Madras High Court: While deciding the question that whether the expression “Magic Masala” can qualify as a trademark and that whether it is capable of being monopolised, Bench of C. Saravanan, J., held that the words “Magic” and its derivative “Magical” are common to the trade; therefore, neither the plaintiff (Sunfeast Yippie Noodles) nor the defendant (Maggi Noodles) can claim monopoly over the expression “Magic” or “Masala” for they are very common words in Indian culinary industry and packaged food industry.
The instant suit was filed by the ITC Ltd. (Sunfeast Yippie Noodles) in order to restrain the defendant, Nestle India Ltd. (Maggi Noodles) from passing off their products i.e. instant noodles by use of the offending mark “Magical Masala” or any mark similar to plaintiff’s mark “Magic Masala”. The plaintiff represented by P.S. Raman, contended that that both expressions “Magic Masala” and “Magical Masala” are the respective sub-brands and the latter is phonetically similar to the former. Since both the plaintiff and the defendant are in the same business, i.e. sale of instant noodles, there is deception and confusion and thus there is passing-off by the defendant. On the contrary, the defendant via their counsel Hemant Singh argued that, the expressions “Magic Masala” and “Magical Masala” have been used both by the plaintiff and the defendant as a flavour descriptor and therefore is incapable of being protected and thus the suit is liable to be dismissed.
Scrutinizing the contentions of the parties and the concerned provisions of Trade Marks Act, 1999, the Court observed that Section 2(zb) of the Trade Marks Act, 1999 defines trade mark as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Thus the purpose of a trademark is to identify the goods of the proprietor and it is intended to catch the attention of the consumer instantly in order to make a ‘on the spot’ decision to buy the goods or services of a proprietor. A word or expression becomes trademark if it is either distinctive or is intended to distinguish the product. On the other hand, a generic mark describes the quality of the product and unlike trademarks, they can neither be monopolised nor they can be registered. A descriptive trade mark can be entitled to protection if only it has assumed a secondary meaning and identifies a particular product or as being from a particular source. On the other hand a suggestive term used as a mark which indirectly suggests the qualities and characteristics of the product may be accorded protection.
Vis-à-vis ‘passing off’, the Court observed that expression has not been defined under the Trade Marks Act, 1999. The expression means to “pass-off one’s goods as that of another person’s whose product has a reputation in the market. This results in deceiving the consumers and is intended to cause injury to the proprietor of the trademark”. A passing off action is broad common law remedy to protect an unregistered trademark and to restrain an unfair trade practice by a competitor who misleads the consumer.
With these points in the mind, the Bench observed 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. The adoption of the word “Magic” by the plaintiff was inspired from the use of the word across the industry. The defendant’s use of the same word was inspired not only from the words which are common to the trade but also from some of its own products, therefore the adoption cannot be termed as malafide. It was further noted that the plaintiff has used the expression “Magic Masala” in a laudatory manner and laudatory epithet cannot be given monopoly or protection. Moreover, “Magic” and “Masala” both the expressions are not invented and distinctive words. Therefore dismissing the instant suit, the Court held that, since both the expressions are common to the packaged food industry, thus it will be unfair to recognise or confer any monopoly over these words. [ITC Ltd. v. Nestle India Ltd., 2020 SCC OnLine Mad 1158 , decided on 10-06-2020]