Masala and goodwill associated with it since 2010.

Furthermore, the Plaintiff argued that Magic Masala was not used as a flavour descriptor and since the Plaintiff was the first to adopt the words Magic Masala for noodles, it was not open to the Defendant to copy the same which is both deceptively and phonetically similar to the expression Magical Masala.

The Defendant contended that the Plaintiff has used the expression Magic Masala as a flavour descriptor and not as a trademark and the words, Magic and Magical are not distinctive rather they are common to the trade. Further, in view of Section 35 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) the Plaintiff cannot restrain the Defendant from using the expression Magical as a registered user of the trademark cannot interfere with any bonafide use by a person of any description of the character of the quality of his goods or service.

Additionally, the Defendant argued that the expression “Magic” was laudatory and therefore, incapable of any protection under the provisions of the Act and no common law rights of passing-off recognised under the Act inures to the Plaintiff.  

Owing to this no action of passing off can be attributed to the Defendant since to prove passing off it is essential for the Plaintiff to establish that on account of prior adoption and extensive commercial use as trade mark, Magic Masala has acquired distinctiveness, goodwill and reputation. But in the present case the word Magic Masala has been used by the Plaintiff to describe the characteristics and quality of the flavour of masala. Hence, use thereof is incapable of conferring any proprietary right in law on Plaintiff.

DISCUSSION AND FINDINGS

With regards to the first issue, the Court analysed the use of the expression “Magic Masala” and stated that that the word Magic is commonly used in the food and cosmetic industry. It is also used in a variety of the products cutting across different segments of goods as can be proved from the trademark search report.

The Court further observed that:

“Both the words “Magic” and its derivative “Magical” are 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.”

The adoption of the expression Magical Masala by the Defendant cannot be said to be malafide since it was a legitimate adoption as no person can appropriate common and laudatory words.

The Court in view of Godfrey Philips India Ltd Vs. Girnar Food & Beverages (P) Ltd. (2004) 5 SCC 25 wherein it was stated that:

“A descriptive trademark may be entitled to protection, if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source”.

The Court discussed that considering the facts of the present case the expression Magic was not used as a flavour descriptor by the Plaintiff because there is no flavour known to the world which is called Magic. The Plaintiff has actually used the word Magic to name the flavour in sachet as Magic.

However, at the same time, the Plaintiff has used the expression “Magic Masala” in a laudatory manner to praise the Masala in the sachet. Laudatory epithet cannot be given monopoly or protection as has been held by Courts. Neither the Plaintiff nor the Defendant can dissect a portion of a label and claim monopoly over it as also decided in the case of F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. (P) Ltd. (1969) 2 SCC 716 wherein it was observed that:

“It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient, similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.

Thus, in Lavroma case [Tokalon Ltd. v. Davidson & Co., 32 RPC at 133 at 136] Lord Johnston said:

“…we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.””

The Court further observed that the word Magic is also a common word in the food and cosmetic industry. It is not an invented word and is inherently not a distinctive word. It cannot be said that it was adopted to distinguish the noodles sold by the Plaintiff.

Therefore, with regards to the first issue it was decided that neither the plaintiff nor the defendant can claim the monopoly over the respective laudatory words “Magic” or “Magical” along with common word “Masala” to the exclusion of one another.

With regards to the second issue, the Court discussed on comparing the packaging of the Plaintiff and the Defendant and observed that the colour scheme, style, the get-up of the two wrappers are different and there is no scope of confusion. Both are a separate trademark within the meaning of Section 2(zb) of the Act which is defined as:

“Section 2(zb): trade mark” means a mark capable of  being represented graphically and which is capable of  distinguishing the goods or services of one person from  those of others and may include shape of goods, their  packaging and combination of colours; and— 

(i) in relation to Chapter XII (other than Section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and 

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation  to goods or services for the purpose of  indicating or so to indicate a connection in the  course of trade between the goods or services,  as the case may be, and some person having  the right, either as proprietor or by way of  permitted user, to use the mark whether with  or without any indication of the identity of  that person, and includes a certification trade  mark or collective mark;”

Therefore, the Court held that the Defendant has not made any misrepresentation to ride upon the alleged reputation and goodwill of the Plaintiff while using the expression “Magical Masala”. Finally, the court decided that as there is no visual or ocular similarity between the two wrappers, there is no scope to decide passing-off from an ocular or visual comparison of the two packaging.

On the aforesaid reasoning, the Court held that the Defendants are not performing passing off since the words are common to the trade and no monopoly can be claimed over the words.

ANALYSIS

The Court, in the present case, had at length discussed that no one can claim monopoly over the laudatory words owing to their nature of being common to the trade and such words are incapable of being monopolised by any trader.

Further it is imperative to note that a mere adoption of an expression does not amount to passing off for the reason that a distinctive mark can be entitled for protection and monopoly, only if it had been used uninterrupted for a long number of years but the same was not a point of consideration in the present case.

Therefore, in the present case, the Court by its reasoned order had refused to grant an injunction on the basis that the alleged passing off cannot be inferred since there cannot be any confusion between the two brands as the packaging is altogether different and monopoly cannot be claimed over the words which are laudatory and common to the trade.

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